JOHN  BYRNE  &  CO. 

LAW   BOOKS 

1333  F  Street  N.W. 

WASNINQTON,  D.  C. 


LIBRARY 

THE  UNIVERSITY 
OF  CALIFORNIA 

SANTA  BARBARA 


PRESENTED  BY 

MR.    &   MRS.    HOWARD  A.    WILCOX 


"'T^^^M^-'^'"^' 


DIGEST  OF  DECISIONS 


OF 


LAW  AND  PRACTICE 


IN    THE 


PATENT  OFFICE 


AND   THE 


UNITED  STATES  and  STATE  COURTS 


IN 


PATENTS,  TRADEMARKS.  COPYRIGHTS  AND  LABELS 

1897-1912 

A  SUPPLEMENT  TO  HART'S  DIGEST,  1886-1897 


BY 


W.  L.   POLLARD 

Of  the  District  of  Columbia  Bar 
Examiner  in  the  United  States  Patent  Office 


WASHINGTON,  D.  C. 

JOHN  BYRNE  &  CO. 

1912 

0 


Copyright,  1912 

BY 

W.  L.  POLLARD. 


PREFACE. 


In  preparing  this  Supplement,  the  original  plan  of  Hart's  Patent  Digest,  i886- 
1897,  has  been  followed. 

Substantially  the  same  sources  have  been  drawn  on  as  in  the  previous  volume,  the 
citations  including  Decisions  of  the  Commissioners,  the  Secretary  of  the  Interior, 
the  Supreme  Court  of  the  District  of  Columbia,  the  United  States  District  and  Cir- 
cuit Courts,  the  Court  of  Appeals  of  the  District  of  Columbia,  and  the  Supreme 
Court  of  the  United  States. 

In  many  instances  it  was  found  necessary  to  extend  the  classification. 

\\".  L.  Pollard. 
Washington,  D.  C,     May  18,  1912. 


TABLE  OF  CASES. 


A.  A.  Rosenbush  &  Company  v.  The  Rose 
Shoe  Manufacturing  Company,  581. 

A.  B.  Andrews  Co.,  Ex  parte,  549. 

A.  Bauer  &  Co.  v.  La  Societe  Anonyme  de  la 
Distillerie  de  la  Liqueur  Benedictine  De  1' 
Abbaye  Fecamp,  564,  608,  629. 

A.  Bauer  &  Co.  v.  Order  of  Carthusian  Monks, 
Convent  La  Grande  Chartreuse,  564,  608. 

A.  Bauer  &  Co.  v.  Siegert  et  al.,  553,  564. 

A.  B.  Barnum  Co.,  Ltd.,  Ex  parte,  545. 

A.  Burdsall  Co.,  Ex  parte,  551. 

A.  F.  Beckmann  &  Co.  v.  B.  Fischer  &  Co., 
542,  554. 

A.  Engelhard  &  Sons  Company,-  Ex  parte,  598, 
621. 

A.  Featherstone  &  Co.,  Ex  parte,  597. 

A.  G.  Spalding  &  Bros.,  Ex  parte,  560,  616. 

A.  G.  Spalding  and  Bros.,  In  re,  531,  617. 

A.  Leschen  &  Sons  Rope  Company  v.  Broder- 
ick  &  Bascom  Rope  Company,  592,  613. 

A.  Leschen  &  Sons  Rope  Company  v.  Amer- 
ican Steel  &  Wire  Co.  of  New  Jersey,  613. 

A.  R.  Greoire  and  Co.,  551,  608. 

A.  Stein  &  Co.,  557,  605,  616. 

Abendroth  Brothers,  Ex  parte,  555. 

Aberli,  Ex  parte,  31,  48. 

Abingdon  Wagon  Company,  Ex  parte,  545,  555. 

Abraham,  Ex  parte,  458. 

Ach,  Ex  parte,  77,  80. 

Acker,  Merrall  &.  Condit  Company,  Ex  parte, 
554. 

Actien-Gesellschaft  fur  Anilin-Fabrikation,  Ex 
parte,  563. 

Actiengesellschaft  Paulanerbrau  Salvator- 
brauerei  v.  Conrad  Seipp  Brewing  Com- 
pany, 263,  264,  437. 

Adam,  Ex  parte,  107. 

Adams,  Ex  parte,  63,  96,  98,  100,  105,  110,  116, 
125,  137,  185,  460,  478. 

Adams,  In  re,  65,  487,  623. 

Adams— Randall.  Ex  parte,  282. 

Adams  v.  Murphy,  44.  376,  390,  423. 

Adkins  and  Lewis  v.  Seeberger,  184,  213,  221. 


Agee,  Ex  parte,  64,  71,  509. 

Alabama  Tube  and  Iron  Company,  Ex  parte, 

555. 
Aladdin  Gas  Light  Company.  Ex  parte,  568. 
Alart  and  McGuire,  Ex  parte,  565. 
Albers  Bros.  Milling  Company  v.  Forrest,  432. 
Albert  Dickinson  Company,  The,  v.   Conklin, 

588. 
Albert,  Ex  parte,  113. 
Ale,  in  re,  73. 
Alexander,  Ex  parte,  93. 
Alexander  v.  Blackman.  292.  445. 
Allen,    Commissioner    of    Patents    v.    United 

States   ex  rel.,  Regina   Music  Box  Com- 
pany. 462. 
Allen,    Commissioner    of    Patents    v.    United 

States    of    America    ex    rel.    Lowry    and 

Planters  Compress  Company,  177,  211,  214, 

360,  462.   519. 
Allen  B.  Wrisley  Company  v.  Buck,  607. 
Allen,  Ex  parte,  415,  459. 
Allington   &   Curtis   Manufacturing   Company 

et  al  V.  Glor  et  al..  61. 
Allis-Chalmers   Co.   v.   Westinghouse   Electric 

&  Mfg.  Co..  472. 
Alman.  Ex  parte,  134. 
Alminana,  Ex  parte,  114,  115,  130,  131. 
Almy,  Ex  parte.  140,  512. 
Alton,  Ex  parte,  13,  498. 
Alt  V.  Carpenter,  360. 
Amberg,  Ex  parte,  98. 

Ambrosia  Chocolate  Company,  Ex  parte,  458. 
Ament,  Ex  parte,  122. 
American  Car  &  Foundry  Co.  v.  Morton  Trust 

Co.,  489. 
American  Cricular  Loom  Company,  E.x  parte, 

603. 
American  Circular  Loom  Company,  In  re,  546. 
American   Coffee  Co.  of  New  Orleans,   Ltd., 

531. 
American  Glue  Company,  Ex  parte,  540. 
American  Glue  Company,  In  re,  541. 
American     Lithographic     Company,    The,     v. 

Werckmeister.  443. 
American  Optical  Company,  Ex  parte,  547. 


TABLE  OF  CASES. 


American  Separator  Company,  Ex  parte,  530. 
American  Steam  Packing  Company  v.  H.  W. 

Johns-Manville  Company,  591. 
American    Stove    Company    v.    Detroit    Stove 
Works  and  Barstow  Stove  Company,  392, 
429,  527,  568,  582. 
American  Sugar  Refining  Company,  The,  Ex 

parte,  525,  557. 
American    Tobacco    Company   v.    Streat,    476, 

478. 
American  Tobacco  Company  v.  Werckmeister, 

43,  89,  91,  92,  260,  519. 
American  Wire  Weavers'  Protective  Associa- 
tion, Ex  parte,  457. 
American  Wringer  Company,  The,  Ex  parte, 

600. 
Ames  v.  Lindstrom,  374,  390. 
Ams,  Ex  parte,  503. 
Ams,  In  re,  504. 
Amulet    Chemical    Company,   The,    Ex   parte, 

599. 
Ancora  v.  Kciper,  305. 
Anderson  and  Dyer  v.   Lowry,  213,   270,   45], 

452. 
Anderson,  Ex  parte,  132. 
Andrews  v.  Nilson,  315,  343. 
Anderson  v.  Peck,  318. 
Anderson  v.  Vrooman,  274. 
Anderson  v.  Wells,  292,  335. 
Andrew  Jergens  Co.,  The,  v.  Woodbury,  598. 
Andrew  McLean  Company  v.  Adams  Manu- 
facturing Company,  590. 
Andrews,  Ex  parte,  147. 

Andrews  v.  Nilson,  82,  189,  377,  371,  368,  435. 
Anheuser-Busch  Brewing  Association  v.  D.  G. 
Youengling  &  Son  v.  Koehler  v.  Hablich 
&    Company    v.    Peter    Stumpf    Brewing 
Company  v.  Ruppert,  367,  567,  601. 
Annand  v.  Spalckhaver,  171,  205,  232. 
Anti-Adulteration  League,  Ex  parte,  593. 
Anti-Cori-Zine  Chemical  Co.,  In  re,  542,  549. 
Appel,  Ex  parte,  497. 
Appert  v.  Schmertz,  389. 
Arakelion,  Ex  parte,  27,  148. 
Arbetter  v.  Lewis,  231,  275. 
Arguto  Oilless  Bearing  Co.,  459. 
Arms,  Ex  parte,  148. 
Armstrong,  Ex  parte,  476. 
Arndt,  Ex  parte,  53. 
Arnold  v.  Vaughen  and  Cabot  v.  Arnold  and 

Fisher,  277. 
Artesian  Manufacturing  Company,  In  re,  596. 
Ascencio  v.  Russell,  290,  401. 
Ashtabula  Telephone  Company,  In  re,  22. 
Ashley  v.  Samuel  C.  Tatum  Co.,  42. 
Aspegren  &  Co.,  Ex  parte,  553,  602. 


Aston,  Ex  parte,  408. 

Atherton  and  Happ  v.  Cheney,  223,  240. 

Atkins  V.  Paul  v.  Johnson,  307,  426. 

Atsatt  Bros.,  Ex  parte,  559. 

Atterbury,  Ex  parte,  623. 

Atwood,  Ex  parte,  39. 

Auerbach  and  Cubing  v.  Wiswell,  222,  240, 
268. 

Auerbach  &  Sons  v.  Hall  &  Hayward  Com- 
pany, 262,  424,  535,  571. 

Auer,  Ex  parte,  14,  39. 

Ault,  Ex  parte,  141. 

Austin,  Nichols  &  Co.,  Ex  parte,  559,  569,  614. 

Austin  V.  Johnson  et  al.,  186,  257,  333,  399. 

Autenrieth  and  Kane  v.  Sorensen,  183,  396. 

Auto  Grand  Piano  Co.,  612. 

Austin  V.  Winslow,  398.  440. 

Automatic  Weighing  Machine  Company  v. 
Pneumatic  Scale  Corporation,  Limited, 
259,  345,  374,  447. 

Auxer  v.  Pierce,  Jr.,  232. 

Avery,  Ex  parte,  150. 


B.  A.  Corbin  &  Son  Company  v.  Miller,  Kohl- 
hepp,  Giese  &  Co.,  567,  576,  582. 

B.  Fischer  &  Co.  v.  A.  F.  Beckmann  &  Co.,  96, 
567. 

Babcock  v.  Pickard  v.  Ashton  and  Curtis,  168. 

Bach,  Ex  parte,  9. 

Bacon,  In  re.  314. 

Bader  v.  Vajen,  186,  315,  366. 

Badger,  Ex  parte,  130. 

Badger  v.  Morgan  and  Hoheisel,  417,  436. 

Badgley,  Ex  parte,  64. 

Baer,   Ex   parte,   127. 

Baetz  V.  Kukkuck,  239. 

Baglin.  Pere  Alfredo  Luis,  Superior  General 
Order  Carthusian  Monks  v.  Cusenier  Com- 
pany, 539,  554,  563. 

Bagot  and  Dishart,  In  re,  60. 

Bailey,  Ex  parte,  133,  160. 

Bailey  v.  Davis,  317. 

Baker,  In  re,  471. 

Baldwin,  Ex  parte,  74,  151,  454. 

Ball,  Ex  parte,  458,  517. 

Ball  v.  Flora,  178,  325,  396,  424,  451. 

Ball  V.  Rego,  216. 

Baltzley  v.  Seeberger,  247. 

Balzer,  Ex  parte,  128. 

Bancroft  and  Thorne,  Ex  parte,  117. 

Banner  Cigar  Manufacturing  Company,  The, 
Ex  parte,  599. 

Baptist,  Ex  parte,  134. 

Barber,   Ex  parte,   144. 


TABLE  OF  CASES. 


VII 


Barber  v.  Wood,  229,  252,  286. 

Barclay  and  Barclay,  Ex  parte,  523,  561,  600, 

601. 
Barnes,  Ex  parte,  34. 
Barnes  v.  Swartwout,  295,  317. 
Barney  v.  He.';s,  191,  431. 
Barnhart  Bros.  &  Spindler,  Ex  parte,  455. 
Barnhart,  Ex  parte,  102. 
Barr  v.  Bugg,  312. 
Barratt  v.  Duell,  Commissioner  of  Patents,  46, 

514. 
Barratt  v.  Swinglehurst,  230,  232. 
Barrett  and  Alter,  Ex  parte,  57. 
Barrett  &  Barrett,  Ex  parte,  550. 
Barrett  Mfg.  Co..  Ex  parte,  613. 
Barrett  Manufacturing  Company,  In  re.  613. 
Barrett  v.  Harter,  260,  353. 
Barr   Car   Co.   v.   Chicago   and   Northwestern 

Railway  Company,  135,  288,  296. 
Barri,  Ex  parte,  509. 
Barr  v.  Bugg,  228. 
Barry,  Ex  parte,  93,  255. 
Bartholomew,  Ex  parte,  500. 
Basch  V.  Hammond,  316,  342,  370,  433. 
Bassett,  Ex  parte,  7,  11. 
Bass,   RatcliflF  &  Gretton.   Lim.   v.   Hartmann 

Brewing  Company,  587. 
Bastian  v.  Champ,  170,  208,  232,  345. 
Battle  Creek  Sanitarium  Company,  Limited,  In 

re,  589. 
Battle  Creek  Sanitarium  Company,  Limited  v. 

Fuller,  548,  567,  590. 
Bauercamper,  Ex  parte,  18. 
Bauer  v.  Crone,  186,  189,  310,  352,  386. 
Bayle,  Jr.,  In  re,  56. 
Bay  State  Belting  Company  v.   Kelton-Bruce 

Manufacturing    Company,    263,    443,    527, 

581. 
V^each  V.  Hobbs  et  al.,  80,  86,  507. 
Beall,  Jr.  v.  Lyon,  312,  420. 
Beall  V.  Shuman,  293,  429. 
Beals  V.  Finkenbiner,  265,  375,  423. 
Beath,  Ex  parte,  101. 
Beaumont  Mfg.  Co.,  Ex  parte,  613. 
Bcchman  v.   Southgate,  82,  195,  206,  208.  222, 

476. 
Eechman  v.  Wood,  160.  192,  267,  401. 
Bechstein,   Ex   parte,   533. 
Beck,  Ex  parte.  39,  152. 
Becker  and  Patitz  v.  Edwards,  212,  227,  254. 
Becker,  Ex  parte,  60,  136. 
Becker  v.  Otis,  286. 
Beckert  v.  Currier,  309,  393. 
Beck,  Ex  parte,  39,  152. 
Beckett,  Ex  parte,  562. 
Beck  V.  Long.  210. 


Bcckwith,  Ex  parte,  511. 
Bedford  et  al.  v.  Duell,  Commissioner  of  Pat- 
ents, 41,  42,  86. 
Beechcr,  Ex  parte,  3,  23. 
Beech  Hill  Distilling  Company  v.  Brown-For- 

man  Company,  532. 
Bchrend  v.  Lamme,  197. 
Behrcnd  v.  Lamme  v.  Tingley,  166,  200,  416. 
Belair,  Ex  parte,  127. 

Belle  City  Malleable  Iron  Company,  In  re,  128_ 
Bellows  V.  King,  319. 
Bender  v.  Hoffman,  412,  414,  481. 
Benedict  and  Morsell,  In  re,  88. 
Benecke,  Ex  parte,  467. 
Benet  and  Mercie  v.  McClean,  413. 
Benger  v.  Burson,  281,  363. 
Benjamin,  Ex  parte,  51. 
Benke,  Ex  parte,  111,  117,  119. 
Bennett,  Ex  parte,  110. 
Berg,  Ex  parte,  26,  512. 
Berger,  In  re,  490. 
Bernard  v.  Huebel.  303,  307. 
Bero'e,  Kane,  and  Stengard  v.  Hildreth,  236. 
Berry  v.  Fitzimmons,  173. 
Besant,  Ex  parte,  45. 
Beswick  v.   Duell.   Commissioner  of   Patents, 

470,  623. 
*^ettendorf.  Ex  parte.  103. 
Bencher,  Ex  parte,  496. 
r.igbie  Brothers  &  Company  v.  Bluthenthal  & 

Bickart  v.  The  J.  &  H.  Butler  Company, 

523,   527,  579. 
Billings,   Acting  Commissioner  of   Patents  v. 

Field,  74,  454. 
Bindley   Hardware   Company,   Ex   parte,   568, 

611. 
r.irkhead.  Ex  parte,  550. 
Bischoff,  Ex  parte,  147. 
Bishop,  Ex  parte,  562,  595. 
Bissell   Carpet   Sweeper   Company.   Ex   parte, 

545. 
Bitner,  Ex  parte.  77,  138. 
v^Blackford  v.  Wilder.  84,  265,  275,  372,  403,  404, 

515. 
Blackledge   v.   Weir   &   Craig   Manufacturing 

Company,  494. 
Blackman  v.  Alexander.  156,  182,  183,  261,  262, 

264,   266,   290.   302.   393.   395,   434,   435,  438, 

444,  445. 
Blackmore.  Ex  parte,  507. 
Blackmore,  In  re,  50,  486,  517. 
Blackmore  v.  Hall,  207,  212,  214,  219,  236,  244, 

422. 
Blakeman,  Ex  parte,  138,  517. 
Blaubach,  Ex  parte,  61. 
Blanchard.  Ex  parte,  138. 


TABLE  OF  CASES. 


nieistein    ct   al.    v.    Donaldson    Lithographing 

Company,  90. 
Bhsh  Milling  Company,  The,  Ex  parte,  505. 
BHss  V.  Crevehng,  ;U0. 
Bliss  V.  McEIroy,  ;t21,  328,  383. 
Bloch.   In  re,  71. 
Block  Brothers  Clothing  Company,  Ex  parte, 

546. 
Block,  Ex  parte,  5. 
Blood  V.  Brown,  350. 
Blood  V.  Ross,  225,  320. 
Bloomington  Canning  Co.,  Ex  parte,  537. 
Blue  V.  Power  v.  Owens,  267. 
Bluthenthal  and  Bickert  v.  Bigbie  Brothers  & 

Company,  591,  594. 
Boch  V.  Locke,  254,  261. 
Bohlecke,  Ex  parte,  7. 
Bohn,  Ex  parte,  6. 
Bolly,  Ex  parte,  151. 

Bombard  v.  The  United  States  Graphite  Com- 
pany. 150,  157. 
Bong  V.  The  Alfred  S.  Campbell  Art  Co.,  90, 

91. 
Booth,  Booth  and  Flynt  v.  Hanan  and  Gates  v. 

Marshall,  228,  242,  245,  247. 
Booth,  Booth  and  Flynt  v.  Hanan  and  Gates, 

358. 
Booth  Brothers,  In  re,  500. 
Booth,  Ex  parte,  143,  457. 
Borg  V.  Strauss,  312. 

Borton,  Ex  parte,  39,  510,  512. 

Bossart  v.  Pohl,  294. 

Boss  Mfg.  Co.  V.  Thomas,  85,  472,  489. 

Bossert  Electric  Const.  Co.  v.  Pratt  Chuck  Co., 
Bossert  Electric  Const.  Co.  v.  Sprague 
Electric  Co.,  85. 

Boston  Fountain  Pen  Co.,  Ex  parte,  516. 

Boucher,  Ex  parte,  122. 

Botzky,  Ex  parte,  5. 

Bourn  v.  Hill,  Jr.,  338,  273,  258. 

Bourne,  Ex  parte,  512. 

Boving,  Ex  parte,  569. 

Bowditch  V.  Todd,  161,  253,  242,  374,  495. 

Bowles,  Ex  parte,  13,  90,  457. 

Bowles  V.  Wilcox,  297. 

Bowman,  Ex  parte,  132. 

Boyden  Power  Brake  Company  et  al  v.  West- 
inghouse  et  al.,  77,  80,  157,  483,  484,  494. 

Boyer  v.  Breitenstein,  398. 

Bradford  &  Chatfield,  Ex  parte,  517. 

Bradford  &  Hood,  In  re,  70. 

Bradley  v.  Miggett,  315. 

Brakey,  Ex  parte,  201. 

Brand,  Ex  parte,  52,  98. 

Brandsville  Fruit  Farm  Company,  Ex  parte, 
545,  552,  599. 


Branna,  Ex  parte,  467. 

Brantingham  v.  Draver  and  Draver,  235. 

Brasier,  Ex  parte,  45. 
Bratt,  Ex  parte,  114. 

Braunstein  v.  Holmes,  300. 

Breitenbach  and  F.  H.  Strong  Co.  v.  Rosen- 
berg. 613,  622. 

Bremaker  &  Eggers.  Ex  parte,  50. 

Brenizer  v.  Robinson,  409. 

Brennan,  Fitzgerald  &  Sinks,  543. 

Bresnahan  et  al.  v.  Tripp  Giant  Leveller  Com- 
pany, 83,  159,  160. 

Breul  V.  Smith,  177,  213,  218. 

Brewer,  Tily,  Rehfuss,  and  Rehfuss  v.  Dement, 
214,  222. 
"^Briede,  Ex  parte,  505,  506. 
VBriede,  In  re.  468,  503,  504,  506,  507,  508. 

Briggs  V.  Conley,  512. 

Briggs  V.  Butterworth,  Commissioner  of  Pat- 
ents, 481,  521. 

Briggs  V.  Duell,  Commissioner  of  Patents,  473, 
482. 

Briggs  V.  Lillie  v.  Cooke  v.  Jones  and  Taylor, 
246,  273,  261,  320,  353. 

Brill  and  Adams,  Ex  parte,  149. 

Brill  and  Adams  v.  Ubelacker,  270,  427,  435. 

Brill  and  Brill  v.  Hunter,  28,  79,  255. 

Brill  et  al.  v.  Peckham  Motor  Truck  and 
Wheel  Company  et  al.,  162. 

Brill  et  al.  v.  The  Washington  Railway  and 
Electric  Company,  87. 

Brill,  Ex  parte,  126. 

Brisbane,  Ex  parte,  139,  161,  374. 

Brissenden  v.  Rocsch,  183. 
"•'feritt,  Ex  parte,  94. 

Brittain  Tobacco  Works,  In  re,  591. 

Broadwell  v.  Long,  287,  515. 

Brock  V.  National  Electrical  Supply  Company, 
90. 

Broderick  &  Bascom  Rope  Company  v.  Les- 
chen  &  Sons  Rope  Company,  572,  580,  582, 
603. 

Broderick,  Ex  parte,  136,  490. 

Bronson  Company,  Ex  parte,  544,  593,  62S. 

Brooker  v.  Smith,  219. 

Brooks,  Ex  parte,  15,  623. 

Brooks  V.  Foote  v.  Wenk,  402. 

Brooks  V.   Hillard,   204,  334,  372. 

Brooks  V.  Smith,  370,  379. 

Brough,  Ex  parte,  53. 

B  rough  V.  Snyder,  362,  426. 

Brown  and  Sprink,  Ex  parte,  38. 

Brown,  Ex  parte,  51,  115,  116,  120,  512. 

Brown,  In  re,  55. 

Brown-Forman  Company  v.  Beech  Hill,  533. 

Brown  v.  Blood,  350. 


TABLE  OF  CASES. 


Brown  v.  Cutler  v.  Keeney,  309,  315. 
Brown  v.  Fessenden,  294. 
Brown  v.  Gammeter,  178. 
Brown  v.  Hodgkinson,  399,  452. 
Brown  v.  Inwood  and  Lavenberg,  220,  238,  282, 
412. 

Brown  v.  Keeney,  309,  316. 
Brown  v.  Undmark,  222,  282,  323. 
Browne  v.  Stroud,  220,  248,  431. 
Brownell,  Ex  parte,  109,  119. 
Brunker  v.  Schweigerer,  183. 
Bryant,  Ex  parte,  156,  623. 
Bryant  Electric  Co.,  The,  Ex  parte,  525. 
Bryant,  Wolcott  and  Davidson,  Ex  parte,  199. 
Bryon  v.  Henry,  427. 
Bryon  v.  Maxwell,  222. 

Buchanan-Andcrson-Nelson  Co.,  The,  v.  Breen 
and  Kennedy,  614,  615. 

Buck,  Ex  parte,  23,  39. 
Buck,  In  re,  22. 

Buddington,  Ex  parte,  465,  496. 
Buffalo  Pitts  Company,  Ex  parte,  562,  597. 
Buffalo  Pitts  Company,  United  States  ex  rel. 
V.  Duell,  Commissioner  of  Patents. 

Bullier,  Ex  parte,  255. 

Bullier  v.  Willson,  83,  267. 

Bullock     Electric     Manufacturing     Company, 

The,  In  re,  23. 
Bullock,  Ex  parte,  35,  78. 
Bundy  v.  Rumbarger,  166,  355,  465. 
Burdick,  Ex  parte,  106,  107. 
Burge,  Ex  parte,  144. 
x/Burmeister,  Ex  parte,  110,  120. 
Burnham,  Ex  parte,  476. 
Burns,  Ex  parte,  61. 
Burrowes,  E.x  parte,  40,  118. 
Burschik,  Ex  parte,  134. 
Burson,  Ex  parte.  93. 
Burson  v.   Vogel,   196,  262,  317,  350,  371.  378, 

409,  425,  446. 

Burton  v.  Bentley,  47. 
Busch  V.  Jones  et  al..  94,  483. 
Buscnbenz,  Ex  parte,  14. 
Busky,  Ex  parte,  149. 
Bustin,  Ex  parte,  126. 
Butcher,  Ex  parte.  111,  120,  135. 
Butler,  Ex  parte,  543. 
Butterfield,  Ex  parte,  485.  487. 
Butterfield,  In  re,  471. 

Butterworth  v.  Boral  and  Kymer  v.  Ecob,  439, 
442,  447. 

Byram  v.  Friedberger,  101,  105. 

Byrnes,  Ex  parte,  139. 

Byron  Weston  Company,  Ex  parte.  553. 


C. 


C.  A.  Gambrill  Mfg.  Co.  v.  H.  Becker,  554. 

C.  and  A.  Potts  &  Co.  v.  Creager  et  al ,  492. 

C.  H.  Alden  Company,  Ex  parte,  596. 

C.  M.  Taylor  &  Co.,  Ex  parte,  546. 

C.  P.  Goldsmith  &  Company,  Ex  parte,  548. 

C.  Shenkberg  Co.,  Ex  parte,  547. 

C.  S.  Sisson  Company,  Ex  parte,  548. 

Cahn,  Belt  &  Company,  Ex  parte,  530,  532. 

Cahn,  Belt  &  Company,  In  re,  540,  593. 

Cain  V.  Park,  136,  260,  262,  354. 

Caldwell  and  Barr,  Ex  parte,  79. 

California  Fruit  Canners  Association  v.  Fos- 
ter, Caldarera  &  Company,  531,  575,  583. 

California  Canneries  Company  v.  Kothe,  Wells 
and  Bauer  Company,  591. 

California  Fruit  Canners  Association  v.  Rat- 
cliff-Sanders  Grocer  Company,  573,  591. 

Caliga  V.  Inter-Ocean  Newspaper  Co.,  89. 

Calm,  Ex  parte,  198,  205. 

Calm  V.  Dolley  v.  Finzelberg  &  Schmidt,  245. 

Calm  V.  Schweinitz  v.  Dolley  v.  Geisler,  197, 
239,   250. 

Calvert  &   Bro.,   534,   606. 

Camel  Company,  Ex  parte,  557,  558. 

Cammett  v.  Hallett,  166,  210,  218,  222,  225,  259. 

Campbell,  Ex  parte,  134. 

Canepa  v.  Boehm,  578. 

Cannon,  Ex  parte,  148. 

Capital  City  Dairy  Co.,  The,  Ex  parte,  543. 

Capital  Paper  Company,  E.x  parte,  594. 

Carborundum  Company,  The.  Ex  parte,  557. 

Card  and  Card,  Ex  parte,  200. 

Carey  v.  New   Home   Sewing  Machine  Com- 
pany, 498,  567,  578,  582,  599. 

Carmichael  v.  Fox,  390. 

Carnegie  Steel  Company,  Limited  v.  Cambria 
Iron  Company,  83,  203,  416,  475,  477,  516. 

Carnell  v.  Glasgow  v.  Cook,  208. 

Carney  v.  Latimer,  235. 

Carpenter,  Ex  parte,  29,  62,  271. 
v^Carpenter,  In  re,  76. 

Carpenter  v.  Mallorj',  203. 

Carroll,  Ex  parte,  416. 

Carroll  v.  Hallwood.  179,  404. 

Carroll  v.  Stalhberg,  306. 

Carter,  Ex  parte,  542. 

Carter  Medicine  Company  v.  Barclay  &  Bar- 
clay, 592,  600. 

Carver  v.  McCanna,  235. 

Cary   Mfg.   Co.  v.   Acme  Flexible  Clasp   Co., 
453. 

Cary  Manufacturing  Company  v.  Neal,  et  al., 
101,  492. 


TABLE  OF  CASES. 


Casalonga,  Ex  parte,  4,  154. 

Case  Brothers  v.  E.  W.  Murphey  &  Company, 

527,  579. 
Case  V.  Quirk,  538. 
Casein  Co.  of  America  v.  A.  M.  Collins  Mfg. 

Co.,  505. 
Casey,  In  re,  495. 
Casey-Swasey    Company,    The,    v.    Rosenfield 

Brothers  &  Company,  571,  576. 
Easier,  Ex  parte,  85,  115,  139,  143. 
easier  v.  Armat,  252,  254. 
Casselman,  Ex  parte,  140,  513. 
Castle    Brook    Carbon    Black    Company,    Ex 

parte,  550. 
Castner  et  al.  v.  Coffman,  etc.,  555. 
Cavanagh  et  al.,  Ex  parte,  110. 
Cazin,  Ex  parte,  87. 

Cazin  V.  Von  Welshach,  157,  167,  200,  254. 
Central  Brass  Mfg.  Co.,  Ex  parte,  549. 
Central  Consumers  Company,  In  re,  541,  548. 
Certain  Cure  Company,  Ex  parte,  449,  548. 
Chaffee,  Ex  parte,  30,  129. 
Chamberlain,  Ex  parte,  9,  32. 
Champ,  Ex  parte,  518. 
Champion    Safety    Lock    Company,    The,    Ex 

parte,  599. 
Chapman,  Ex  parte,  70,  81,  110. 
Chapot-Shirlaw  Company,  The,  Ex  parte,  530. 
Charles    A.    Masters   &    Company,    Ex    parte, 

555. 
Charles  Dennehy  &  Co.  v.  Robertson,  Sander- 
son &  Co.,  Limited,  548. 
Charles  E.  Brown  &  Company,  Ex  parte,  611. 
Charles,  Prince  de  Loewenstein,  In  re,  510. 
Charlton,  In  re,  70. 
Charlton  v.  Sheldon,  315. 
Chas.  H.  Phillips  Chemical  Co.,  The,  Ex  parte, 

566. 

Chase  and  McKenzie,  In  re,  486. 

Chase,  In  re,  486. 

Cheney  v.  Venn,  148,  179,  331. 

Cheney  Bros.   v.   Weinreb  and  Weinreb,   106, 

519. 
Cherney  v.  Clauss,  189.  291,  353,  424. 
Chicago   Fire   Proof   Covering   Company,    Ex 

parte,  551. 
Chicago  Hook  and  Eye  Company,  In  re,  G6. 
China  and  Japan  Trading  Company,  Limited, 

565. 

Chipman,  Ex  parte,  17. 

Christensen  Engineering  Company,  The,  In  re, 

87,  462. 
Christensen,  Ex  parte,  32,  48,  124. 
Christensen  v.  Ellis,  331. 
Christensen  v.  McKenzie,  428. 


Christensen  v.  Noyes,  156,  187,  321,  329,  360, 
400,  450. 

Church  et  al.,  Ex  parte,  69. 

Church  &  Dwight  Company  v.  Russ  et  al.,  567, 
617.   619. 

Churchill  v.  Goodwin,  302,  318. 

Churchward  v.  Douglas  v.  Cutler,  174,  410. 

Cimiotti  Unhairing  Company  et  al.  v.  Ameri- 
can Fur  Refining  Company  et  al.,  83,  158, 
494. 

Ciolfi,  Ex  parte,  2. 

Circle  Manufacturing  Company,  Ex  parte, 
560,  617. 

Cirkel  and  Killing  v.  Killing,  436. 

Claassen  v.   Steffen,  167. 

Clark-Horrocks  Company,  Ex  parte,  549. 

Clark  Cast  Steel  Cement  Company,  Ex  parte, 
457. 

Clark,  Ex  parte,  131,  449. 

Clark,  In  re,  70. 

Clark-Jewell-Wclls  Co.,  Ex  parte,  616. 

Classic  Corset  Company,  Ex  parte,  552. 

Clausen,  Ex  parte,  5,  31,  70. 

Clausen  v.  Dunbar  v.  Schelliner,  393. 

Clay,  Ex  parte,  23,  121,  133. 

Clement  v.  Browne  v.  Stroud,  161,  254,  431. 

Clement  v.  Richards  v.  Meissner,  184,  353,  391, 
393. 

Cleveland  v.  Wilkin,  292. 

Clinton  E.  Worden  &  Company  v.  California 
Fig  Syrup  Company,  550,  564. 

Cluett,  Peabody  &  Company,  Ex  parte,  587. 

Clunies,  Ex  parte,  488. 

Clunies,  In  re,  258,  480. 

Cobb,  Ex  parte,  597. 

Cobb  Manufacturing  Company,  The,  Ex  parte, 
547. 

Cobb  V.  Goebel,  195. 

Coddington,  Ex  parte,  30,  139. 

Colburn  and  Washburn  v.  Hitchcock,  230. 

Colchester.  Ex  parte,  149. 

Cole,  Ex  parte,  466. 

Cole  V.  Zarbock  v.  Greene,  177,  182,  390. 

Coleman,   Ex  parte,  267. 

Coleman  v.  Bullard  v.  Struble,  223. 

Coleman  v.  Struble,  219. 

Collamore  and  Kerst,  Ex  parte,  130. 

Colley  V.  Copenhaver,  171. 

Collins  and  Company  v.  Meyer,  593,  610. 

Collins,  Ex  parte,  3,  64,  71,  563,  601. 

Collom  V.  Thurman,  274. 

Colton,  Ex  parte,  52. 

Columbia  Cotton  Oil  and  Provision  Corpora- 
tion, Ex  parte,  617. 

Columbia  Drug  Co.  v.  The  Lester  H.  Green 


TABLE  OF  CASES. 


XI 


Co.  V.  Jehu  R.  Smith  v.  Scott  and  Bowne, 

575. 
Cohimbia    Incandescent    Lamp    Company,    Ex 

parte,  555. 
Columbia  River  Packers  Association  v.  Nave- 

McCord  Mercantile  Company,  534. 
Colton,  Ex  parte,  485. 
Colton,  In  re,  489. 

Commercial  Mica  Company,  In  re,  22,  33. 
Commercial  Vehicle  Co.,  The,  Ex  parte,  535. 
Computing  Scale  Company  of  America  v.  Au- 
tomatic Scale  Company,  The,  84,  85,  481, 

488,  491. 
Condict,  In  re,  93. 
Conklin,  Ex  parte,  73. 
Conklin    and    Son    v.    The    Albert    Dickinson 

Company,  568,  578. 
Conlcy,  Ex  parte,  81. 
Connell,  Ex  parte,  53. 
Council  V.  Tobey,  174. 
Conner  v.  Dean,  294,  388,  442. 
Continental  Car  and  Equipment  Company,  Ex 

parte,  556. 
Continental   Paper   Bag  Company   v.   Eastern 

Paper  Bag  Company,  74,  79,  83,  135,  162. 
Converse  et  al.  v.  Kerst,  314,  320. 
Cooper,  Ex  parte,  130. 
Copeland,  Ex  parte,  16. 
Corey   v.    Eiseman   and    Misar,   228,   247,   403, 

420. 
Corrington  v.  Turner,  360. 
Corner  v.  Kyle,  329. 

Corry  and  Barker  v.  Trout  v.  McDermott,  402. 
Corry  and  Barker  v.  Trout,  185. 
Corry  et  al.  v.  McDermott,  299. 
Corson  V.  Houser,  442. 
Cortelyou  &  Cortelyou,  administrators  et  al.  v. 

Chas.  Eneu  Johnson  &  Co.,  158. 
Cory,  Gebhart,  and  Martin,  Jr.  v.  Blakey,  227, 

251. 
Cosper  V.  Gold  &  Gold,  216,  454. 
Cosper  V.  Gold  and  Gold,  Cosper  v.  Gold,  182, 

196,   242,    362. 
Cottrell,  Ex  parte,  42. 
Cottrell,  In  re,  42. 
Couch  V.  Barnett,  388. 
Coulson  V.  Callender  and  Callender,  17. 
Couper  and  Somers  v.  Bannister,  359. 
Courville,   Ex  parte,  139. 
Cousens,  Ex  parte,  27. 
Cowper-Coles,    Ex    parte,    125. 
Cox,  Ex  parte,  141. 

Craftsman's  Guild,  The,  Ex  parte,  586,  602. 
Crain,  Ex  parte,  113. 
Cramer  and  Haak,  Ex  parte,  118,  402. 
Crane,  In  re,  61,  165,  515. 


Graver's  Sons  v.  Conklin  &  Son,  613. 
Creamer  and  Knowlton,  Ex  parte,  113. 
Crecelius,  Ex  parte,  107,  140. 
Crescent   Manufacturing  Company,   Ex  parte, 

544. 
Crescent  Oil  Company,  The,  Ex  parte,  608. 
Crescent  Oil  Company  v.  W.  C.  Robinson  & 

Son  Company,  284,  398,  527. 
Crescent    Typewriter    Supply    Company,    Ex 

parte,  556. 
Creveling,  Ex  parte,  132,  484. 
Creveling,  In  re,  62,  130,  485. 
Crocker  v.  Allderdice,  281. 
Croft  &  Allen  Company,  Ex  parte,  549. 
Cross,  Ex  parte,  555,  557,  598,  610. 
Cross  v.  Phillips,  180,  301,  304,  315,  339. 
Crouse-Hinds   Company   v.   Appleton   Electric 

Company,  615,  621. 
Crowell,  Ex  parte,  127. 
Crowley,  Ex  parte,  524,  602. 
yCrown  Cork  &  Seal  Co.  of  Baltimore  City  v. 

Aluminum  Stopper  Co.  of  Baltimore  City 

et  al.,   7,   21,   159,   160,   162,   472,  473,   502, 

504,  508,  623. 
Crown  Distilleries  Company,  Ex  parte,  567. 
Crucible  Steel  Company  of  America,  Ex  parte, 

539. 
Cummings  v.  McKenzie,  195,  342,  373,  369. 
Cummins,  Ex  parte,  499. 
Cunningham,  Ex  parte,  483. 
Cunningham,  In  re,  483. 
Curtice  Bros.  Co.,  543. 
Curtis,  Ex  parte,  3,  16,  93,  171. 
Curtis   V.   Hedlund,  313. 
Curtis  V.  de  Ferranti  v.  Lindmark,  275,  324. 
Curtis  V.  Kleinert,  150,  209. 
Curtis  v.  Lindmark,  359. 
Curtis  v.  Marsh,  170. 
Gushing.  Ex  parte,  118. 
Cushman    Paper    Box    Machine    Company    v. 

Goddard  et  al.,  450,  460. 
Cushman  v.  Edwards,  245. 
Cutler,  Ex  parte,  82,  85,  268,  269,  447. 
Cutler  V.  Carichoflf,  235,  283. 
Cutler  V.  Hall,  398. 
Cutler  V.  Leonard,   189,  277,  509. 
Cutler  V.  Riddell,  211. 
Cutten  and  Eraser,  Ex  parte,  12. 


D. 


D.  Kelly  Company,  The,  v.  The  Theobald  & 

Son  Co.  V.  Joseph  Stricbich,  583. 
Daggett.  Jr.  v.  Kaufmann,  387,  425. 
Daggett  v.  Kaufmann,  221,  223,  245. 
Dahlgren  v.  Crocker,  308. 


TABLE  OF  CASES. 


Dallas,  Ex  parte,  119,  125. 

Dalsimer  &  Sons,  Ex  parte,  597. 

Dalton  V.  Hopkins  v.  Newman,  396,  411. 

Danford,  Ex  parte,  137. 

Danquard  v.  Courville,  229,  241. 

Darnell  v.  Grant,  340,  366,  375. 

Dashiell  v.  Tasker,  188,  336,  380,  386. 

Davenport,  Ex  parte,  478. 

Davenport,  In  re,  471,  478. 

Davidson,  Ex  parte,  62,  161. 

Davies,  Ex  parte,  118,  125. 

Davin,  Ex  parte,  81,  130. 

Davis,  Ex  parte,  6,  110,  111. 

Davis  &  Roesch  Temperance  Controlling  Co., 
Ex  parte,  55. 

Davis  Sewing  Machine  Co.,  Ex  parte,  555. 

Davis  v.  Garrett,  46,  58,  167,  332,  374. 

Davis  v.  Horton,  333. 

Davis  V.  Kennard,  307. 

Davis  V.  Ocumpaugh  v.  Garrett,  168,  169,  302, 
306,  390. 

Davis  V.  ZoUers,  177. 

Davis  V.  Cody,  427. 

Davis  V.  Swift,  211,  225,  248,  252. 

Davison,  Ex  parte,  126. 

Dawson,  Halliwell  &  Company,  Ex  parte,  562. 

Day  V.  Adt  v.  Hardy,  307. 

Dayton  Fan  and  Motor  Co.,  54. 

Dayton  Spice  Mills  Co.,  The,  Ex  parte,  611. 

De  Ferranti  v.  Lindmark,  154,  320,  324,  417, 
419,  450. 

DeForest  and  Horton,  Ex  parte,  16,  23,  57. 

De  Kando  v.  Armstrong,  389. 

De  Long  Hook  &  Eye  Company,  The,  Ex 
parte,  547. 

De  Wallace  v.  Scott  et  al.,  325,  331. 

Deane,  Ex  parte,  34. 

Decker,  In  re,  42. 

Deere  &  Company  v.  Rock  Island  Plow  Com- 
pany, 476. 

Deeter,  Ex  parte,  448. 

Degen  v.  Pfadt,  223. 

Deitsch,  In  re,  55. 

Deitsch  Brothers  v.  Loonen,  581,  591. 

Delavoye,  Ex  parte,  45,  467. 

Delbey,  Ex  parte,  134. 

Dempsey,  et  al.  v.  Wood,  172. 

Dempsey,  Ex  parte,  151. 

Dempsey,  In  re,  151. 

Densten  v.  Burnham,  430. 

Denton  and  Denton  v.  Riker,  213. 

Denton  v.  Commissioner  of  Patents,  505. 

Diamond  Ink  Company,  Ex  parte,  560,  604. 

Diamond  Rubber  Co.  of  New  York  v.  Con- 
solidated Rubber  Tire  Co.  and  Rubber 
Tire  Wheel  Co.,  162. 


Dickerson  v.  Tinling,  160,  493. 

Dickey  v.  Fleming,  318. 

Dickinson  v.  Hildreth,  228,  238. 

Dickinson  v.  Norris,  157,  283. 

Dickinson  v.  Thibodeau  v.  Hildreth,  253. 

Dieckmann   v.    Brune,   349. 

Diescher,  E.x  parte,  132. 

Dieterich,  Ex  parte,  50. 

Dietetic,  Ex  parte,  9. 

Dietz,  In  re,  500,  599. 

Dilg  and  Fowler,  Jr.,  Ex  parte,  5. 

Dilg  and  Fowler  v.  Shaver,  170,  256. 

Dilg,  Ex  parte,  29,  320. 

Dilg,  In  re,  30,  518. 

Dilg  V.  Moore  (substituted  for  Allen),  Com- 
missioner of  Patents  of  the  United  States, 
521. 

Dinkel  v.  D'Olier,  190,  239. 

Dittgen  v.  Parmenter,  166,  190,  214,  816,  356, 
407. 

Dixon  and  Marsh  v.  Graves  and  Whitteraore, 
203,  286,  429,  519. 

Dixon,  Ex  parte,  81,  490. 

Dixon  V.  McElroy,  313. 

Doble  V.  Eckart  v.  Henry,  Jr.,  315. 

Doble  V.  Henry,  291,  352,  407. 

Dodge,  Ex  parte,  80. 

Dodge  Manufacturing  Company,  Ex  parte, 
602. 

Dodge  V.  Fowler,  179,  320,  339. 

Doebler,  Ex  parte,  199. 

Dolan,  Ex  parte,  49. 

Doman,  In  re,  88. 

Donk,  Ex  parte,  78. 

Donnell  v.  Herring-Hall-Marvin  Safe  Com- 
pany and  Hall  Safe  and  Lock  Company, 
621. 

Donnelly  v.  Wyman,  340,  381. 

Donning  v.  Anderson,  428. 

Donning  v.  Fisher,  254. 

Donning  v.  Stackpole  and  Laganke,  419,  435, 
438. 

Doolittle  V.  Herdman,  221. 

Dorman,  In  re,  623. 

Door  V.  Ames  and  Rearson,  240. 

Dosselman  and  Neymann,  In  re,  31. 

Double  V.  Mills,  329,  382,  444. 

Dow  V.  Benson,  412. 

Dow  V.  Converse,  29,  248. 

Dow  v.  Des  Jardins.  432. 

Downie  and  Messner,  Ex  parte,  126. 

Downing,  Ex  parte,  27,  42,  139. 

Dr.  Parker  Medicine  Company,  Ex  parte,  608. 

Dr.  Pepper  Company,  The,  Ex  parte,  596. 

Dr.  Peter  Fahrney  &  Sons  Co.,  The,  Ex  parte, 
557,  558. 


TABLE  OF  CASES. 


XIU 


Dravo  and  Miller,  Ex  parte,  35. 

Drevet  Manufacturing  Company,  The  v.  The 

Liquozone  Company,  587,  589. 
Driggs  V.  Schneider,  385,  422,  442. 
Droop,  In  re,  42. 

Dry  Milk  Company,  The,  Ex  parte,  605,  614. 
Dudley  v.  Blikensderfer  and  Barnes  v.  Sedg- 
wick, 394. 
Duff  V.  Latshaw,  294,  379. 
Dukes,  Ex  parte,  320. 
Dukesmith  v.   Corrington   v.   Turner,   54,   191, 

223,  282,  390,  467. 
Duluth-Superior   Milling   Company   v.   Koper, 

533. 
Dunbar  v.  Schellenger,  267,  330,  332,  365,  392, 

396,  411,  422,  428,  441,  521. 
Duncan,  Prichard,  and  Macauley,  Ex  parte,  82. 
Duncan,  Prichard,  and  Macauley,  In  re,  30. 
Duncan  &  Duncan,  In  re,  55. 
Dunker  v.  Reist,  227,  237. 
Dunkley  Celery  and  Preserving  Company,  Ex 

parte,  47,  602. 
Dunkley  v.  Beekhuis,  432. 
Dunlap  V.  Creveling  v.  Rector,  391. 
Dunlevy  &  Brother  v.  Nelson  Morris  &  Co., 

571. 
Dunn  V.  Halliday,  224,  311. 
Durafort,  Ex  parte,  37. 

Durkee,  Jr.  v.  Winquist  and  Turnstrom,  441. 
Duryea  and  White  v.  Rice,  44,  191,  212,  223, 

416. 
Duryea  and  White  v.  Rice,  Jr.,  256,  364,  390. 
Duryea,  Ex  parte,  5. 
Dutcher  v.  Matthew  v.  Dutcher  and  Peter  v. 

Jackson,  280,  302. 
Dwyer,  Ex  parte,  119. 
Dyer,  In  re,  54. 
Dyson  V.  Land  v.  Dunbar  v.  Browne,  283,  313, 

437,  439. 


E.  Bement  &  Sons  v.  National  Harrow  Com- 
pany, 89,  493. 

E.  B.  Pickenbrock  &  Sons,  Ex  parte,  549,  613. 

E.  C.  Atkins  &  Company,  Ex  parte,  558,  559. 

E.  C.  Atkins  &  Company,  In  re,  558. 

E.  C.  Atkins  &  Company  v.  Moore,  Commis- 
sioner of  Patents,  534. 

E.  Mcllhenny's  Son  v.  New  Iberia  Extract  of 
Tobasco  Pepper  Company,  Limited,  538, 
539,  557. 

E.  T.  Fraim  Lock  Company,  The  v.  Reading 
Hardware  Company,  538. 

E.  Wertheimer  &  Cie,  Ex  parte,  528. 

E.  &  A.  H.  Batcheller  Co.,  Ex  parte,  539. 


Earll  V.  Love,  201,  241,  242. 

East,  Ex  parte,  512. 

Eastman  v.   Houston,  204,  270,  347,  369,  423, 

440. 
Eastwood,  In  re,  473,  477. 
Ebersole  v.  Durkin,  263.  385,  388. 
Eclipse  Bicycle  Company  v.  Farrow,  95. 
Edgecombe  v.  Eastman  v.   Houston,  267,  270, 

272. 
Edgerton,  Ex  parte,  131. 
Edison.  In  re.  63. 
Edna  Smelting  &  Refining  Company,  The  t. 

Nathan  Manufacturing  Co.,  586. 
Edwards.  Ex  parte,  1,  3,  518. 
Edwards  and  Gregory.  In  re,  71. 
Edwin  C.  Burt  Company,  Ex  parte,  594. 
Egly  V.    Schuiz,   224,  227,  284. 
Egyptian   Tobacco    Company,    Ex   parte,    569, 

606. 
Eggan,  Ex  parte,  44,  71. 
Ehrendriech,  Ex  parte,  53. 
Ehret  v.  Star  Brewery  Company,  583,  610. 
Eichelberger  and  Hibner  v.  Dillon,  225,  229. 
Eichelberg,  Ex  parte,  45. 
Eickemeyer,  Ex  parte,  66. 
Eilerman  et  al.  v.  McElroy,  226,  245. 
Einstein.  Ex  parte,  15. 
Elberson.  In  re,  61. 
Eldon,  E.X  parte,  517. 
Elgin    National    Watch    Company    v.    Illinois 

Watch  Case  Company,  et  al.,  619,  622. 
Eli  Lily  Company,  The,  Ex  parte,  558. 
Elliott  &  Co.  V.  Youngston  Car  Mfg.  Co.,  483. 
Ellis,  Ex  parte,  39. 
Ellis,  In  re,  79. 

Ellis  V.  Schroeder  v.  Allen,  236. 
Ellison-Harvey  Co.,  The  v.  Monarch,  583. 
Elmira  Cotton  Mills  Company,  Ex  parte,  556. 
Elspass  V.  Taylor.  165,  244,  268. 
Eluere,  Ex  parte,  2. 

Ely  &  Walker  Dry  Goods  Co.,  E.x  parte.  557. 
Emerson,  Ex  parte,  113.  132. 
Emmet  v.  FuUagar.  225,  264.  311,  361,  384,  387. 
Empire    Cycle    Company    v.    Monarch    Cycle 

Manufacturing     Company     v.     Meacham 

Arms  Company,  5S0. 
Empire  Grain  &  Elevator  Co.,  Ex  parte,  347. 
Empire  Knife  Company,  The,  Ex  parte,  917. 
Engel,  Ex  parte,  114. 
Engel  V.  Sinclair,  136,  273. 
Enterprise  Bed  Co.,  Ex  parte,  543. 
Erdman,  E.x  parte,  124. 
Ervin  .\.  Rice  Co..  Ex  parte,  543. 
Eschinger    v.    Drummond    and    Lieberknecht, 

212,   214,  273. 
Essex  v.  Woods,  239. 


TABLE  OF  CASES. 


Esterbrook    Steel    Pen    Manufacturing    Com- 
pany, Ex  parte,  593. 

Estes  V.  Cause,  393. 

Esty  V.  Newton,  185,  389. 

Eupetol  Medicine  Company,  Ex  parte,  458. 

Evans  &  Shepard,  Ex  parte.  544. 

Excelsior  Wooden  Pipe  Company  v.  Pacific 
Bridge  Company  et  al..  453. 
^Expanded  Metal  Company,  The,  et  al.  v.  Brad- 
ford et  al.  and  The  General  Fireproofing 
Company  v.  The  Expanded  Metal  Com- 
pany, 475,  476,  477,  517. 

Eynon,  Ex  parte,  518. 

Eyton,  Ex  parte,  68. 


F.  B.  Q.  Clothing  Company,  The,  Ex  parte. 

F.  Bagot  &  Co.,  Ex  parte.  561. 

F.  Blumenthal  &  Co.,  Ex  parte,  547. 

F.  H.  Gilson  Co.,  Ex  parte,  585,  597. 

F.  M.  Hoyt  Shoe  Company,  Ex  parte,  608. 

F.  P.  May  &  Company,  Ex  parte,  546. 

F.  Mayer  Boot  &  Shoe  Co.,  Ex  parte,  596. 

Faber,  In  re,  479. 

Fadem  and  Berman.  Ex  parte,  31. 

Fagan  v.  Graybill,  169. 

Fairbanks  and  Sauer  v.  Karr,  71,  3fi3,  428. 

Fairfax  v.  Hutin  and  Leblanc  v.  Patten  v. 
Steinmetz  v.  Scott,  192. 

Falk  Tobacco  Company  v.  Kinney  Tobacco 
Company,  575. 

Falkenberg,  Ex  parte,  556. 

Faller  v.  Lorimer  et  al.,  435. 

Familton  v.  The  Alonzo  O.  Bliss  Medical  Com- 
pany, 538. 

Farmers  Manufacturing  Company  v.  W.  R. 
Harrison  &  Co.,  594. 

Famham,  Ex  parte,  58. 

Farquhar  Company  v.  National  Harrow  Com- 
pany, 156. 

Farquhar  et  al..  Ex  parte,  109,  515. 

Fast,  Ex  parte,  35. 

Fay  V.  Duell,  Commissioner  of  Patents,  492, 
514,  623. 

Faulkner,  Ex  parte.  61,  449. 

Faxon,  Ex  parte,  558,  566,  620. 

Felbel  v.   Aquilar,  503,  505. 

Feder  y.  Poyet,  96,  99,  105,  107. 

Fefel  V.  Stocker,  326,  371,  375. 

Feinberg  v.  Cowan,  343,  450. 

Felbel  V.  Fox,  280,  283. 

Felbel  V.  Oliver,  250,  325,  349,  435. 

Feld,  Ex  parte,  34. 

Felsing  V.  Nelson,  184.  208,  506. 

Felten  &  Guilleaume-Lahmeyerwerke  Actien- 


Gesellschaft,  Ex  parte,  573. 
Fennell  v.  Brown  v.  Borsch,  Jr.,  190. 
Fenner  v.  Blake,  294. 
Fenwick  v.  Dixon  and  Dixon,  289. 
Fenwick  v.  Dormandy,  169. 
Fernandez,  Ex  parte,  507. 
Ferris,  Ex  parte,  199. 
Fessendcn,  In  re,  493. 
Fessenden  v.  Potter,  233. 
Feucht,  Ex  parte,  114. 
Fickinger  and  Blake  v.  Hulett,  218,  319. 
Fiebeger,   Ex  parte.  542. 
Field.  Ex  parte,  411. 
Field  v.  Colman,  240,  246,  280. 
Finch  V.   Singleton,  284. 
Fish,  Ex  parte,  66,  123. 
Fisher  v.  Daugherty,  191. 
Fitzgerald  v.  Guillemet,  272. 
Fitzhugh,  Ex  parte,  65. 
Flanigan  et  al.,  In  re,  69. 
Flather  v.  Weber,  297. 
Fleming,  Ex  parte,  40. 
Fletcher,  Ex  parte,  145. 
Flint  &  Waling,  Ex  parte,  604,  606. 
Flomerfelt  v.  Newitter  et  al.,  42,  107,  483. 
Flora  v.  Powrie,  137,  191,  258,  260,  265. 
Floyd,  Ex  parte,  145,  500. 
Floyd  v.  Rohlfing,  304,  313. 
Floyd  v.  Rohlfing.  345. 
Foley  &  Company,  Ex  parte,  606. 
Foote  v.  Wenk,  370. 
Ford,  Ex  parte,  125. 
Fordyce  v.  Stoetzel,  344. 
Fordyce  v.  Taisey,  306,  391. 
Forest  City  Foundry  &  Mfg.  Co.  v.  Barnard, 

63. 
Forsyth   v.   Emery,   218. 
Forsyth  v.  Richards,  242,  302. 
Fortuna  and  Magro,  Ex  parte,  569,  613. 
Fortuny.  E.x  parte,  50. 
Foster,  Ex  parte,  25. 
Foster  v.  Antisdel,  351. 
Foster  v.  Bell,  252. 
Foulis,  Ex  parte,  26,  124. 
Fowler,  Ex  parte,  10,  147,  149. 
Fowler,  In  re,  22. 
Fowler,  Jr.  Ex  parte,  144. 
Fowler  v.  Boyce.  316,  325,  343,  363. 
Fowler  v.  Boyce  v.  Dyson  v.  McBerty.  309. 
Fowler  v.  Boyce  v.  Temple  and  Goodrum,  310. 
Fowler  v.  Boyce  v.  Temple  and  Goodrum  r. 

Dyson  v.  McBerty,  315,  317. 
Fowler  V.  Dodge,  160,  284,  249,  253. 
Fowler  v.  Dyson,  343. 
Fowler  v.  McBerty,  316,  325,  332. 
Fox  and  Barrett,  Ex  parte,  126. 


TABLE  OF  CASES. 


XT 


Fox,  Ex  parte,  133. 

Fox  Solid  Pressed  Steel  Company  v.  Schoen 

Manufacturing  Company,  89. 
Frank  et  al.  v.  Hess  et  al.,  104. 
Frank  &  Gutraann  v.  MacWilliam,  65,  525,  570, 

571. 
Franklin  v.  Morton  v.  Cooley,  307. 
Frankman,  Ex  parte,  129. 
■>/ Frasch,  Ex  parte,  109,  110,  111,  112,  121,  123, 

,        462. 
^Frasch,  In  re.  111,  112,  122. 
Frasch  t.  Moore,  47. 
Frazee  v.  Merchants'  Coffee  Co.,  525. 
Fred  G.  Dieterich  &  Company,  In  re,  465. 
Fred  Wilcox  &  Co.,  In  re,  535. 
Frederick  R.  Stearns  &  Company  v.   Russell, 

42,  80,  478,  481. 
Frederick  R.  West's  Nephews,  Ex  parte,  615. 
Frederick  v.  Frederick  and  Frederick,  232,  277. 
Freeman,  Ex  parte,  104,  100. 
Freeman,  In  re,  101,  106, 
Freeman  v.  Bernstein  et  al.,  264. 
Freeman  v.  Garrels  and  Kimball,  285,  440. 
Freeman  t.  Parks,  174. 
French  v.  Halcomb,  189,  262,  292,  298,  391,  392, 

395. 
Freund  Bros,  and  Company,  In  re,  549 
Freund,  Ex  parte,  133. 
Fried,    Krupp    Aktiengesellschaft    v,    Crozier, 

520. 
Friestedt  v.  Harold,  311. 
Fritsch,  Ex  parte,  52. 
Fritts,  Ex  parte,  11. 
Frost  V.  Chase,  221,  400,  432. 
Fullagar,  In  re,  220. 
Fullagar  v.  Junggren,  304,  311. 
Fuller  V.  Huff  et  al.,  544,  619. 
Fuller  V.  Jones,  343. 
Funk  and  Mickle  v.  Whitely,  320,  325. 
Funk  et  al.  y.  Whitely,  320,  370,  379. 
Funk  V.  Matteson  v.  Haines,  186,  191,  288,  301, 

316,  331,  340,  367. 
Funke  t.   Baldwin,  537. 

Furman  v.  Dean,  189,  194,  259,  325,  327,  433 
Furness,  Ex  parte,  29,  134. 


1^ 


G. 


0.  F.  Heublcin  Bro,.  Ex  parte,  543. 

G.  W.  Cole  Co.  V.  Marshall  Oil  Co.,  615. 

Gabrielson  v.  Felbel,  204. 

Gaines  &  Co,  ▼.  Knecht  &  Son,  528,  615. 

Gaisman  v.  Gillette,  388. 

Gale  Manufacturing  Company,  Ex  parte,  528, 

597. 
Gale,  Sr..  Ex  parte,  18. 


Galena  Oil  Co.  v.  W.  P.  Fuller  &  Co.,  607. 

Gales  V.  Berrigan,  306. 

Gallagher  v.  Despradels,  363. 

Gallagher  v.  Hastings,  188,  288. 

Gallagher  v.   Hien,   382. 

Gallagher,  Jr.  v.  Hien,  343,  368,  370,  382,  386. 

Gaily,  Ex  parte,  1,  8,  13. 

Gaily  V.  Brand,  194,  222. 

Gaily  V.  Burton,  241. 

Gammons,  Ex  parte,  143. 

Garcia  v.  Pons,  237. 

Gardner,  In  re,  77,  78. 

Garland,  Ex  parte,  79. 

Garms,  Ex  parte,  14*. 

Garrells  et  al.  v.  Freeman,  353,  441. 

Gassmann,  E.x  parte,  120. 

Garrett,  Ex  parte,  25,  137,  480. 

Garrett,  In  re,  472,  480. 

Garton-Daniels  Company,  Ex  parte,  93. 

Gaylord,  Ex  parte,  9. 

Gedge  v.  Cromwell,  188,  296. 

Geltz  and  Hosack  v.  Crozier,  275. 

Gem  Cutlery  Co.,  The  v.  Leach,  573,  577. 

General  Electric  Co.  v.  Winona  Interurban  Ry. 
Co.,  472. 

Gentry,  Ex  parte,  142. 

Geo.  B.  Sprague  Cigar  Co.,  The,  and  The 
Wing  Cigar  Co.  v.  T.  M.  Kildow  Cigar 
Company,  451,  551,  557. 

George  A.  Newman  Company,  In  re,  515. 

George  Wostenholm  &  Son,  Limited  v.  Crow- 
ley, 590. 

Gerdom  v.  Ehrhardt,  183. 

Geron,  Ex  parte,  546. 

Gerst  V.  Strehlow,  569. 

Gibboney,  Ex  parte,  319. 

Gibbons  v.  Peller,  293,  338. 

Gibon,  Ex  parte,  161. 

Gibson  V.  Kitsee,  176,  252. 

Gilbert  v.  Gilbert  and  Lindley,  278. 

Gilbert-Stringer  v.  Johnson,  356. 

Giles  Remedy  Company  v.  Giles,  528,  578,  594. 

Gilkeson  v.  Valentine,  225. 

Gill  Brothers  Company,  Ex  parte,  571. 

Gillespie,  In  re.  166. 

Gillie,  Ex  parte,  155. 

Gilman,  E.x  parte,  10. 

Gilman  and  Brown  v.  Hinson,  335,  378,  383, 
383,  407. 

Gilmer,  Ex  parte,  507,  511. 

Girardot,  Ex  parte,  466. 

Gironcoli,  E.x  parte,  2. 

Giroud  V,  .\bbott,  Giroud,  and  McGirr,  277. 

Glafke,  Ex  parte,  60. 

Glenn  et  al.  v.  Adams,  622. 

Gold,  Ex  parte,  508. 


TABLE  OF  CASES. 


Gold,  In  re,  506. 

Gold  V.  Gold,  242,  259,  284,  362,  394,  404,  439. 

Goldberg  v.  Crumpton  v.  Carlin,  313. 

Goldberg  v.  Halle,  365. 

Golden  &  Co.,  Ex  parte,  610. 

Golden  &  Company  v.  Heitz  &  Company,  581. 

Goldman.  Ex  parte,  114. 

Goldsmith,  Ex  parte,  106,  107. 

Goldsmith  v.  United  Shirt  Vest  Company,  535, 

573,  580. 
Good,  Ex  parte,  132. 
Goodfellow  V.  Jolly,  157,  233,  428,  430. 
Goodman,  Leavitt-Yatter  Company,  Ex  parte, 

545,  551. 
Goodwin  V.  Smith,  241,  242,  248. 
Gordon.  Ex  parte,  57. 
Gordon  v.  Wentworth,  269,  349,  378.  379,  385, 

387. 
Goss  V.   Scott,  210,  221,  222,  267. 
Gould  V.  Barnard,  300,  433. 
Gourd  V.  Charles  Jacqin  et  Cie.,  Inc.,  560,  615, 

621. 
Graham,  Ex  parte.  66. 
Graham  v.  Langhaar,  209,  230. 
Graham  Paper  Co.  v.  National  Blank  Book  Co., 

575. 
Graham   Bros.  &  Co.  v.  Norddeutsche  WoU- 

kammerci  and  Kammgarnspinnerei,  529. 
Grand  Rapids  School  Furniture  Company,  Ex 

parte,  542,  550. 
Granger  &  Company,  Ex  parte,  610. 
Granger,  Ex  parte.  596. 
Granger  v.  Richardson,  297. 
Grant,  Ex  parte,  5,  11. 
Graves,  Ex  parte,  149. 
Graves  v.  Gunder,  533,  538,  567. 
Gray.  Ex  parte,  104. 
Gray  v.  McKenzie  v.  McElroy,  402. 
Green,  Ex  parte,  16,  141. 
Green  v.  Benners,  330. 
Green  v.  Farley,  317. 
Greenawalt  v.  Mark,  251,  321,  357,  414. 
Greene,  Tweed  &  Co.  v.  Manufacturers'  Belt 

Hook  Co.,  524,  576,  591,  611. 
Greenwald  Bros..  Inc.  v.  Enochs  et  al.  477. 
Greenwood  v.  Dover,  46,  265,  290,  321,  373,  377, 

424. 
Greer  v.  Christy,  211,  268,  273. 
Greth,  Ex  parte,  143. 
Greuter,  Ex  parte,  286. 

Greuter  v.  Matthieu,  182,  183,  391,  395,  411. 
GrifBn,  Ex  parte,  132,  501. 
Griffin  v.  Swenson,  214,  327. 
Griffith,  Ex  parte.  75,  479. 
Griffith  V.  Braine,  362. 
Griffith  V.  Dodgson,  247. 


Grimm  v.  Dolan,  203. 

Grinnell  v.  Buell,  192,  275. 

Griserin-Werke  Paul  Camphausen  G.  M.  B.  H., 

Ex  parte.  530,  614. 
Grocers  Specialty  Mfg.  Co.,  Limited,  561. 
Groebli,  Ex  parte,  78. 

Grosselin,  Ex  parte,  25,  41.  136,  1.12,  447,  519. 
Grossmith,  Ex  parte,  607. 
Groves,  Ex  parte,  96. 

GuenifFet,  Benoit,  and  Xicault,  Ex  parte,  416. 
Gueniflfet,  Benoit,  and  Nicault  v.  Wictorsohn, 

154,  196,  219,  223,  365,  405. 
Gueniffet,  Benoit,  and  Nicault  v.  Wictorsohn 

321,  322.  324. 
Guenther  Milling  Company.  Ex  parte,  597. 
Guett  V.  Tregoning,  302,  311. 
Gugler,  Ex  parte,  31. 
Guilbert,  Ex  parte,  284. 
Guilbert  v.  Killinger.  187,  264,  375. 
Gwinn  Bros.  &  Co.  Ex  parte,  609. 


H. 


H.  C.  Cook  Company  v.  Beecher  et  al.,  453. 

H.  W.  Johns-Manville  Company  v.  American 
Steam  Packing  Company,  612,  617. 

Haeseler  and  Taylor,  Ex  parte,  495. 

Hageman  v.  Young,  412. 

Hagey,  Ex  parte,  7,  88. 

Hahn,  Ex  parte,  496. 

Haines,  In  re,  69. 

Hale,  Ex  parte,  100. 

Hall,  Ex  parte,  468,  560. 

Hall  V.  Alcord,  435. 

Hall  and  Eraser,  Ex  parte,  117. 

Hall  and  Ruckel  v.  Ingram,  583,  615. 

The  Hall's  Safe  Company  v.  Herring-Hall- 
Marvin  Safe  Company.  465,  590. 

Hall  V.  Weber.  247,  419. 

Ex  parte  Hallberg.  52,  148. 

Hallot.  Ex  parte,  5. 

Hallowell,  Ex  parte,  139. 

Hallwood  V.  Carroll,  404. 

Hallwood  V.  Lalor,  340. 

Hallwood  V.  Lalor  v.  BockhoflF,  340,  369. 

Halsey,  Ex  parte,  466. 

Hamilton.  Ex  parte,  77. 

Hamilton  and  Hamilton.  Jr.,  Ex  parte,  558. 

Hamilton  v.  Carroll  v.  Goldberg  v.  Stahlberg, 
310. 

Hamm  v.  Black,  344,  352. 

Hammond  and  Donahue  v.  Colley  v.  Norris, 
176. 

Hammond  v.  Basch.  302,  303,  316,  327,  380. 

Hammond  v.  Hart,  201.  202,  203. 

Hanan  and  Gates  v.  Marshall,  179. 


TABLE  OF  CASES. 


Hance  Bros.  &  White,  Ex  parte,  543. 

Handel,  Ex  parte,  142. 

Handly  v.  Bradley,  448. 

Hani  fen   v.   E.   H.  Godslialk  Company  et  al., 

152. 
Hannis  Distilling  Company,  The  v.  George  W. 

Torrey  Company,  536,  591. 
Hansen,  Ex  parte,  178,  505. 
Hansen  v.  Dean,  300. 

Hansen  v.  Inland  Type  Foundry,  533,  548,  590. 
Hansen  v.  Wardwell.  417. 
Hanson.  Ex  parte.  61,  106,  365,  511,  516. 
Hardie,  Ex  parte,  511. 
Hardinge,  E.\  parte,  510. 
Hardy,  Ex  parte,  17. 
Harley  v.  United  States,  The,  520. 
Harnisch  v.  Gueniffet,  Benoit,  and  Nicault,  172, 

206,   212,   229. 
Harris,  Ex   parte,   67,   147,   150,   151,   486,  558, 

566. 
Harris,  In  re,  486. 
Harris  v.  Kennedy,  170. 
Harrison,  Ex  parte.  511. 
Harris  v.   Stem  and  Lotz,  195,  321,  334,  340, 

395,  423,  441. 
Harrison  v.  Shoemaker,  219,  231,  260. 
Harter  v.  Barrett,  291,  445. 
Hartje,  Ex  parte,  63. 
Hartley,  Ex  parte,  130,  500. 
Hartley   v.   Mills,  317. 
Hartman,  Ex  parte.  99,  468. 
Hartshorn  v.  Philbrick,  527,  578. 
Hartshorn,  Ex  parte,  101,  103. 
Harvey,  Ex  parte,  285. 
Harvey  v.  Lubbers  v.  Raspillaire,  282. 
Hackell  v.  Miner  v.  Ball.  277. 
Hastings  v.  Gallagher,  195,  296. 
Haudcnschild  v.  Huyck,  176. 
Haug,  Ex  parte,  51.  170. 
Haultain  and  Stovel,  Ex  parte,  57. 
Havana-American  Company,  Ex  parte,  528. 
Hawkins  v.  Coleman  v.  Thullen,  215. 
Hawley  and  Hoops  v.  D.   Auerbach  &  Sons, 

588. 
Hawley,  Ex  parte,  480. 
Hawley,  In  re.  480. 
Hay,  Ex  parte,  147. 
Hay    &    Todd    Manufacturing    Company    v. 

Querns  Brothers,  526. 
Hayes,  Ex  parte,  488. 
Hayes,   In   re,   48S. 
H.  C.  Cole  &  Company  v.  The  William  Lea  & 

Sons  Company,  263,  429. 
Healey,  Ex  parte,  116. 
Heany,  In  re,  59. 
Heard,  Ex  parte,  55. 


Hcaton    Manufacturing    Company,    Ex    parte, 

549. 
Hedlund  v.  Curtis,  206,  234,  363. 
Hcinitsh  and  Moriarty  v.  Congdon  v.  Kelsea, 

309. 
Heintzelman    and     Camp    v.    Vraalsted    and 

Doyle,  212,  216,  269. 
Heinz,  Ex  parte,  492. 
Heinz,  In  re,  38,  492. 
Hellmund.  Ex  parte,  199. 
Henderson,  Ex  parte,  117,  414,  497,  543. 
Hendler  v.  Graf,  422. 
Henke,  Ex  parte,  4. 
Hennessy  et  al.  v.  Richardson  Drug  Company, 

453. 
Henry,  Ex  parte.  28,  130. 
Henry,  Jr.,  In  re,  500. 
Henry   v.   Doble,   292. 
Henze,  Ex  parte,  57.  60. 
Herbst,  Ex  parte,  144,  580. 
Herbst,  In  re,  571,  572. 
Herbst  v.  Records  and  Goldsborough  v.  The 

Rothenberg  Company,  581. 
Herbst  v.  The  Rothenberg  Co.,  525. 
Herman  v.  Pullman,  195,  265,  316,  324,  363,  369, 

381. 
Hermsdorf  v.  Driggs  v.  Schneider,  266. 
Heroult,  Ex  parte,  502. 
Heroult,  In  re,  505,  507. 
Herr  v.  Herr,  Groves,  and  Foreman  v.  Dodds, 

167. 
Herring  Hall-Marvin  Safe  Co.  v.  Hall's  Safe 

Co.,  621. 
Herreshoflf,  Ex  parte,  121. 
HerreshofT  v.  Knietsch,  410,  439. 
Hertford,  Ex  parte,  64. 
Herzog  and  Wheeler,  Ex  parte.  19. 
Hess,  Ex  parte,  5. 
Hess  v.  Joerissen  v.  Felbel,  364. 
Hess-Bright  Mfg.  Co.  et  al.  v.  Standard  Roller 

Bearing  Company,  154. 
Heusch,  Ex  parte,  466. 
Hewitson,  Ex  parte.  105. 
Hewitt  and  Waterman  v.  Greenfield,  241,  286. 
Hewitt  V.  Steinmetz.  212,  411. 
Hewitt  V.  Thomas  v.  Kruh  v.  Weintraub,  191. 

391. 
Hewitt  v.  Weintraub,  420. 
Hewitt  V.  Weintraub  v.   Hewitt  and  Rogers, 

418. 
Hewlett,  Ex  parte.  286. 
Heylman.  Ex  parte,  518. 
Heyne,  Hayward  and  McCarthy  v.  De  Vilbiss, 

Jr.,  238,  283. 
Hezel  Milling  Company  v.  Weidler,  533,  565. 
Hick,  In  re,  168. 


TABLE  OF  CASES. 


Hicks,  Ex  parte,  128,  468. 

Hicks  V.  Costello,  52,  452. 

Hien  v.  Shepard,  365. 

Hiett,  Ex  parte,  503. 

Hildreth,  Ex  parte,  281. 

Hill  and  Renner,  Ex  parte,  98. 

Hill,  Ex  parte,  490. 

Hillard  v.  Brooks,  181,  273,  332,  377. 

Hillard  v.  Eckert,  173,  206. 

Hillard  v.  Fisher,  173. 

Hinkle  and  Ashmore,  Ex  parte,  516. 

Hinklcy  v.  Barker,  210. 

Hinkson,  Hey,  and  McConahy,  Ex  parte,  278. 

Hipp,  Ex  parte,  465. 

Hill  V.  Hodge,  300. 

Hirth,  Ex  parte,  23. 

Hobbs  et  al.  v.  Beach,  80,  155,  472,  473,  508. 

Hoch  V.  McCaskey  v.  Hopkins,  176. 

Hodge,  Ex  parte,  7,  38. 

Hodges,  Ex  parte,  129,  131. 

Hodges,  In  re,  488. 

Hoefer,  Hoefer,  and  Hoefer  v.  Barnes,  240. 

Hoegh,  Ex  parte,  28,  76. 

Hoegh  V.  Gordon,  183,  410. 

Hoey,  Ex  parte,  471. 

Hoey,  In  re,  471,  506. 

Hofmann,  E.x  parte,  150. 

Hoffstetter  v.  Kahn,  198. 

Hogan,  In  re,  67. 

Hoge,  Ex  parte,  77. 

Hohorst  V.  Hamburg-American  Packet  Co.  et 
al.,  95. 

Holbert,  Ex  parte,  608. 

Holder,  Ex  parte,  78,  79. 

Holland,  Ex  parte,  200. 

Hollifield  V.  Ciimmings,  176. 

Hollis,  Ex  parte,  27,  501,  516. 

Holmes  v.  Hurst,  89,  92. 

Holophane  Glass  Company,  Ex  parte,  544,  585. 

Holt  V.   Ingersoll,  254,  398. 

Holz,  Ex  parte,  40. 

Holz  V.  Hewitt,  413. 

Holzapfel's  Compositions  Company,  Limited 
V.  Raht Jen's  American  Composition  Com- 
pany, 534,  564,  585. 

Holzer,  Ex  parte,  495. 

Homan,  Ex  parte,  26. 

Hooker,  Corser  and  Mitchell  Company,  Ex 
parte,  546. 

Hope,  Jr.  V.  Voight,  196,  325,  370. 

Hopfelt  V.  Read,  211,  256,  268. 

Hopkins,  Ex  parte,  556. 

Hopkins,  In  re,  556. 

Hopkins  v.  Newman,  30,  214,  243,  404. 

Hopkins  v.  Peters  v.  Dement,  303. 

Hopkins  v.  Scott,  58,  227. 


Horine  v.  VVende,  43,  404. 

Horlick's  Food  Company,  Ex  parte,  543. 

Home  V.  Somers  &  Company,  561,  583,  601. 

Horton  v.  Leonard,  248. 

Horton  v.  Summer,  194. 

Horton  v.  Zimmer,  5,  38,  261. 

Horstick,  Ex  parte,  38,  136,  510. 

Hoschke,  Ex  parte,  468. 

Hosking.  In  re,  60. 

Hostetter  Company  v.  Sommcrs  et  al.,  618. 

Houghton,  Ex  parte,  457. 

Howard  v.  Bowes,  263,  349,  371. 

Howard  v.  Hey,  204,  237,  405. 

Howe  Scale  Company  of  1886  and  Fay — Sholes 
Company  v.  WyckofF,  Seamans  &  Bene- 
dict,  595. 

Howell,  Jr.  v.  Hess,  217,  368. 

Howell  V.  Hess,  161,  183,  269,  335,  367. 

Hewlett,  Ex  parte.  28. 

Hoyt   Brothers  &   Company,   Ex  parte,  559. 

Hoyt,  Ex  parte,   116. 

Hoyt  V.  Sanders  v.  Hawthorne,  311. 

Hubbell  V.  United  States,  84,  513. 

Huber  v.  Aiken,  301,  420,  433. 

Hubert,  In  re,  67. 

Huebel  v.   Bernard,  295. 

Huenefeld.  Ex  parte,  542,  553. 

Hulett  V.  Long,  27,  180,  366. 

Hull  V.  Hallberg,  225,  319. 

Hull  V.  McGill,  393. 

Hummel.   Ex  parte,  28,   81,   157. 

Hummel  &  Tingley,  Ex  parte,  152. 

Humphrey  v.  Fickert,  359. 

Hunter,  Ex  parte,  19,  137,  495,  496. 

Hunter,  In  re,  526. 

Hunter  v.  Stikeman,  185,  327,  366,  380. 

Hutchinson,  Pierce  &  Co.  v.  Loewy,  535,  538. 

Hutchins,  Ex  parte,  607. 

Hutin  and  Leblanc  v.  Steinmetz  v.  Scott  v. 
Fairfax,   182,  410. 


I. 


lagan,  Ex  parte,  81 

Iglehart  Brothers  v.  Land  et  al.,  442: 

Iglehart  Brothers  v.  Houston  et  al.,  425,  442. 

Ilgner,  Ex  parte,  45. 

Illinois  Hydraulic  Cement  Manufacturing 
Company  v.  Utica  Hydraulic  Cement  Com- 
pany,  537. 

Illinois  Match  Company  v.  Broomall,  579. 

Illinois  Watch  Case  Company  et  al.  v.  Elgin 
National  Watch  Company,  528,  554,  555, 
584.  618,  622. 

Independent  Baking  Powder  Co.  v.  Fidelity 
Mfg.  Co.,  434. 


TABLE  OF  CASES. 


IngersoU  v.  Holt,  426. 

Ingoldsby  v.  Bellows,  206,  234.     . 

Inman,  E.x  parte,  14.5,  498. 

Ino   Medicine   Company,    Ex   parte,   568,    571, 

593,  607. 
Independent    Breweries    Company,    E.x    parte, 

569,  614. 
International  Corset  Company,  Ex  parte,  GIO, 

617. 
International  Food  Company  v.  Price  Baking 

Powder  Company,  ."i42,  573,  617. 
International  Postal  Supply  Company  of  New 

York  V.  Bruce,  520. 
International   Silver   Company  v.   William   A. 

Rogers,  Limited,  531.  609. 
Inter-State  Milling  Company,  Ex  parte,  150. 
Iowa  Soap  Company,  E.x  parte,  532. 
Iroquois   Brewing   Co.   v.   American   Brewing 

Co.,  613. 
Isaacs  &  Speed,  Ex  parte,  446. 
Isenhart,  Ex  parte,  160,  464. 
Ives,  In  re,  67. 
Iwan,  In  re,  470,  490,  492. 


J.  A.  Scriven  Company  v.  W.  H.  Towles  Man- 
ufacturing Company  et  al.,  87,  586. 

J.  C.  Hirschman  Company,  The,  Ex  parte, 
609. 

J.  C.  Somers  &  Co.  v.  Neuman,  executor  of 
J.  F.  Horn,  568,  582. 

J.  Fred  Wilcox  &  Company,  Ex  parte,  612. 

J.  G.  B.  Siegert  &  Hijos,  In  re,  600. 

J.  R.  Newberry  Company  v.  Joseph  J.  O'Don- 
ohue's  Sons.  261,  424,  525,  535,  593. 

J.  W.  Howe  &  Sons,  Ex  parte,  458. 

Jackson  et  al.  v.  Getz  et  al.,  336. 

Jackson  et  al.  v.  Knapp,  335. 

Jackson,  Ex  parte,  144. 

Jackson  v.  Cuntz,  234. 

Jackson  v.  Patten,  198,  257. 

Jackson  v.  Summerfield.  298. 

Jacobs  V.  Beecham,  621. 

Jacobson,  Ex  parte,  76. 

James  Buchanan  &  Co.,  Ltd.  v.  Frederii:k  R. 
West's  Nephews,  605. 

James  Chadwick  &  Brother,  Limited  v.  Fab- 
rique  de  Soie  Artificielle  d'Obourg.  592 

James  Graham  Manufacturing  Company.  Ex- 
parte,   595. 

Janowitz,  Ex  parte,  468. 

Jansson,  Ex  parte,  518. 

Jansson  v.  Larsson,  443. 

Jarvis  v.   Quincy   v.   Jarvis   and   Blakeslee   v. 


Barron  v.   Briggs  and   Shepard,  206,  224, 

278. 
Jean  and  Goode  v.  Hitchcock,  183. 
Jenks,  E.x  parte,  98. 
Jennens,  Ex  parte.  111. 
Jenner   v.   Dickinson   v.   Thibodeau,   243,   321. 

343,  378. 
Jenner  v.  Dickinson,  325,  326. 
Jewell  Belting  Company,  Ex  parte,  553. 
Jewell  &  Vinson,  E.x  parte,  545. 
Jobes  v.  Roberts  v.  Hauss,  260,  442. 
Johann  Hoff,  In  re.  602. 
John  C.  Dowd  &  Company.  In  re,  56. 
John  Dewar  &  Sons,  Limited,  Ex  parte,  459, 

460. 
John  T.  Lewis  &  Bros.  Company  v.  Phoenix 

Paint  &  Varnish  Company.  568,  601. 
John   Wagner  &  Sons   v.   Thi.xton,   Millett  & 

Co.,  587. 
John  R.  Williams  Co.  et  al.  v.  Miller,  Du  Brul 

&  Peters  Mfg.  Co.,  81,  159,  257,  473,  475, 

482. 
Johns,  Ex  parte,  133. 
Johnson,  Ex  parte,  25,  104,  115,  128,  477. 
Johnson  v.  Brandau,  541,  548,  590. 
Johnson  v.  Mueser.  47,  181,  196. 
Johnson  &  Johnson  v.  Whelan,  576. 
Johnston,  Ex  parte,  116.  125. 
Johnston  v.  Erekson  and  Carlson  v.  Barnard, 

312. 
Johnston  v.  Woodbury,  41,  43,  130. 
Jones  and  Taylor  v.  Cooke,  262,  329. 
Jones,  Ex  parte,  43,  449. 
Jones  v.  Larter,  62,  95,  405. 
Jones  V.  Linn,  310. 
Jones  V.  Starr,  178,  281,  433,  434,  436. 
Joseph   Banigan   Rubber  Company  v.   Bloora- 

ingdale,  573. 
Joseph  B.  Funke  Company,  Ex  parte,  531. 
Joseph  v.  Kennedy  v.  McLain,  239. 
Josleyn  v.  Hulse,  176,  235,  286. 
Judd  v.  Campbell,  182,  360,  414. 
Julius  Wile  Sons  &  Co.,  Ex  parte,  562. 
Judge  V.  Harrington.  274. 
Justin  Seubert,  Incorporated  v.  A.  Santaella  & 

Company.  539,  572,  613. 


K. 


K.  Landspriv.  Milly-Kurzen-Seifen  und  Gly- 
cerin-Fabrik  Von  F.  .\.  Sarg's  Sohn  & 
Co.  v.  Hall  and  Ruckel,  616. 

Kaezander  v.  Hodges  and  Hodges,  207,  219. 

Kadow,  Ex  parte,  76. 

Kahn,  Ex  parte,  105. 

Kane  v.  Brill  and  .\dams,  170,  270,  278.  467. 


TABLE  OF  CASES, 


Kapp.  Ex  parte,  98. 

Karpenstein  v.  Hertzberg,  313. 

Kasson  v.  Hetherington,  325,  335,  339,  389. 

Kauermann,    Ex    parte.    54. 

Kaufmann  &  Blachc,  Ex  parte,  605. 

Keech  v.  Birmingham,  314. 

Keen  and  Williams,  Ex  parte,  93. 

Keet    &    Rountree    Drygoods    Company,    Ex 

parte,  556. 
Kehrhahn,  Ex  parte,  18. 
Keil,  Ex  parte,  133. 
Keith,   Erickson,  and  Erickson   v.   Lundquist, 

439. 
Keith,  Erickson,  and  Erickson  v.  Lundquist  v. 

Lorimer  and   Lorimer,  282,   420,  430,  433, 

438,  443. 
Keith,  Ex  parte,  28. 
Kellogg,  Ex  parte,  94. 
Kellogg  Swithboard  &  Supply  Company,  The, 

In  re,  56. 
Kelly  et  al.  v.  Springfield  Railway  Company, 

et  al.,  521. 
Kelly  V.  Dempster,  230. 
Kelly  V.  Fynn,  188,  333,  336,  375,  376,  440. 
Kempshall  v.  Royce,  263,  293,  437. 
Kempshall  v.  Sieberling,  214,  286,  360. 
Kendall,  Ex  parte,  139. 
Kennedy  v.  McLain,  230. 
Kenny  and  Thordarson  v.  O'Connell  v.  Baird 

V.  Schmidt,  419. 
Kenney,  Ex  parte,  37,  63,  514,  518. 
Kent  V.  Wilson  v.  JefFery  and  JeflFery,  313. 
Kentucky  Distilleries  &  Warehouse  Company 

V.  Old  Lexington  Club  Distilling  Company, 

533,  552,  599. 
Kentucky  Distilleries  and  Warehouse  Company 

V.  P.  Dempsey  &  Company,  589,  615. 
Kenyon,  Ex  parte,  534,  544,  546. 
Kephart,  Ex  parte,  417. 
Kern,  Ex  parte,  101.  104. 
Kessler  v.  Eldred.  86,  136. 
Keyser,  Ex  parte,  127. 
Keystone   Chamois   Company,   Ex   parte,   570, 

604. 
Kidd,  Ex  parte,  132. 
Kidde,  Ex  parte,  127. 
Kieffer,  Ex  parte,  28,  82. 
Kiffe  and  Disch,  Ex  parte,  546. 
Kilbourn  v.  Hirner,  243,  258.  344,  364. 
King  and  Babendreier  v.  Libby,  236. 
King,  Ex  parte,  114. 
King  V.  Hansen,  308. 

Kingan  and  Company,  Limited,  Ex  parte,  560. 
Kingan   Packing  Association,  The,   Ex  parte, 

559,  566,  616. 


Kinney  and  Schultz,  Ex  parte,  37,  141. 

Kinney,  Ex  parte,  29. 

Kinney  v.  Goodhue,  243,  245. 

Kinsman  v.  Kintner,  251,  338. 

Kinsman  v.  Strohm,  1.  365,  418,  433. 

Kintner,  Ex  parte,  117,  126. 

Kirkegaard  and  Jebsen  v.  Ries,  264,  293,  344. 

Kitsee  v.  Robertson,  213,  514. 

Klein  v.  Groebli,  196. 

Klemm,  Ex  parte,  487. 

Klepetko,   Ex  parte,  177. 

Klepetko  v.  Becker,  227,  236,  245. 

Kletzker  and  Goesel  v.  Dodson,  182,  185,  831. 

Klemm,  In  re,  471,  487,  490. 

Klingelfuss,  Ex  parte,  154. 

Klussmann,  Ex  parte,  5. 

Knapp  and  Cade,  Ex  parte,  37. 

Kneedler  v.   Shephard,  285. 

Knight  V.  Cutler,  226. 

Knight  V.  Morgan,  434. 

Knothe,  Ex  parte,  96,  98,  101,  103. 

Kohler,  Ex  parte,  107,  129. 

Kokomo  Fence   Machine  Company  v.   Kitsel- 

man,  84,  160,  494. 
Kolb  V.  Hemingway  v.  Curtis,  208,  269. 
Konigliches  Hofbrauarant  Munchen,  Ex  parte, 

529,  563. 

Konold,  Ex  parte,  45. 
Kops  Brothers,  Ex  parte,  546. 
Kops    Brothers    v.    Royal   Worcester    Corset 
Company,  574,  609. 

Koritski  and  Wipf,  Ex  parte,  18. 

Kornitzer,  Ex  parte,  458. 

Kotler,  Ex  parte,  77. 

Kozminski,  Ex  parte,  131. 

Krakau  v.  Harding,  203,  256. 

Kreag  v.  Geen,  189,  299. 

Krejci,  Ex  parte,  15. 

Kroeninger,  Ex  parte,  146. 

Kruse,  Ex  parte,  88,  128,  137. 

Krusius  Brothers,  Ex  parte,  550. 

Kugele  V.  Blair,  169,  170,  175. 

Kugler,  Ex  parte,  32. 

Kuhlman  and  Carpenter,  Ex  parte,  133. 

Kuhlewind,  Ex  parte,  18. 

Kuper,  Ex  parte,  7. 

Kupper,  Ex  parte,  63. 

Kurz,  Ex  parte,  20,  100,  105. 

Kurz  V.  Jackson  and  Pierce,  205. 

Kuttroflf  V.  Cassella  Color  Company,  523,  532, 

610. 
Kyle  V.  Corner,  189,  291,  389. 


TABLE  OF  CASES. 


L, 


L.  &  A.  Scharff,  Ex  parte,  531,  610. 

L.  W.  Levy  &  Co.  v.  Uri,  526,  553,  564,  565,  617. 

La  France,  Ex  parte,  12. 

La  Republique  Francaise  et  al.  v.  Saratoga 
Vichy  Spring  Company,  460,  545,  553,  562. 

Laas  and  Sponenburg  v.  Scott,  334,  343,  446. 

Lacroix,  In  re,  505,  506. 

Lacroix  v.  Tyberg,  79,  365,  409,  499. 

Ladofif  V.  Dempster,  301. 

Lahue,  Ex  parte,  75. 

Lake  Chemical   Company,   Ex  parte,  459. 

Lake  V.  Cahill,  253. 

Lambert,  Ex  parte,  102,  510. 

Lambert,  In  re,  510. 

Landa  v.  Kavle,  351,  388. 

Landau  v.  Spitzenberg,  432. 

Landenberger,  Ex  parte,  148. 

Landes,  Ex  parte,  132. 

Landis,  Ex  parte,  12. 

Landsing,  Ex  parte,  36. 

Lane  v.  Levi,  83,  158,  159,  481,  494. 

Lang,  Ex  parte,  142. 

Lang  V.  Green  River  Distilling  Company,  591, 
612. 

Langan  v.  Warren  Axe  &  Tool  Company,  480. 

Lange,  Ex  parte,  38. 

Langen,  Ex  parte,  33. 

Langerfeld,  Ex  parte,  495. 

Langhaar,  Ex  parte,  40, 

Langslowr  v.  Malocsay,  213,  223. 

Lanning,  In  re,  22. 

Lantzke,  Ex  parte,  112,  113. 

Larkin  Company  v.  Pacific  Coast  Borax  Com- 
pany, 575,  583. 

Larkin  v.  Richardson,  292,  299. 

Larson,  Ex  parte,  29. 

Lasance,  Ex  parte,  141. 

Lasher  v.  Barratt,  230. 

Latham  v.  Armat,  368,  372. 

Latham  v.  Force  and  Parenteau,  232,  249,  318. 

Latour  v.  Lundell,  237,  238. 

Latour  V.  Winter  and  Eichberg,  324,  451. 

Latshaw  v.  Duff  v.  Kaplan,  397. 

Lattig  and  Goodrum  v.  Dean,  165,  399,  508. 

Laughlin  and  Reuleaux,  Ex  parte,  17. 

Laundry  Blue  Company,  In  re,  525. 

Lauritzen  Malt  Co.,  Ex  parte,  612. 

Lavery  v.  Heene,  325. 

Law,  Ex  parte.  40. 

Lawley,  Ex  parte,  34,  113. 

Lawrence,  Ex  parte,  118. 

Lawrence  v.  Voight,  349,  379. 

Lawson,   Ex  parte,  57,   148,  511. 

Lawton,  Ex  parte,  143. 


Laxakola  Company,  Ex  parte,  614. 

Lea  V.  New  Home  Sewing  Machine  Company, 
578. 

Leblanc,  Ex  parte,  49. 

Lee,  Ex  parte,  75,  126. 

Leeds  &  Catlin  Company  v.  Victor  Talking 
Machine  Company  and  United  States 
Gramophone  Company,  79,  155,  159. 

Lefebvre,  Ex  parte,  130,  607. 

Lefever,  Ex  parte,  13. 

Leich,  Ex  parte,  2.  15. 

Leigh  V.  Saart,  108. 

Leilich,  Ex  parte,  140. 

Lemire,  Ex  parte,  118. 

Lemp  v.  Ball,  174. 

Lcmp  v.  Mudge,  377,  378,  424. 

Lemp  V.  Randall  and  Bates.  274,  278. 

Lemp  V.  Randall  and  Bates  v.  Thomson,  286. 

Lendl,  Ex  parte,  52. 

Leon,  Ex  parte,  45,  79. 

Leonard  v.  Chase,  409. 

Leonard  v.  Pardee,  177,  287. 

Leonius,  Ex  parte,  75,  132. 

Leprince  v.  Her  and  Morris,  577. 

Lesler,  Ex  parte,  510. 

Leslie  v.  Tracy  et  al.,  521. 

Lester  H.  Greene  Company,  The  v.  Scott  & 
Bowne,  579. 

Levenstein  and  Naef,  Ex  parte,  466. 

Levering  Coffee  Company  v.  The  Union  Pa- 
cific Tea   Company,  432. 

Levy,  Ex  parte,  137,  143. 

Lewis  and  Bros.  Company  v.  Phoenix  Paint 
and  Varnish  Company,  567,  576. 

Lewis  and  Unger,  Ex  parte,  88,  496. 

Lewis  and  Williams  v.  Cronemeyer,  344,  385. 

Lewis,  Ex  parte,  44.  Ill,  112,  448. 

Lewis  &  Brothers'  Company  v.  Phoenix  Paint 
&  Varnish  Company  v.  National  Lead  Co., 
534. 

Liberman  v.  Williams.  341. 

Lillie,  Ex  parte,  14. 

Lincoln,  Ex  parte,  146. 

Linde,  Ex  parte,  497. 

Lindemeyr  v.  Hoffman,  et  al.,  372,  387,  418. 

Lindmark  v.  De  Ferranti,  286,  418. 

Lindmark  v.  Hodgkinson,  83,  361. 

Lindsey,  Ex  parte,  50. 

Lindstram  v.  Ames,  58. 

Lindstrom  v.  Lipschultz,  167,  260,  436. 

Lion  Fig  and  Date  Company.  Ex  parte,  458. 

Lipe  v.  Miller,  197.  203.  231,  282. 

Lipschutz  V.  Floyd,  221. 

Lipscomb  V.  Pfeiffer,  391. 

Listman  Mill  Company,  Ex  parte,  559,  604. 

Litchfield,  Ex  parte,  513. 


TABLE  OF  CASES. 


Litle,  Jr.,  Ex  parte,  100,  270. 
Little  &  Co.,  Ex  parte,  554. 
Lizotte  V.  Neuberth,  228. 
Ljungstrom,  Ex  parte,  81,  120,  138,  518. 
Lloyd,  Ex  parte,  97,  106,  129. 
Lloyd  V.  Antisdel,  186,  288,  296,  326,  376. 
Locke  V.  Boch,  187,  336. 
Locke  V.  Crebbin,  221,  241,  274. 
Locke,  In  re,  452,  486. 
Lockwood  V.   Schmidt,  308. 
Loeben  v.  Hamrick,  305. 
Loewenbach,  Ex  parte,  34. 
Loft,  Ex  parte,  550. 
Long,  Ex  parte,  70. 
Loomis  V.  Hauser,  387,  388. 
Loonen,  Ex  parte,  552. 
Loppentien,  Ex  parte,  38,  141. 
Lorenz,  Ex  parte,  17,  614. 

Lotterhand  v.  Cornwall,  176,  220,  230,  237,  303. 
Lotterhand  v.  Hanson,  195,  341,  357,  363,  401. 
Lottridge  v.  Eustice,  65,  302. 
Lotz  V.   Kenny,  195,  256. 

Loughlin  and  Reuleaux.  Ex  parte,  501. 

Lovejoy,  Ex  parte,  9. 

Lovejoy  V.  Cady,  353. 

Loveridge,  Ex  parte,  489. 

Lowden  v.  Allen  Brothers  Company,  579. 

Lowrie  v.   Taylor  and   Taylor,   317,   358,   371, 
387,  441,  446. 

Lowry  and  Cowley  v.  Spoon,  418,  431. 

Lowry,  In  re,  73. 

Lowry  V.  Duell,  Commissioner  of  Patents,  482. 

Lowry  V.  Ruping,  439. 

Lowry  V.  Spoon,  128,  188,  222,  319,  357,  431. 

Luby  V.  Taylor,  343. 

Ludington,  Ex  parte,  53. 

Luger  V.  Browning,  165,  194,  240,  268,  271. 

Lukaszewske  v.  Cole,  318. 

Luten,  Ex  parte,  51. 

Luten,  In  re,  46,  486. 

Luthy  &  Company  v.  Peoria  Drill  &   Seeder 
Company,  523,  564. 

Lutz,  Ex  parte,  459. 

Lutz  V.  Lewis,  199,  401. 

Lux,  Ex  parte,  147. 

Lynch  and  Hough,  Ex  parte,  510. 

Lyon,  Ex  parte,  10,  286. 

Lyon,  In  re,  483,  489. 

Lyons,  Ex  parte,  126. 


M. 


M.  Zimmerman  Company,  Ex  parte,  559. 
McArthur  v.  Gilbert,  108,  233,  356. 
McArthur  v.  Mygatt,  338,  339,  450. 
McBerty  v.  Cook,  135,  193,  349,  366. 


McBride  v.  Kemp,  410. 
McBride  v.  Kroder,  240. 
McCallum  v.  Bremer,  394. 
McCanna  v.  Morris,  237. 
McCaskey,  Ex  parte,  19. 
McChesley  v.   Kruger,  222. 
McClain,  Ex  parte,  78,  550. 
McCombs,  Ex  parte,  507. 
McConnell  v.  Lindsay  and  Tonner,  304. 
McCormick,  Ex  parte,  401. 
McCormick  Harvesting  Machine  Company  v. 

C.  Aultman  &  Company  et  al.,  501. 
McCormick,  In  re,  64. 
McCormick  v.  Cleal,  325,  328,  389,  446. 
McCormick  v.  Hallwood,  379. 
McCormick  v.  Robinson,  353,  476. 
McCreery  v.  Commissioner  of  Patents,  477. 
McCullough,  Ex  parte.  197. 
McDermott  v.  Hildreth,  303,  305. 
McDonald,  Ex  parte,  125,  132,  515. 
McDowell  V.  Ideal  Concrete  Mach.   Co.,  505, 

520. 
McEIroy,  Ex  parte,  3,  26,  57,  493. 
McElroy,  In  re,  4,  493. 
McFarland  v.  Watson  and  Watson,  181. 
McGenniss,  Ex  parte,  23. 
McGill  V.  Adams,  190. 
McGuire  v.  Hill,  166,  278. 
McHale,  Ex  parte,  120. 
McHarg  v.  Schmidt  and  Mayland,  47,  279,  309, 

390. 
Mclnnerney,  Ex  parte,  533,  594,  606. 
Mclntyre  v.  Perry,  287,  325. 
McKaye,  Ex  parte,  114,  115. 
McKean  v.  Morse,  410. 
McKee,  Ex  parte,  5. 
McKee  v.  Baker,  235. 
McKeen,  Jr.  v.  Jerdone,  Jr.,  301. 
McKeen  v.  Jerdone,  184. 

McKenzie  v.  McTammany  v.  Garrett,  184,  185. 
McKenzie  v.  Cummings,  373. 
McKillop  V.  Fetzer,  300. 
McKenzie  v.  Gillespie  v.  Ellis  v.  McEIroy  v. 

Ocumpaugh  v.  Norton,  250. 
McKnight,  Ex  parte,  496. 
McKnight  v.  Pohle,  276. 
McKnight   v.   Pohle  and   Croasdale,   194,   321, 

424. 
McLoughlin  Brothers,  Ex  parte,  455. 
McLoughlin  Brothers  v.  Flinch  Card  Co.,  588. 
McLoughlin    v.    Raphael    Tuck    &    Sons    Co., 

Limited,  91. 
McManus  v.  Hammer,  432. 
McMulIen,  76. 
kfcNeal  V.  Macey,  348. 
McNeil  and  Sturtevant,  Ex  parte,  75,  82,  483. 


TABLE  OF  CASES. 


McNeil  and  Sturtevant,  In  re,  491. 
McNeil,  E.X  parte,  479. 
McNeil,  In  re,  480. 
McPhail,   Ex  parte,   142. 
McPherson,  Ex  parte,  66,  67. 
McQuarrie  v.  Mansion,  2:iO. 
McQueen,  Ex  parte,  43,  497. 
McTammany  and  Wright,  Ex  parte,  137,  464. 
McTammany,  Ex  parte,  68. 
Macdonald,   Ex  parte,  535. 
Macdonald  v.  Edison,  188,  268,  376,  381,  385. 
Macey  v.  Laning  v.  Casler,  218. 
Macey  v.  Tobey  v.  Laning.  410. 
MacMalkin  v.  Bollee.  259,  276. 
Maconochie  Solderless  Tinning  Company,  Lim- 
ited, In  re,  46. 
Macphail,  In  re,  70. 
Macwilliam.  In  re,  54. 
Madison  Medicine  Co..  Ex  parte,  597. 
Magazine  and  Book  Company  of  New  York, 

The.  Ex  parte,  548,  602. 
Magic  Curler  Company  v.  Porter,  537. 
Magnus  Metal  Company,  Ex  parte,  553. 
Mahn.  Ex  parte,  455. 

Maitland  v.  B.  Goetz  Manufacturing  Co.,  502. 
Maloney  and  Caldwell,  Ex  parte,  595. 
Manogue-Pidgeon    Iron    Company.    E.x   parte, 

552. 
Manly  v.  Williams,  287. 
Mansfield  and  Hayes,  Ex  parte,  115,  117. 
Marburg,  Ex  parte,  5. 
Marconi,  Ex  parte.  2,  4. 

Marconi  v.  Shoemaker.  54,  349.  367,  379,  385. 
Marconi  v.  Shoemaker  v.  Fessenden,  437,  438, 

443. 
Marder  v.  Dcy  and  Dey,  447. 
Marie,  Princess  of  Ysenburg,  In  re,  60,  516. 
Mark  Cross  Company,  Ex  parte,  529,  595. 
Mark  Cross  Company,  In  re,  530. 
Mark,  Ex  parte.  206. 
Mark  v.  Greenawalt,  279,  411,  425. 
Marks.  Ex  parte,  38,  140,  512. 
Marr,  Ex  parte,  13. 
Marsden  v.   Duell,  Commissioner  of  Patents, 

476. 
Marsh  Brothers  Company,  Ex  parte,  558. 
Marshall,  Ex  parte,  142. 
Marshutz  v.  Commissioner  of  Patents,  48,  136. 

490. 
Marsteller,  Ex  parte,  25. 
Martin,  Ex  parte,  541,  550. 
Martin   v.   Goodrum  v.   Dyson  v.   Lattig   and 

Goodrum,   225,   322. 
Martin  v.  Martin  and   Bowne  Company,  586. 

587. 
Martin  v.  Mullin,  228,  360 


Martin  v.  Rowley,  301. 

Marvel  v.  Decker,  et  al.,  339. 

Marvin  Estate  Company.  In  re,  23. 

Massie,  Ex  parte,  76. 

Mason,  In  re,  479. 

Mason  v.  Hepburn,  346,  375,  387,  389. 

Mast,  Foos  &  Company,  v.  Dempster  Mill 
Manufacturing  Company,  20,  42,  158. 

Mast,  Foss  &  Company  v.  Stover  Manufactur- 
ing Company,  86,  162,  470,  477. 

Mastaglio,  Ex  parte,  17. 

Mathy  v.  The  Republic  Metalware  Company, 
539,  572. 

Matthes,  Ex  parte,  467. 

Matthes  v.  Burt,  348. 

Matthews,  Ex  parte,  2,  115. 

Mattice  v.  Langworthy,  176,  437,  450. 

May  v.  Merker,  304. 

Mayer  Fertilizer  &  Junk  Company  v.  Virginia- 
Carolina  Chemical  Company,  526,  539. 

Maynard,  Ex  parte,  35,  44,  51. 

Maxwell  v.  Bryon  v.  Henry,  171,  341,  253. 

Meacham,  Ex  parte,  37. 

Mead  v.  Davis  and  Varney,  326,  332. 

Mealus,  Ex  parte,  129. 

Mechlin  v.  Horn,  Colclazer  and  Mungen,  220, 
282. 

Meden  v.  Curtis,  9.  20,  217,  241. 

Meier,  Ex  parte,  54. 

Meigs,  Hughes,  and  Stout  v.  Gerdom,  206. 

Mcinhardt.  Ex  parte,  491. 

Mcll  v.  Midgley.  181,  365,  515. 

Mellin  and  Reid,  Ex  parte,  129. 

Mergenthaler,  Ex  parte,  138. 

Meriwether  &  Company,  Ex  parte,  605. 

Merrill,  Ex  parte,  512. 

Merritt.  Black,  and  Morris,  Ex  parte,  493. 

Merritt,  Black,  and  Morris.  In  re,  479. 

Merritt,  Ex  parte,  471. 

Messinger  v.  Commissioner  of  Patents,  47,  500, 
502. 

Meta  Mattulah,  In  re,  46. 

Metzger,  Ex  parte,  32,  121. 

Metropolitan  West  Side  Elevated  Railroad 
Company  et  al,  v.  Siemens,  21. 

Meyer,  Ex  parte.  623. 

Meyer  Brothers  Coflfee  and  Spice  Company, 
Ex  parte,  550,  552,  602. 

Meyer  Brothers  Coflfee  and  Spice  Company, 
In  re,  552. 

Meyer,  et  al.  v.  Rothe.  421. 

Meyer,  Ex  parte,  38. 

Meyer  v.  Sarfert,  188.  189,  222,  240,  350. 

Meyers  v.  Tyden.  174. 

Miami  Clothing  Manufacturing  Company.  Ex 
parte,  544,  602. 


XXIV 


TABLE  OF  CASES. 


Miami  Cycle  &  Mfg.  Company,  In  re,  56. 

Michaels,  Ex  parte,  61. 

Michigan  Condensed  Milk  Company  v.  The 
Kenneweg  Company,  590. 

Midgley,  Ex  parte,  5,  16. 

Miehle  v.  Read,  188,  194,  307,  315,  328,  333. 

Miel  V.  Young,  223,  243,  274,  364. 

Mifflin  et  al.  v.  Dutton  et  al.,  91,  92. 

Mifflin  et  al.  v.  R.  H.  White  Company,  92. 

Milans,  Ex  parte,  513. 

Milans,  In  re,  491. 

Miles  V.  Todd,  316. 

Miller,  Ex  parte,  23,  68,  K12,  141,  142,  146,  208, 
457,  463,  468,  544. 

Miller  v.  Blackburn,  264,  295,  301. 

Miller  v.  Kelley,  203. 

Miller  v.  Mann,  238. 

Miller  v.  Miller  v.  Bacon  v.  Mann  v.  Torrance, 
143. 

Miller  v.  Perham,  243,  359. 

Miller  V.  Speller,  345. 

Miller  v.  Wallace,  312. 

Millett  and  Reed,  Ex  parte,  62,  512. 

Millett  and  Reed  v.  Duell,  Commissioner  of 
Patents,  41,  43. 

Millett  et  al.  v.  Allen,  Commissioner  of  Pat- 
ents,  468,   470,   482,   488. 

Millett,  Reed,  and  tlie  Crosby  Steam  Gage  & 

Valve  Company  v.  Allen,  Commissioner  of 
Patents,  487. 

Mills,  In  re,  499. 

Mills  V.  Torrance,  166,  308,  407. 

Millsaps,  Ex  parte,  478. 

Minehan,  Ex  parte,  516. 

Minich,  Ex  parte,  13,  140. 

Mitchell,  Ex  parte,  551. 

Mitchell  V.  Dinsmore,  290,  444. 

Mitchell  V.  Fitts,  173. 

Moehn,  Ex  parte,  64,  449. 

Modoc  Soap  Company,  E.x  parte,  593. 

Moeser,  Ex  parte,  490,  401. 

Moeser,  In  re,  491. 

MoflFatt  V.  Weiss,  365. 

Moller,  In  re,  66,  6S. 

Monarch  Tobacco  Works,  Ex  parte,  609. 

Mond  V.  Duell,  Commissioner  of  Patents,  484. 
492. 

Moneyweight  Scale  Co.  v.  Toledo  Computing 
Scale  Co.,  504,  .'07. 

Moore,  Ex  parte,  117. 

More,  Commissioner  of  Patents  v.  Heany,  & 
The  Heany  Company,  58,  452.  463. 

Moore,  Commissioner  of  Patents  v.  The  Unit- 
ed States  of  America  ex  rel  Boyer,  66. 

Moore  v.  Curtis,  175,  235,  281,  390,  411. 

Moore  v.  Hewitt,  378,  379. 


Moore  v.  Hewitt  v.  Potter,  171,  201. 

Moore  v.  United  States  ex  rel.  Lindmark,  46, 
463. 

Moorhead,  Ex  parte,  35,  114. 

Moriarty,  Ex  parte,  116. 

Morgan  Engineering  Company  v.  Alliance  Ma- 
chine Company,  477. 

Morgan,  Ex  parte,  77. 

Morgan  Envelope  Company  v.  Walton  et  al., 
278,  614. 

Morley,  Ex  parte,  464. 

Morris  v.  J.  M.  Robinson,  Norton  and  Com- 
pany, 582. 

Morrison,  Ex  parte,  12,  44. 

Morse,  Ex  parte,  27,  130. 

Morss  v.  Henkle,  224,  240. 

Mosher  v.  Tully  and  Clark,  394. 

Moss  v.  Blaisdell,  407,  436. 

Mothes,  Ex  parte,  135. 

Motsinger,  Ex  parte,  50,  131. 

Mount  Carbon  Company,  Limited,  The,  Ex 
parte,  612. 

Mower  v.  Crisp  and  Copeland,  335. 

Mower  v.  Duell,  Commissioner  of  Patents,  20, 
135,  345. 

Moyers.  E.x  parte,  142. 

Mueller  and  Braunsdorf,  Ex  parte,  77,  522. 

Mraz,  In  re,  31. 

Muir,  Ex  parte.  524. 

Muller  V.  Lauber,  323,  439. 

Muller  v.  The  Schuster  Company,  445. 

Mulligan  V.  Tempest  Salve  Company,  363. 

Munro  v.  Alexander.  350. 

Munro  v.  Walker,  416. 

Munson,  Ex  parte,  4.  139. 

Munster  v.  Ashworth,  443. 

Mural  Company,  The  v.  National  Lead  Com- 
pany, 570. 

Murmann,  Ex  parte,  31. 

Murphy,  Ex  parte,  84. 

Murphy  v.  Borland,  229,  238. 

Murphy  v.  Meissner,  258,  290,  291. 

Murray,  Ex  parte.  137,  138. 

Myers,  Ex  parte,  5.  40,  41,  509. 

Myers  v.  Brown,  199,  200,  222. 

Myers  v.  Hammel,  200. 

Mygatt,  Ex  parte,  97,  106,  107,  467. 

Mygatt,  In  re,  56.  97,  106. 


N. 


N.  K.  Fairbank  Co.  v.  Luckel,  King  &  Cake 

Soap  Co.,  607. 
Naef,  Ex  parte.  4,  7,  9,  13,  19,  23,  110. 
Nash,  Ex  parte,  121. 
Nash  Hardware  Company,  In  re,  612. 


TABLE  OF  CASES. 


National  Candy  Company,  The.  In  re,  542,  600. 

National  Chemical  Company,  In  re,  526. 

National  Enameling  and  Stamping  Company 
and  Lalance  &  Grosjean,  Ex  parte,  462, 
520. 

National  Harrow  Company  v.  Hench  et  al.,  86. 

National  Metallurgic  Company,  Assignee  of 
Tom  Cobb  King  v.  Whitman  et  al.,  152, 
374. 

National  Phonograph  Company,  Ex  parte,  546. 

National  Phonograph  Company.  In  re,  406, 
547,   551. 

National  Railway  Materials  Company,  The, 
In   re,   168,  461. 

National  Starch  Manufacturing  Company  v. 
Duryea  et  al.,  619. 

National  Toilet  Company,  Ex  parte,  608. 

Natural  Food  Company,  The,  v.  Williams,  532, 
547,  582. 

Naulty  V.  Cutler,  283,  390. 

Nave  &  McCord  Mercantile  Company,  Ex 
parte,  554. 

Neill  V.  Commissioner  of  Patents,  180. 

Nelson,  Ex  parte,  69. 

Nelson  v.  Faucette,  328,  344. 

Nelson  v.  Felsing  and  Felsing  v.  Nelson,  150, 
399,   504,  506. 

Nenninger,  Ex  parte,  135. 

Nestle  and  Anglo-Swiss  Condensed  Milk  Com- 
pany, Ex  parte,  523. 

Nestle  &  Anglo-Swiss  Condensed  Milk  Com- 
pany V.  Walter  Baker  &  Company,  Lim- 
ited,  592,   616. 

Neth  and  Tamplin  v.  Ohmer,  280,  304,  311. 

Neth  and  Tamplin  v.  Ohmer,  and  Ohmer  v. 
Ohmer,  300.  333. 

Nettles,  Ex  parte,  37. 

Neuberth  v.  Lizotte,  274,  361. 

New  England  Gas  and  Coke  Company,  Ex 
parte,  456. 

New  South  Brewery  and  Ice  Company,  The, 
In  re,  549. 

New  York  Woven  Wire  Mattress  Company, 
The,  In  re,  509. 

Newbold,  Ex  parte,  10. 

Newcomb  v.  Lcmp,  73,  206,  211,  217. 

Newcomb  v.  Thomson,  217,  220. 

Newell  v.  Clifford  v.  Rose,  392,  397,  415. 

Newell  V.  Hubbard,  219,  410. 

Newell  V.  Rose,  197. 

Newman,  Ex  parte,  8,  534,  613. 

Newton,  Ex  parte,  549. 

Newton  v.  Woodward,  267,  329. 

Nichols  and  Shepard  Company,  Ex  parte,  552. 

Nicholson,  Ex  parte,  60,  466. 

Nickel  and  Crane,  Ex  parte,  104. 


Nicolaus,  Ex  parte,  569,  613. 

Niedenfuhr,  Ex  parte,  24. 

Niedermeyer  v.  Walton,  205,  213,  224,  252. 

Niedringhaus  v.  Marquard  v.  McConnell,  224, 

407,  408,  418. 
Niedich,  Ex  parte,  197. 
Nielson  v.  Bradshaw,  187,  283,  335,  393,  418, 

421. 
Nimmy  v.  Commissioner  of  Patents,  482. 
Noble.  Ex  parte,  31. 
Noble  V.  Sessions,  269. 
Noel  V.   Ellis,  541,  542,  606. 
Nordcn  v.  Spaulding,  62,  190,  357,  370. 
Nordstrom,  Ex  parte,  45.  "■ 

Norling  v.   Hayes,  333,  362,  400. 
Normand  v.  Krimmelbein,  174,  184,  271. 
North  British  Rubber  Company  v.  Jandorf  et 

al.,   491. 
Northwestern  Consolidated  Milling  Compar.V; 

The  V.  William  Callam  &  Sons,  611. 
Norris  v.  Johnson,  213. 
Novotny,  Ex  parte,  37. 
Noyes,  Ex  parte.  50. 
Noycs,  In  re,  489. 


O. 


Oakes  v.  Young,  417. 

Oakley  and  Co.  v.  Babcock,  590. 

O'Brien  v.  Gale.   Sr.  v.   Miller  v.  Zimmer  v. 

Calderwood.  212,  213,  280. 
O'Brien   v.    Gale    v.    Zimmer   v.    Calderwood, 

286. 
O'Connor,  Ex  parte,  39. 

O'Connell  v.  Schmidt,  258,  326,  330,  383,  386. 
O'Connor  v.  Vanderbilt,  173,  271. 
Ocumpaugh  v.  McElroy,  390. 
Ocumpaugh  v.  Norton.  157,  265,  342,  373,  374, 

380. 
Office    Specialty    Manufacturing    Company    v. 

Fenton  Metallic  Manufacturing  Company, 

160. 
Ohio  Garment  Company,  The,  Ex  parte,  569, 

612. 
Ohlsen  v.  Harmer,  294. 
Ohmer  v.  Neth  and  Tamplin,  317. 
Old  Lexington  Club  Distillery  Company,  The 

V.  Kentucky  Distilleries  et  al.,  95. 
Oldham  and   Padbury  v.   Peck  v.  Clement  v. 

Richards,  205. 
O'Leary.  In  re,  69. 
Olive  Wheel  Co.,  Ex  parte,  603. 
Oliver,  v.  Felbel,  147,  180,  203,  325,  326,  389. 
Olsen,  Ex  parte,  149,  150. 
Onderdonk  v.  Parkes,  259. 
Opalla  V.  Hughes,  304. 


TABLE  OF  CASES. 


Opinion  of  the  Attorney-General,  465. 

Orcutt,  In  re,  489. 

Orcutt  V.  McDonald  and  McDonald,  258,  298, 

299. 
Orewilcr,  Ex  parte,  27. 
Orndoff,  Ex  parte,  40. 
O'Rourke  v.  Gillespie,  204,  414. 
Osborn  v.  Austin,  253,  328,  351,  396. 
Osbom  V.   Hotsapiller.  253,  328,   329,   374,   442, 
Osborne,  Ex  parte,  32,  38,  61,  81,  125. 
Osborne  v.  Armstrong,  191. 
Osborne  v.  Mitchell,  306. 
Ostergren  et  al.  v.  Tripler,  20,  194.  275,  321. 
Oswego  Maize  Products  Co.  v.  National  Starch 

Co.,   532,  589. 
Otis  V.  Ingoldsby  and  Bowling,  181,  397,  505. 
Outcault  V.  The  New  York  Herald  Company, 

411,  538,  580,  588. 
Overstrom,  Ex  parte,  137,  496. 
Oviatt  and  Dean,  Ex  parte,  12. 
Owens  V.  Richardson,  Jr.,  206. 
Oxnard  and  Baur,  Ex  parte,  121. 
Ozias  V.  Stimpson,  182. 
Ozo  Remedy  Company,  The  v.  Carnrick  &  Co., 

Ltd.,  572. 


P.   J.    Bowlin   Liquor   Company   v.   J.   and  J. 

Eager  Company,  569,  592. 
P.  W.  Minor  &  Son,  Ex  parte,  545. 
Pacific    Steam    Whaling    Company    et    al.    v. 

Alaska  Packers'  Association,  162,  513. 
Page,  Ex  parte,  60. 
Paget  V.  Bugg,  359. 
Paige,  Ex  parte,  37. 
Painter  v.  Hall,  209,  215,  216,  245. 
Palestine   Hebrew  Wine  Company  v.   Carmel 

Wine  Company,  87,  571. 
Palmer  and  Thompson  v.  Bailey,  129,  191. 
Panama  Canal  Zone,  In  re,  469. 
Papendel  v.  Bunnell  v.  Reizenstein  v.  Gaisman 

V.  Gillette,  230,  238. 
Paragon    Malt    Extract    Company,    Ex    parte, 

546. 
Parent,  Ex  parte,  124. 
Park  V.  Cain,  354. 
Park  V.  Davis,  318,  3.54. 
Parker,   Holmes  &   Company,   Ex   parte,   542, 

559,    602,    614. 
Parkes,  Ex  parte,  13,  18. 
Parkcs  v.  Lewis,  258,  310,  312,  344,  364,  433. 
Parkhurst,  Ex  parte,  45. 
Parkin  and  Parkin  v.  Riotte,  426. 
Parrish,  Ex  parte,  511. 
Patee  v.  Cook,  445. 


Patten  v.  Wiesenfeld,  355. 

Patterson.  Ex  parte.  166,  475. 

Paul  V.  Hess,  189,  273,  337,  373,  378,  382,  388, 
4:'4,  441.   444. 

Paul  V.  Johnson,  327,  334,  336,  341. 

Pauling.  Ex  parte,  156. 

Payne.  Ex  parte,  161. 

Peak  V.  Brush,  432. 

Pearsall,  In  re,  446. 

Pearson  Tobacco  Company,  Ex  parte,  603. 

Peats,  Ex  parte.  551. 

Peck  Brothers  Company,  Ex  parte,  570. 

Peck,  Ex  parte,  130.  542. 

Peckham  v.  Price,  261,  298. 

Peerless  Rubber  Manufacturing  Company  v. 
Gorham  Rubber  Company,  591. 

Peirce,  Ex  parte,  26. 

Peirce  v.  Hallctt.  266,  358. 

Peirce  v.  Hiss,  Jr..  295. 

Pelton,  Ex  parte,  109,  118. 

Penn  Electrical  &  Mfg.  Co.  v.  Conroy,  507. 

Penn  Tobacco  Co.,  Ex  parte,  536,  568,  612. 

Perfect  Safety  Paper  Company,  The,  v.  George 
La  Monte  &  Son,  589. 

Perkins,  Ex  parte,  44,  132,  146,  478. 

Perrault  v.  Pierce,  407,  428. 

Perrussel  v.  Wichmann,  173. 

Perry  &  Huntoon  v.  Busse,  286. 

Perry,  E.x  parte,  142. 

Person,  Ex  parte,  129. 

Peter  Schoenhofen  Brewing  Company,  The 
V.  The  Maltine  Company,  507,  601,  610. 

Peters  Catridge  Company,  The  v.  The  Win- 
chester Repeating  Arms  Company,  542. 

Peters  v.  Hopkins  and  Dement,  230. 

Peters  v.  Pike,  Jr.,  204. 

Petrie  v.  De  Schweinitz,  334,  347,  367,  423,  440, 
4.50. 

Pfatischer  v.  Buck,  438. 

Pfautz,  Ex  parte,  133. 

Pfingst  V.  Anderson,  206,  212,  235,  268. 

Pfister  &  Vogel  Leather  Company,  Ex  parte, 
566. 

Phelps  V.  Wormley  v.  McCuUough,  177,  207, 
403. 

Philadelphia  Watch  Case  Company  v.  The 
Dueber  Watch  Case  Manufacturing  Com- 
pany V.  The  Keystone  Watch  Case  Com- 
pany V.  Byron  L.  Strasburger  &  Company, 
571,  583. 

Philippine  Islands,  In  re,  469. 

Phillips,  Ex  parte,  28,  79,  132. 

Phillips   V.   Scott,  224,  238. 

Phillips  V.  Senscnich,  27,  79,  241,  243,  274,  317, 
322,  366. 

Phoenix  Paint  &  Varnish  Company  v.  John  T. 


TABLE  OF  CASES. 


XXV11 


Lewis  &  Bros.  Company,  5G.5,  568,  584. 
Pilgrim  Paper  Co.,  In  re,  25. 
Planten,  J.  R.  (H.  R.  Planten  substituted)   v. 

Canton   Pharmacy   Company,  549,  601. 
Pickard  v.  Ashton  and  Curtis,  225,  278. 
Pickles,  Ex  parte.  111,  127. 
Pickles  V.  Aglar,  287. 
Pieper,  Ex  parte,  151. 
Pierce,  Ex  parte,  40,  285. 
Pietro,  Ex  parte,  563. 
Pietzner,  Ex  parte,  1,  12. 
Pihl  V.  Mersman,  .'540. 
Pilgrim  Paper  Company,  In  re,  24. 
Pillsbury-Washburn     Flour     Mills     Company, 

Limited  et  al.  v.  Eagle,  618. 
Pinder,  Ex  parte,  508. 
Pioneer  Suspender  Company  v.  Lewis  Oppen- 

heimer's  Sons,  537,  601. 

Piper,  Ex  parte,  95,  495. 

Pittsburgh  Pump  Company,  Ex  parte,  533,  551. 

Pittsburgh   Valve,   Foundry  and  Construction 

Company,  Ex  parte,  558,  573,  596. 
Planten  v.  Canton  Pharmacy  Company,  583. 
Piatt  V.  Shipley  et  al.,  333,  339. 
Pledger,  Jr.,  and  Campbell,  Ex  parte,  144. 
Plimpton,  Ex  parte,  32. 
Plumley,  Ex  parte,  82,  120. 
Plumb,  Ex  parte,  78. 
Plumb  V.  New  York,  New  Haven  &  Hartford 

Railroad  Company  et  al.,  470. 
Podlesak  and  Podlesak  v.  Mclnnerney,  82,  217, 

258,   269,   273,   281,   292,   415,   441. 
Poe  V.  Scharf,  331. 
Pohle  V.  McKnight,  276,  383. 
Polar  Knitting  Mills,  Ex  parte,  599. 
Pool  V.  Dunn.  385. 
Poole  V.  Avery,  46,  179,  453. 
Pope  and  Mims  v.  McLean,  315. 
Post,  Ex  parte,  198. 

Potter  V.  Mcintosh,  214,  271,  363,  364,  411. 
Potter  v.  Ochs,  430,  439. 
Potter  &  Roziene,  Ex  parte,  549. 
Potter  v.  Tone,  389. 

Potter  V.  Van  Vleck  v.  Thomson,  172,  232. 
Powell,  Ex  parte,  124. 
Power  V.  Proeger,  268. 
Powers,  Ex  parte,  503,  508. 
Powrie,  Ex  parte,  109. 

Pratt  V.  de  Ferranti  and  Hamilton,  270,  362. 
Price  V.  Blackmore,  236. 
Price  Flavoring  Extract  Co.,  Ex  parte,  569. 
Priest.  Ex  parte,  57,  150. 
Prindle  v.  Brown,  352. 
Proctor,  Ex  parte,  16,  129. 
Prosser,  Ex  parte,  117. 


Protection  of  Spanish  patents  in  the  Philippine 

Islands,  469. 
Proutt  V.  Johnston  and  Johnston,  184. 
Pryor  v.  Ball  v.  Brand,  206,  212. 
Pugh,  Ex  parte,  27,  133. 
Pupin  V.  Rutin  and  Leblanc  v.  Stone,  152,  204, 

231,  272,  423,  522. 
Pure  Flavoring  Extract  Co.,  Ex  parte,  613. 
Pym  V.  Hadaway,  179,  182,  228,  238,  246,  251, 

280,  286,  393,  429. 


Quick  V.  McGee,  317. 

Quist  V.  Ostrom,  277,  319,  348,  376,  377. 


R. 


R.  I.  Sherman  Manufacturing  Company,  Ex 
parte,   602. 

R.  M.  Rose  Company,  Ex  parte,  565. 

R.  Steinecke  Company,  Ex  parte,  460. 

R.  Thomas  &  Sons  Compr.ny  v.  Electric  Porce- 
lain and  Manufacturing  Company  et  al., 
43,   257.   259,   376,   474. 

Rabsilber,  Ex  parte,  624. 

Ragona  v.  Harris,  226. 

Rainier  Company,  The,  Ex  parte,  596. 

Rail,  Ex  parte.  543. 

Ramsey,  Ex  parte.  111. 

Randall  and  Luck,  Ex  parte,  31. 

Randerson  v.  Hanna  &  Hanna,  430. 

Rappleye,  Ex  parte,  109,  125. 

Rat  Biscuit  Company,  The,  Ex  parte,  547. 

Ratican,  In  re,  480. 

Raulct  and  Nicholson  v.  Adams,  177,  190,  191, 
281,  357. 

Ravelli,  Ex  parte,  154. 

Raymond,  Ex  parte,  2,  4,  5,  12,  37,  511. 

Raymond  v.  Kitselman  v.  Somer,  Somer, 
Somer,  and  Somer  v.  Claudin,  229. 

Rayburn  v.  Strain,  233. 

Read,  Ex  parte,  14. 

Read  v.  Scott,  196.  213,  502. 

Reagan.  Ex  parte,  161. 

Recklinghausen  and  Potter,  Ex  parte,  39. 

Reece  v.  Fenwick.  169,  172,  173. 

Reed  Manufacturing  Company,  In  re,  54. 

Rees,  Ex  parte,  1. 

Reese,  Ex  parte,  76. 

Reeve  and  Noyes,  Ex  parte,  58. 

Regina  Music  Box  Company,  Ex  parte,  457. 

Reichenbach  v.  Kelley,  375. 

Reichert  v.  Brown,  239. 

Reid,  Ex  parte,  114,  124. 

Reim,  In  re,  73. 


TABLE  OF  CASES. 


Reiner  v.  Macphail.  185. 

Reis,  Ex  parte,  18. 

Reiss,  Ex  parte,  145. 

Remington,  Ex  parte,  105,  106. 

Reppeto  V.  Stephens,  427. 

Reute  V.  Elwell,  187,  366. 

Reynolds  v.  Bean,  314,  390,  427. 

Rhodes,  Ex  parte,  74,  466. 

Rhodes  v.   Rhodes,  437. 

Rice  &  Hochster  v.  Fishel,  Nessler  &  Co.,  527, 

568,  578,  588. 
Richard,  In  re,  70. 

Richards.  Ex  parte,  7,  15,  165,  467,  497. 
Richards  v.  Burkholder,  346,  384. 
Richards  v.  Kletzker  and  Gossel,  205,  222,  223, 

284. 
Richards  v.  Meissner,  303,  392. 
Richards  v.  Nickerson,  249. 
Richards  v.  Tracy,  172. 
Richardson,  E.x  parte,  2,  12. 
Richardson  v.  Humhrey,  305. 
Richmond,  Ex  parte,  512. 
Richter,  Ex  parte,  31,  116. 
Rickctts  V.  Ambruster  and  Beck,  429. 
Riddle,  Ex  parte,  320. 
Rider,  Ex  parte,  138.  511. 
Ridgway  v.  Tilyou,  313. 
Riegger  v.  Beierl,  20,  467. 
Ries,  Ex  parte.  13,  19. 
Ries  V.  Frick,  430. 
Ries  V.  Gould  v.  Pomeroy,  236. 
Ries  V.  Kirkegaard  and  Jebsen,  259,  294. 
Rietzel  v.  Harmatta,  242. 
Riker  v.  Law,  169. 
Riley,  Ex  parte.  75. 
Rinsche  v.  Sandherr,  217,  254. 
Rippen,  Ex  parte,  459. 
Ritter  v.  Krakau,  279. 
Ritter  v.  Krakau  and  Connor,  181,  196,  337,  391, 

428,  438. 
Roadhouse,  Ex  parte,  132. 
Robert  v.  Keasbey  Company  v.  Portland  Ce- 

raentfabrik  Hemnioor,  589. 
Robert  Smith  Ale  Brewing  Company,  The  v. 

Beadleston  &  Woerz,  571,  574. 
Roberts  v.  Bachelle,  395. 
Roberts  v.  Webster,  436. 
Robertson,    Sanderson    &    Company,    Ltd.    v. 

Charles  Dennehy  &  Company,  548,  617. 
Robin  V.  Muller  and  Bonnet,  155,  177,  277,  278, 

323,  450. 
Robins,  Jr.  v.  Titus  and  Titus,  319. 
Robinson,  Ex  parte.  25,  26,  62,  401. 
Robinson  v.  Copeland,  171,  182,  183,  195,  214, 

860,   302,   334,   342,   356. 


Robinson  v.  McCormick,  300,  367. 

Robinson  v.  Seelinger,  256,  326,  314,  373,  424, 
495. 

Robinson  v.  Thresher,  187,  380,  384. 

Robinson  v.  Townsend  v.  Copeland,  263,  289, 
391,  395,  410. 

Robischung  v.  Handiges,  345. 

Roby,  Ex  parte,  125. 

Rochling,   Ex  parte,  623. 

Rockstroh  v.  Warnock,  224,  226. 

Rodenbaugh  and  Laurentz,  Ex  parte,  120. 

Roe  V.  Hanson,  328,  369. 

Rogers  &  Havard,  Ex  parte,  546. 

Rogers  and  Winslow,  Ex  parte,  474. 

Rogers,  Ex  parte,  15,  24,  71. 

Rolfe,  In  re,  409. 

Rolfe  V.  Hoffman,  330,  337,  350,  371,  387. 

Rolfe  V.  Kaisling  v.  Lecper,  351,  388. 

Rolfe  V.  Leeper,  397. 

Rolfe  V.  Taylor,  418,  426,  436. 

Romunder,  Ex  parte,  26. 

Rosback,  Ex  parte,  66,  93. 

Roschach  v.  Walker,  153,  155. 

Rose  Shoe  Manufacturing  Company,  The  v. 
A.  A.  Rosenbush  &  Co.,  579. 

Rose  V.  Clifford  and  Newell,  331. 

Roselius,  In  re,  486. 

Rosell  V.  Allen,  272,  450. 

Rosenheim  and  Mombel,  Ex  parte,  129. 

Rosenweig  v.  Forbes,  523,  581. 

Roth  V.  Brown  and  Stillman,  204. 

Rouse,  Ex  parte,  119. 

Rousseau  v.  Brown,  47,  154,  323,  324,  447. 

Roussel,  Ex  parte,  151. 

Rowand,  Ex  parte,  66. 

Rowe  V.  Blodgett  v.  Clapp,  98,  100,  103. 

Rowe  V.  Brinkmann,  229,  239,  333. 

Royal  Medicine  Company,  Ex  parte,  458. 

Royce  v.  Kempshall,  73,  263,  291,  426,  436. 

Ruckrich  and  Bode,  Ex  parte,  457. 

Ruete  V.  Elwell,  272. 

Rumford  Chemical  Works  v.  Hygienic  Chem- 
ical Works  of  New  Jersey,  520. 

Rundle,  E.x  parte,  94. 

Ruppert,  Ex  parte,  458,  459. 

Russ,  Ex  parte,  497. 

Russell,  Ex  parte,  44,  48,  53,  75,  147,  318,  394, 
478,   497. 

Russell,  In  re,  489. 

Russell  V.  Asencio,  289. 

Ruthenburg,  Ex  parte,  7,  20. 

Ruthven  v.  Christensen,  439. 

Ryan,  Ex  parte,  502. 

Ryder  v.  Brown  v.  Tripp  and  McMeans  v. 
White,  236. 

Ryder  v.  White,  314. 


TABLE  OF  CASES. 


S. 


S.  C.  Herbst  Importing  Company,  Ex  parte. 

609. 
S.  C.  Herbst  Importing  Company,  In  re,  602, 

610. 
S.  Hecht  &  Son,  Ex  parte,  524. 
S.   S.   Pierce  Co.  v.  Church  &  Dwight  Com- 
pany, 584. 
S.  Sternau  &  Company,  Ex  parte,  546. 
Sacks,  Ex  parte,  17,  556. 
Sachs  V.  Hundhausen,  265,  270,  426. 
Sack,  Ex  parte,   11. 
Sadtler  v.  Carmichael  v.  Smith,  205,  242,  245, 

253,  270,  301. 
Safety  Remedy  Company,  The,  Ex  parte,  572. 
Safety  Remedy  Company,  The.  In  re.  535. 
Saint  Anthony  MilHng  &  Elevator  Company. 

The,  Ex  parte,  524,  552. 
Samstag,  Ex  parte,  145. 
Samuel  Winslow   Skate   Mfg.   Co.,  The,   Ex 

parte,  459. 
Samuelson  v.  Flanders,  221,  223. 
Sandage  v.  Dean  v.  Wright  v.  McKenzie,  438. 
Sanders  v.  Hawthorne  v.  Hoyt,  172. 
Sanders  v.  Melvin.  268. 
Sandman,  Ex  parte,  145,  498. 
Sandstrom,  Ex  parte,  64. 
Sanford  Mills  v.  Aveyard,  405. 
Sanitary  Knitting  Co.,  Ex  parte,  562. 
Sarfert,  In  re,  267,  498. 
Sarfert  v.  Meyer,  177,  350,  355,  402,  406. 
Sarrazin   v.   W.   R.   Irby   Cigar   and  Tobacco 

Company,  Limited,  525,  528. 
Sassin,  Ex  parte,  53. 
Satzman  &  Forman,  Ex  parte,  611. 
Sauers  Milling  Company,  Ex  parte,  547. 
Saunders,  Jr.,  Ex  parte,  63. 
Saunders  v.  Miller,  21,  265. 
Saxlehner  v.   Eisner  &  Mendelson   Company, 

535,  552,  570,  584,  607. 
Saxlehner  v.  Wagner  et  al.,  557. 
Schartow  v.  Schleicher,  333. 
Scheckner.  Ex  parte,  75. 
Schellenbach  v.  Harris,  72. 
Schmertz  v.  Appert,  322. 
Schirmer  v.  Lindemann  and  Stock,  233. 
Schmid,  Ex  parte,  141. 
Schmidmer,  Ex  parte,  60. 
Schmidt  and  Tanody,  Ex  parte,  15. 
Schmidt,  Ex  parte,  37,  38,  124,  135,  143. 
Schmidt  v.  Clark,  322,  425. 
Schmohl,  Ex  parte,  102. 
Schneider  v.  Driggs,  577. 
Schneider  v.  The  Union  Distilling  Co.,  574. 
Schofield  V.  McGovern  v.  Woods,  219. 


Schoonmaker  v.  Sintz,  306. 

Schoshusen,  Ex  parte,  518. 

Schrader,  Ex  parte,  37. 

Schraubstadter,  Ex  parte,  99,  102,  113,  473. 

Schraubstadter,  In  re,  96,  102,  104. 

Schroeder  v.   Wageley   and   Stocke,   298,   325, 

444. 
Schubert  v.  Munro,  194,  218,  241. 
Schuler  v.  Barnes  v.  Swartwout,  248. 
Schultz,  Ex  parte,  509. 
Scliulze,  Ex  parte,  51,  199. 
Schupphaus,  Ex  parte,  235,  401. 
Schupphaus  v.  Stevens,  362. 
Schuster  Co.,  The  v.  Muller,  564,  576. 
Schutte  V.  Rice,  362. 
Schwarzschild   and   Sulzberger   Company,    Ex 

parte,  607. 
Schweitzer,  Ex  parte,  78,  80,  145. 
Scott  and  Deals,  Ex  parte,  112. 
Scott  and   Scott,  Executors  of  the  Estate  of 

Walter  Scott,  deceased  v.  Cruse,  333. 
Scott,  Ex  parte,  29,  32,  51,  83,  94,  114,  125,  128. 

243,   481. 
Scott,  In  re,  30,  197,  481. 
Scott  Paper  Company,  Ex  parte,  548,  350. 
Scott  V.  Badeau.  218. 
Scott  V.  Emmet  and  Hewlett,  174,  175. 
Scott  V.  Hayes  and  Berger.  227. 
Scott  V.  Laas  and  Sponenburg,  332,  423. 
Scott  V.  Scott,  287,  288,  418.  421. 
Scott  V.  Southgate,  186,  358. 
Seabury,  Ex  parte,  481. 
Seabury,  In  re.  478,  481,  490. 
Seabury  v.  Johnson,  Ex  parte,  569,  605. 
Seager,  Ex  parte,  544. 
Seaman  v.  Brooks,  308. 

Seamless  Rubber  Company,  The,  In  re,  549. 
Seamless  Rubber  Company,  The  v.  The  Star 

Rubber  Co.,  242,  575. 
Sears,  Ex  parte,  39,  476. 
Seeberger  v.  Dodge,  194,  334,  337,  342,  683. 
Seeberger  v.  Russel,  310,  330.  370,  382. 
Seeley  v.  Baldwin,  77,  273. 
Segelhorst,  Ex  parte.  140. 
Selden,  In  re,  8. 

Selden  v.  Gerts  v.  Palmer,  216. 
Seiler  v.  Goldberg,  464. 
Seisser,  Ex  parte,  513. 
Seitzinger,  Ex  parte,  130,  131. 
Selle,  Ex  parte,  34. 
Sellers,  Ex  parte,  3. 
Sendelbach  v.  Gillette,  188,  289,  326. 
Serrell  v.  Donnelly.  413,  416. 
Setter,  In  re,  408. 
Severy,  Ex  parte,  36,  139. 
Shaffer  v.  Dolan,  188,  261,  316,  388,  395. 


TABLE  OF  CASES. 


Shannon,  Ward  &  Company,  Ex  parte,  548. 
Shantz  V.  Oslxirn,  304. 
Sharer  v.  McHcnry,  188,  222,  405,  440. 
Shaver  et  a!,  v.  Heller  &  Merz  Company,  541, 

565.  629. 
Shaver,  Ex  parte,  63. 
Shaver  v.  Dilg  and  Fowler,  170. 
Shaw  and  Welty  Shirt  Co.,  The  v.  The  Quaker 

City  Shirt  Mfg.  Co.,  429,  438. 
Shaw,  Ex  parte,  50,  511. 
Shaw  v.  Gaily,  302. 
Shearman,  Ex  parte,  134. 
Sheffield  Car  Co.  v.  Buda  Foundry  &  Mfg.  Co., 

471. 
Sheffield  Mill  &  Elevator  Company,  Ex  parte, 

612. 
Sheldon,  In  re,  474,  489. 
Shellenberger  v.  Andrews,  251. 
Shepler,  Ex  parte,  76,  80,  81. 
Sheppard  v.  Webb,  186,  190,  224. 
Sherman,  Ex  parte,  97,  104. 
Sherman,  In  re,  104. 
Sherwood  v.  Drewsen,  196,  266,  322,  367. 
Sherwood  v.  Horton,  Cato  &  Co.,  523,  577,  580, 

600. 
Shevill  et  al.,  Ex  parte,  118. 
Shiels  v.  Lawrence  et  al,  232,  277,  287,  405,  409. 
Shiner  v.  Edison,  351,  417. 
Shone,  Ex  parte,  51. 
Shrum  v.  Baumgarten,  251. 
Shuman  v.  Beall,  Jr.,  292. 
Sibley  Soap  Company  v.  Lambert  Pharmacal 

Company,  572,  574,  580. 
Sides.  Ex  parte,  458. 
Sieber  &  Trussell  Mfg.  Co.  v.  Chicago  Binder 

&  File  Co.,  489,  565. 
Siebert  v.  Bloomberg,  408. 
Siloam    Springs    Water    Company,    Ex   parte, 

556. 
Silsby,  Ex  parte,  140. 
Silver    Lake    Company    v.    Samson    Cordage 

Works,  525,  529,  603. 
Silver  V.  Eustis,  306. 
Silverman  v.  Hendrickson,  195,  210,  327,  355, 

368,   372,   416,   423,   467. 
Simon,  Ex  parte,  5. 
Simonds,  Ex  parte,  320. 

Simonds    Rolling-Machine    Company   v.    Hat- 
horn   Manufacturing   Company  et  al.,  41, 

158,  473. 
Sinclair  v.  Engel,  361. 
Sindingchristensen,  Ex  parte,  479. 
Singer  Manufacturing  Company  v.  Cramer,  28, 

83,  84,  158,  159,  492,  514. 
Sinnamahoning  Powder  Mfg.   Co.,   Ex  parte, 

549,  597,  603. 


Sirl,  Ex  parte,  169. 

Skinner  v.  Carpenter.  229.  508. 

Skinner  v.  Murray,  359. 

Slaughter,  Ex  parte.  143. 

Slaughter  v.  Halle,  266,  331,  353,  369. 

Sleepy  Eye  Milling  Company,  Ex  parte,  543, 

558. 
Sleepy  Eye  Milling  Company  v.  C.  F.  Blanke 

Tea   and   Coflfee   Company,   528,   534,   561, 

564,  577. 
SlinglufF  and  Heichert  v.  Maynard,  362. 
Small,  Ex  parte,  39,  604. 
Smith  &  Hemenway  Company,  Ex  parte,  528, 

610. 
Smith  and  Hoyland,  Ex  parte,  28. 
Smith  and  Kimble,  Ex  parte,  449. 
Smith  and  Wickes  v.  Emerson  v.  Sanders,  304, 

313. 
Smith,  Ex  parte.  3,  103,  126,  127,  153,  479,  546. 
Smith  V.  Brooks,  379,  429. 
Smith  V.  Carmichael,  170,  172,  281,  295. 
Smith  V.  Duell,  Commissioner  of  Patents,  472, 

478,  482,  623. 
Smith  V.  Foley  v.  Anderson  v.  Smith,  286,  425. 
Smith  V.  Fox,  232. 

Smith  V.  Goodyear  Dental  Vulcanite  Co.,  88. 
Smith  V.  Ingram,  312. 
Smith  V.  Irland,  365. 
Smith  V.  Locklin,  393. 
Smith  V.  Slocum,  247. 
Smith  V.  Warner,  249. 

Smith-Briscoe  Shoe  Company,  Ex  parte,  608. 
Smoot    Drug    Company,    The    v.    Pittsburgh 

Pharmacal   Company  v.   Gertzen  v.  Gris- 

wold.  583. 
Smyth,  Ex  parte,  30. 
Snider  v.  Bunnell,  58,  413,  414. 
Snyder,  Ex  parte.  Ill,  608. 
Snyder  v.  Woodward,  409. 
Sobey  V.  Holsclaw,  179,  181,  223,  274,  279,  360, 

364. 
Soc.'a  Prod.ti  Chim.co  Farmac.a  A.  Bertelli  H 

C,  Ex  parte,  563. 
Societe   pour   le   Commerce   de   The    K   &   C 

Popoflf  Freres,  Ex  parte,  541. 
Sodafoam  Baking  Powder  Company,  Ex  parte, 

607. 
Soley  V.  Peck  v.  Clement  v.  Richards  v.  Meiss- 

ner,  309. 
Sonnenburg  and  Helbig,  Ex  parte,  135. 
Sorenson,  Ex  parte.  511. 
Sorlle,  Ex  parte,  26. 
Sparkes  v.  Small,  64,  68. 
Spaulding  v.  Norden,  190,  265,  370. 
Spayd,  Ex  parte,  543. 
Sperry,  Ex  parte,  14. 


TABLE  OF  CASES. 


xxxi 


Spiller,  Ex  parte,  11. 

Spindler  v.  Nathan  and  Bolze,  438. 

Spitteler  and  Krische,  In  re,  87. 

Sponsel  V.  Darling,  314. 

Spoo,  Ex  parte,  545. 

Spoon,  Ex  parte,  198. 

Springborn,  Ex  parte,  136. 

Springer,  Ex  parte,  45. 

Sroufe  &  Company  v.  Crown  Distilleries  Com- 
pany, 577. 

St.  Amand,  Ex  parte,  51. 

St.  Louis  Candy  Company,  Ex  parte,  545. 

St.  Louis  Corset  Company  v.  Williamson  Cor- 
set and  Brace  Company,  et  al.,  83. 

Stacey,  Ex  parte.  119. 

Stanbon  v.  Howe,  Warren,  and  Furber,  422. 

Standard  Adding  Machine  Co.,  In  re,  56. 

Standard  Computing  Scale  Co.,  In  re.  v.  Stimp- 
son,  22. 

Standard  Fashion  Company,  Ex  parte,  540, 
559. 

Standard  Import  Co.,  Ltd.  v.  New  Orleans  Im- 
port Co.,  Ltd.,  397. 

Standard  Paint  Company  v.  Trinidad  Asphalt 
Manufacturing  Company,  524,  549,  621. 

Standard  Plunger  Elevator  Company,  In  re, 
22. 

Standard  Underground  Cable  Company,  Ex 
parte,  559,  560,  601,  604. 

Standard  Underground  Cable  Company,  In  re, 
604. 

Standard  Varnish  Works  v.  David  B.  Crockett 
Company,  The,  614. 

Stanford,  Ex  parte,  66,  67. 

Stapleton  v.  Kinney,  340. 

Star  Brewery  Company  v.  Val  Blatz  Brewing 
Company,  592. 

Star  Distillery  Company,  The,  Ex  parte,  527, 
528,  609. 

Starkey,  Ex  parte,  502,  512. 
Starkey,  In  re,  71,  502. 
Starr,  Ex  parte,  143,  146. 
Stauft  v.  Reeder,  195. 
Stead,  Ex  parte,  18. 
Stebbins,  Ex  parte,  3. 
Steck,  Ex  parte,  100,  108. 
Stephens,  Ex  parte,  144. 
Steinmetz,  Ex  parte,  110,  123. 
Steinmetz  v.  Hewitt,  251,  421. 
Steinmetz  v.  Thomas,  167,  231,  441. 
Stephen  F.  Whitman  &  Son,  622. 
Stevenot,  Ex  parte,  85. 
Stevens,  Ex  parte,  516. 
Stevens  v.  Patterson,  209. 
Stevenson,  Ex  parte.  117,  147. 


Steward  et  al.  v.  American  Lava  Company,  et 
al.,  30. 

Stier,  ex  parte,  145. 

StiflF  V.  Galbraith,  .S23. 

Stimpson.  Ex  parte,  80,  129. 

Stocker,  Ex  parte,  464. 

Stocking,  Ex  parte,  32. 

Stollwerck  Brothers,  Inc.  v.  Lucerna  Anglo- 
Swiss  Milk  Chocolate  Company  v.  Hoff- 
man, 575. 

Stone,  Ex  parte,  40. 

Stone  V.  Hutin  and  Leblanc,  419,  438. 

Stone  V.  Fessenden,  163. 

Stone  V.   Pupin,  83,  258. 

Storer  v.  Barr,  328. 

Stork  Company  v.  Kabo  Corset  Company.  592. 

Story  V.  Criswell.  218. 

Stratton  and  Claremont,  Ex  parte,  464. 

Strauss,  Ex  parte,  460. 

Streat  v.  Freckleton,  272,  295. 

Streator  Metal  Stamping  Company,  Ex  parte, 
541. 

Strobel  &  Wilken  Company,  Ex  parte,  93. 

Strong  and  Garfield  Company,  Ex  parte,  617. 

Stroud  V.   Miller,  421,  435. 

Struble,  Ex  parte,  410. 

Struble  V.  Young,  227,  228,  358,  420. 
397. 

Struble  v.  Young  and  Townsend  v.   Sawyer, 

Stuart,  Ex  parte,  143,  402. 

Stuckgold,  Ex  parte,  4. 

Stuhmer,  Ex  parte,  561. 

StupakoiT  v.  Johnson,  204,  414. 

Sturgis  v.  Hopewell,  233. 

Stuver,  Ex  parte,  110. 

Sturtevant  et  al..  Ex  parte,  129,  131. 

Sturtevant  and  Sturtevant,  Ex  parte,  17,  126. 

Success  Company,  The,  In  re,  599. 

Sues,  Ex  parte,  12. 

Sugden  and  Pidgin  v.  Laganke  and  Smith  r. 
Marshall.  229. 

Sullivan  v.  Thomson,  250. 

Summers.  Ex  parte.  94. 

Summers  v.  Hart,  248,  251. 

Sumner  Iron  Works,  Ex  parte,  549,  617. 

Sutton,  Ex  parte,  604,  608. 

Sutton  and  Steele,  Ex  parte,  198. 

Sutton,  Steele,  and  Steele,  Ex  parte,  175. 

Sutter  v.  McDonnell  v.  Jolly  v.  Neff,  394. 

Swain  v.  Holyoke  Machine  Co.,  498. 

Swan  and  Finch  Company,  Ex  parte,  607. 

Swantusch,  Ex  parte,  32. 

Swartwout  v.  Barnes,  259. 

Swift,  Ex  parte,  198. 

Swift  V.  Crawford  v.  Baltzer,  220. 

Swihart.  In  re,  168. 


TABLE  OF  CASES. 


Swihart  v.  Mauldin,  2S8,  321,  336,  372,  380. 
Swinburne,  In  re,  153. 
Sydeman  and  Meade  v.  Thoma,  368. 
Sylvestersen,  Ex  parte,  135. 


T. 


T.  M.  Kildow  Cigar  Company  v.  The  George 

B.  Sprague  Cigar  Company,  551. 
Tabor,  Ex  parte.  597. 

Tabulating  Machine  Company,  The  v.  Durand, 
159. 

Talbot  V.  Monell,  275,  336,  435. 

TaHaferro.  Ex  parte,  65,  67. 

Tallmadge,  Ex  parte,  566. 

Tallman,  100. 

Taupenot,  In  re,  55. 

Taussig  V.  Taussig,  574. 

Taylor  &  Lockett,  Ex  parte,  524. 

Taylor  and  Taylor  v.  Lowrie,  358. 

Taylor,  Ex  parte.  87,  516. 

Taylor,  In  re,  492. 

Taylor  v.  Oilman,  345,  347,  385. 

Taylor  v.  Kinsman  v.  Kintner  v.  Potter,  283, 
302. 

Taylor  v.  Westinghouse,  343. 

Teller,  Ex  parte,  49,  467. 

Templin  v.  Sergeant,  199,  241. 

Tennessee  Brewing  Company,  Ex  parte,  459. 

Thayer,  Ex  parte,  15,  141,  582. 

Theodor  and  Carl  Weil,  Ex  parte,  510. 

Thibodeau  v.  Hildreth,  291,  299. 

Thicm  V.  Bowen,  221,  232. 

Thomas,  Ex  parte,  10,  202,  509. 

Thomas  v.  Trissel,  307,  350,  369. 

Thomson,  Ex  parte.  26,  479,  484,  488. 

Thomson,  In  re  25,  472,  476,  494. 

Thompson,  Ex  parte,  7,  135,  149,  198,  267,  472. 

Thompson  v.  Smith,  374. 

Thomson  v.  Weston,  348. 

Thomson   Wood    Fnishing   Company,   The   v. 
Rinald  Brothers,  536. 

Thomson  Houston  Electric  Co.  v.  Union  Rail- 
way Co.,  61. 

Thorpe  v.  White  and  White,  354. 

Thorsten  von  Zweibergk,  Ex  parte,  466. 

ThuUen  v.  Townsend,  238. 

Thullen  v.  Young  and  Townsend,  184,  207,  211, 
223. 

Thurman,  Ex  parte,  171. 

Thurston,  Ex  parte,  479,  489. 

Thurston,  In  re,  472,  482,  488. 

Tietgens  &  Robertson,  Ex  parte,  552. 

Tiffany,  Ex  parte,  11,  36. 

Tillman,  Ex  parte,  468. 

Tilly  V.  Holland  Medicine  Company,  583. 


Tizley,  Ex  parte,  318. 

Topping  V.  Price,  230. 

Tournier,  Ex  parte,  97,  103,  107,  108,  402,  4S0. 

Tournier,  In  re,  103,  108. 

Townsend.  Ex  parte,  149. 

Townsend  v.  Copeland  and  Robinson,  175,  176, 

219.  224.  235,  283. 
Townsend  v.  Copeland  v.  Robinson,  244. 
Townsend  v.  Corey,  417. 
Townsend  v.  Ehret.  184,  215. 
Townsend  v.  Ehret  v.  Young  v.  Struble,  200, 

224,  229,  236. 
Townsend  v.  Thullen,  361. 
Townsend  v.  Thullen  and  Thullen  v.  Young, 

229. 
Townsend  v.  Thullen  v.  Young,  229. 
Tracy,  Ex  parte,  68 
Tracy  et  a1.  v.  Leslie.  366,  371. 

Trade  Marks.  Rights  of  Residents  of  Porto- 
Rico,  Cuba  and  Philippine  Islands  to  Reg- 
ister. 468. 

Traudt.  Ex  parte,  595. 

Traver  v.  Brown,  375. 

Trebon,  Ex  parte,  5. 

Trevette,  Ex  parte,  34,  49,  138,  484. 

Trevette  v.  Dexter,  184,  224,  231. 

Tripler  v.  Linde,  323,  324,  356. 

Tripp  V.  Wolff  V.  Jones,  276,  430. 

Trissell  v.  Thomas,  341,  381. 

Tropenas,  In  re.  63. 

Trufant  v.  Prindle  v.  Brown,  288,  290,  333, 
351,   357,   421,   426. 

Tschirner,  Ex  parte,  32,  114. 

Tucker,  Ex  parte,  107. 

Turnbull  v.  Curtis.  191,  264,  327,  334,  337,  338, 
418,  445. 

Turner,  Ex  parte,  68,  130,  131,  509. 

Turner  v.   Bensinger.  427. 

Turner  v.  Macloskie,  229. 

Tuttle,  Ex  parte,  14,  34,  80,  113. 

Tyler,  Ex  parte,  110,  116,  118. 

Tyler  v.  Arnold,  405. 

Tyler  v.  Kelch,  89,  191,  296,  359. 

Tyler  v.  St.  Amand,  108,  186,  423. 

Tymeson  and  Borland,  Ex  parte,  124,  127. 

Tyson,  Ex  parte,  116,  145. 

U. 

Udell-Predock     Manufacturing     Company     r. 

The  Udell  Works,  523,  586. 
Uebelacker  v.  Brill,  282. 
Uhlig,  Ex  parte.  111,  118,  127. 
Ullman  &  Co.  and  Gin  Phosphate  Co.  v.  Blu- 

menthal  &  Bickert.  60. 
Ullman    Einstein    Company,    The    v.    C.    H. 

Graves  &  Sons,  574. 


TABLE  OF  CASES. 


Underwood  Tyrewriter  Company,  Ex  parte, 
602. 

Underwood  Typewriter  Company  v.  A.  B. 
Dick  Company,  581,  592. 

Union  Carbide  Company,  Ex  parte,  599. 

Union  Carbide  Co.  v.  American  Carbide  Co., 
470,   552.  560. 

Union  Distilling  Company,  The  v.  Schneider, 
208,  454. 

Union  Fibre  Company,  Ex  parte,  548,  561. 

Union  Typewriter  Co.  v.  L.  C.  Smith  &  Bros. 
Typewriter  Co.  et  al.,  166. 

United  Dictionary  Company  v.  G.  &  C.  Mer- 
riam  Company.  91. 

United  States  Brewing  Company,  Ex  parte, 
556. 

United  States  ex  rel.  Bernardin  v.  Duell,  Com- 
missioner of  Patents,  45,  452,  461,  519. 

United  States  ex  rel.  Bronson  Company  et  al. 
V.  Duell.  Commissioner  of  Patents,  451. 

United  States  ex  rel.  Buffalo  Pitts  Company 
V.  Duell,  Commissioner  of  Patents,  461. 

United  States  ex  rel.  George  A.  Lowry  and 
Planters  Compress  Company  v.  Frederick 
I.  Allen,  Commissioner  of  Patents,  178. 

United  States  ex  rel.  Hodgins  v.  Simpson,  461. 

United  States  ex  rel.  Lang  v.  Moore,  Commis- 
sioner of  Patents,  463,  464. 

United  States  ex  rel.  New  York  Condensed 
Milk  Company  et  al.  v.  Duell,  Commis- 
sioner of  Patents,  461. 

United  States  ex  rel.  Stapleton  v.  Duell,  Com- 
missioner of  Patents,  451,  461. 

United  States  ex  rel.  Wedderburn  v.  Bliss, 
Secretary  of  the  Interior,  71. 

United  States,  The  v.  Johnson,  460. 

United  States  of  America,  The  ex  rel.  Boyer 
V.  Moore,  65. 

United  States  of  America  ex  rel.  National 
Phonograph  Co.  v.  Allen,  Commissioner 
of  Patents,  461,  498,  521. 

United  States  of  America  ex  rel.  Stapleton  v. 
Duell,  Commissioner  of  Patents,  519. 

United  States  ex  rel.  Steinmetz  v.  Allen,  Com- 
missioner of  Patents,  44,  51,  ill,  112,  113, 

122,  454,  462,  515. 

United  States  of  America  ex  rel.  The  Bron- 
son Company  et  al.  v.  Duell,  Commissioner 
of  Patents,  584,  600,  603. 

United  States  of  America,  The,  ex  rel.  The 
Newcomb  Motor  Company  v.  Moore, 
Commissioner  of  Patents,  216,  217,  463, 
519. 

United  States  of  America,  The  ex  rel.  Tuttle 
V.  Allen,  Commissioner  of  Patents,  8,  462. 


United  States  of  America  v.  Antikamoia 
Chemical  Company,  459. 

United  States  of  America  v.  Patterson,  496. 

United  States  Graphite  Company,  The  v.  Bora- 
hard,  584. 

United  States  Playing  Card  Company,  Ex 
parte,  454.  555. 

United  States  Playing  Card  Company,  The  t. 
C.  M.  Clark  Publishing  Company,  576,  622. 

United  States  Repair  and  Guaranty  Company 
V.  Assyrian  Asphalt  Company,  41,  84,  485. 

United  States  Sanitary  Manufacturing  Com- 
pany, Ex  parte,  541. 

U.  S.  Standard  Voting  Machine  Company,  In 
re,  168. 

United  States  Wood  Preserving  Company,  In 
re,  409. 

Utica  Drop  Forge  and  Tool  Co.,  Ex  parte,  560. 


Vacuum  Specialty  Company,  In  re,  23. 

Vail.  Ex  parte,  1. 

Valiquet,  Ex  parte,  35. 

\'aliquet  v.  Johnson,  246,  278. 

\'alley  v.  Wurts.  432.  434. 

\'an  Auken  v.  Osborne  v.  Harrison  v.  Canfield 
and  Van  Auken,  207,  225. 

Van  Ausdal,  Ex  parte,  148. 

Van  Eyck,  Ex  parte,  561,  595. 

Van  Horn  &  Sawtell,  Ex  parte,  598. 

VanYorx.  Ex  parte,  287. 

Vance  Shoe  Company,  Ex  parte,  560. 

Vanden  Bergh  &  Company  v.  Belmont  Distil- 
lery Company,  527,  570. 

Vanden  Bergh  &  Company  v.  Blankenheym 
&  Nolet,  568,  578. 

Vanderveld  v.  Smith,  230,  237. 

Vaughen  et  al..  Ex  parte,  11. 

Vegiard  dit  Labonte,  Ex  parte,  118. 

Verge,  Ex  parte,  507. 

Verley,  Ex  parte,  486,  487. 

Verley,  In  re,  487. 

Very,  Ex  parte,  125. 

Velvril  Company,  Limited,  Ex  parte,  585. 

Victor  Talking  Machine  Co.  v.  American 
Graphophone  Co.,  429. 

Vidal,  Ex  parte,  128. 

\'iele  V.  Cummings,  270. 

Vincke.  Ex  parte.  80. 

Viniello,  Ex  parte,  10,  162. 

Voight  V.  Hope,  342.  441. 

Vogel  and  Son,  Ex  parte,  604,  607,  608. 

Volkman  and  Truax,  Ex  parte,  471. 

Volkmann  and  Truax,  In  re,  491. 


TABLE  OF  CASES. 


Von  Kellar  v.  Hayden  v.  Kruh  v.  Jackson,  275, 

■419. 
Von  Recklinghausen  v.  Dempster,  21. 
Von  Recklinghausen  v.  Dempster,  257. 
Voncanon,  Ex  parte,  105. 
Vose,  Ex  parte,  139. 
Votey,  Ex  parte,  271,  279. 
Votey  V.  Gaily,  207,  254. 
Votey  V.  Wuest,  Jr.  v.  Doman,  271. 
Vreeland    v.    Fessenden    v.    Schloemilch,    236. 

237. 


W. 


W.  A.  Gaines  and  Company  v.  C.  A.  Knecht 
and  Son,  528,  587,  614. 

W.  A.  Gaines  and  Co.  v.  Carlcton  Importation 
Company,  523.  529,  614,  615. 

W.  Bingham  Company,  The  v.  G.  W.  Bradley's 
Sons,  584. 

W.  H.  Jones  &  Co.  v.  Carlton  Importation 
Company,  609. 

W.  B.  Bclnap  &  Co.,  Ex  parte.  595. 

Wm.  A.  Coombs  Milling  Company  v.  Barber 
Milling   Company,   575,   580. 

Wm.  A.  Coombs  Milling  Company  v.  The 
Dewey  Bros.  Company,  592. 

Wm.  A.  Rogers.  Limited  v.  International  Sil- 
ver Co.,  589,  596.  598,  601,  612,  616. 

Wm.  T.  Reynolds  &  Co.,  458. 

Wm.  Wrigley,  Jr.  &  Co.  v.  Norris.  533,  582. 

Wade,  Ex  parte,  50. 

Wadsworth,  Ex  parte,  517. 

Wagner,  Ex  parte,  3,  14,  140,  513. 

Wagner.  In  re,  475. 

Wainwright,  Ex  parte,  144,  145. 

Wainwright  v.  Parker.  88. 

Wales  V.  Waterbury  Manufacturing  Company, 
94. 

Walker  and  Walker  v.  Gilchrist,  177. 

Walker,  Ex  parte,  33,  138,  144. 

Walker  v.  Brunhoff,  219,  244. 

Wallace,  Ex  parte,  113. 

Walrath  Ex  parte,  168. 

Walsh  V.  Hallbauer,  189,  246,  413,  .505. 

Walter  Baker  &  Company,  Limited  v.  Hawley 
and  Hoops,  600. 

Walter  Baker  &  Company,  Limited  v.  Harri- 
son, 568,  583. 

Walters,  Ex  parte,  41. 

Walton,  Ex  parte,  14. 

Walworth  Manufacturing  Company,  Ex  parte, 
21. 

Ward  V.  Midgley,  430. 

Wareham,  Ex  parte,  130. 

Warman  and  Winter,  Ex  parte,  49. 


Warner,  Ex  parte,  54,  166. 

Warner  v.  Mead,  208,  244. 

Warner  v.  Searle  and  Hereth  Company,  561, 
570. 

Warner  v.  Smith,  345,  366,  493. 

Warren,  Ex  parte,  3,  75. 

Warren.  In  re,  492. 

Warren  Paint  Co.,  The  v.  Reeve  &  Co.  v. 
Davidson  &  Knowles  Co.,  569. 

Warren  Webster  &  Co.  v.  C.  A.  Dunham  Co., 
474. 

Waterman,  Ex  parte,  100,  105,  128,  142,  624. 

Waterman,  In  re,  603. 

Waterproofing  Company,  The,  Ex  parte,  669, 
612. 

Waters,  Ex  parte.  44.  137. 

Wayne  County  Preserving  Company  v.  The 
Burt  Olney  Canning  Company,  611. 

Watson  V.  Thomas,  188,  191,  341,  374,  392. 

Walters.  Ex  parte,  10. 

Wayne  Poultry  Tonic  Co.,  Ex  parte,  534. 

Webb  V.  Levedahl.  304. 

Webber.  Ex  parte,  45. 

Weber  and  Barry,  Jr.,  Ex  parte,  471. 

Weber  and  Swaller,  Ex  parte,  624. 

Weber,  Ex  parte,  407. 

Weber  v.  Flather,  288,  422,  429. 

Weber  v.  Hall,  415. 

Webster,  Ex  parte,  61. 

Weeks  v.  Dale,  294. 

Wehner,  Ex  parte,  118. 

Weidmann  v.  Knup,  294. 

Weihman,  Ex  parte,  105. 

Weil,  Ex  parte,  554,  559. 

Weil-Haskell  Company  v.  GriflFon  Company, 
600. 

Weingarten  Brothers,  Ex  parte,  595. 

Weintraub  v.   Hewitt,  220,  362,   429. 

Weintraub  v.  Hewitt  and  Rogers,  419. 

Weiss,  In  re,  474,  477. 

Weissenthanner  v.  Goltstein,  320. 

Weissner,  Ex  parte,  99. 

Weithaler.  Ex  parte.  150. 

Welch,  Ex  parte.  28,  119,  120,  121,  482,  488,  518. 

Welch,  In  re.  483. 

Wellcome  v.  Baum,  590. 

Wellington,  Ex  parte,  518. 

Wellman  and  Wellman,  Ex  parte,  57. 

Wellman,  Ex  parte,  107,  144,  446. 

Wells  v.  Packer,  205,  250. 

Welsbach  Light  Company  v.  American  Incan- 
descent Company  and  Berlinicke,  42,  158, 
519. 

Welsbach  Light  Company  v.  Apollo  Incandes- 
cent Gas  Light  Company  et  al.,  155. 


TABLE  OF  CASES. 


Welsbach  Light  Company  v.  The  Sunlight  In- 
candescent Gas  Lamp  Company,  494. 

Welsbach  Light  Company  v.  Union  Incandes- 
cent Light  Company,  159. 

Wende  v.  Horinc,  403,  404,  420. 

Wentworth  v.  Sutton,  Steele  &  Steele,  234. 

Wentzel,  Ex  parte,  3,  19. 

Wenzelmann  and  Overholt,  Ex  parte,  409. 

Wenzelmann  and  Overholt,  In  re,  46,  182. 

Werckmeister  v.  American  Tobacco  Company, 
91. 

Werk  V.  McCarron,  McCarron,  and  McCarron, 
427. 

Werner,  Ex  parte,  606. 

Werner,  In  re,  257. 

Wert  V.  Borst  and  Groscop,  205,  411,  413. 

West,  Ex  parte,  544. 

Western  Electric  Company,  Ex  parte,  550. 

Westinghouse,  Ex  parte,  18. 

Westinghouse  Air  Brake  Company  v.  Great 
Northern  Railway  Company  et  al.,  152, 
453. 

Westinghouse  Electric  &  Manufacturing  Com- 
pany V.  AUis-Chalmers,  470. 

Westinghouse  Electric  &  Manufacturing  Com- 
pany V.  Ohio  Brass  Co.,  2. 

Westinghouse  Electric  &  Manufacturing  Com- 
pany V.  Triumph  Electric  Company,  90,  97, 
490. 

Weston,  Ex  parte,  120. 

Weston,  In  re,  4T4,  484. 

Weston  V.  Benecke,  350. 

Weston  V.  Jewell,  406. 

Wethey  v.  Roberts,  177,  204,  249,  414. 

Wetmore  and  Jenner,  In  re,  24. 

Weyant  v.  Brown  v.  Sittmann,  291. 

Wheeler  v.  Palmros,  172,  176. 

Wheeler  v.  Seeberger.  220,  496. 

Wheildon  v.  Tench,  268. 

Whipple  V.  Sharp.  95,  227,  284,  314,  377. 

Whitall  V.  Gillespie  v.  Blair,  314. 

White,  Ex  parte,  36,  50,  516. 

White,  In  re,  486. 

White  and  Medford,  Ex  parte,  481,  489. 

White  V.  Hewitt  and  Nolen,  71,  442. 

White  V.  Powell.  255. 

White  V.  Thomson.  206,  222. 

White-Smith  Music  Publishing  Company  v. 
Apollo  Company,  91. 

Whitelaw  v.  Eckhardt  v.  Koch,  412. 

Whiting,  Ex  parte,  12. 

Whitlock  and  Huson  v.  Scott,  252. 

Whitman  Grocery  Company,  Ex  parte,  544. 

Whitman  v.  Hearne  et  al.,  324,  447. 

Whitman  v.  King,  389,  442. 

Whitney,  Ex  parte,  19,  127,  134,  200. 


Whitney  v.  Gibson,  303. 

Whitney  v.  Howard,  289. 

Whitney  v.   Howard  v.   Stanley  and   Stanley. 

297,  388. 
Whitson  et  al  v.  Columbia  Phonograph  Com- 
pany, 67,  158,  162. 
Whittemore  Bros.  &  Co.  v.  C.  L.  Hauthaway 

&  Sons,  Incorporated,  531,  532,  537,  581. 
Whittingham  v.  Automatic   Switch  Company, 

586. 
Wick,  Ex  parte,  35,  449. 
Wickers  and  Furlong,  Ex  parte,  62,  451. 
Wickers  and  Furlong,  In  re,  402,  485. 
Wickers  and  Furlong  v.  McKee,  243,  361,  367, 

387. 
Wickers  and  Furlong  v.  Weinwurm,  175,  219, 

241,   429. 
Wickert,  Ex  parte,  456. 
Wiens,  Ex  parte,  76. 
Wieser,  Ex  parte,  143. 
Wiessner,  Ex  parte,  236. 
Wightman  v.  Rothenstein,  427. 
Wiland,  Ex  parte,  61. 
Wilcomb  V.  Lasher,  214,  233,  252,  413,  427. 
Wilcox,  Ex  parte,  133. 
Wilcox  &  Gibbs  Sewing  Machine  Company  r. 

Merrow   Machine   Company,   83,  470,  477, 

516. 
Wilcox  V.  Newton,  234. 
Wilder,  In  re,  404. 
Wilderman  v.  Simm,  184. 
Wilkerson,  Ex  parte.  109,  118,  119. 
Wilkin  V.  Cleveland,  264,  291,  425. 
Wilkinson  v.  Junggren,  218. 
Willard    Chemical    Company,    Ex   parte,    568, 

601,  608. 
Wilier,  Ex  parte,  36. 
William  Connors   Paint  Mfg.  Company,  The, 

Ex  parte,  540,  370. 
William  Connors  Paint  Mfg.  Company,  In  re, 

541. 
William  H.   Baker,   Syracuse,   Inc.   v.   Walter 

Baker  and  Company,  588. 
William  Lea  &  Sons  Company.  The  v.  H.  C. 

Cole  &  Con-pany.  573,  376.  583. 
William  Schotten  &  Company,  E.x  parte,  545. 
Williams  et  al.  v.  Mitchell  et  al.,  540,  542,  620. 
Williams,  Ex  parte.  50.  109,  110,  125,  471. 
Williams,  In  re,  73,  471. 
Williams  v.  Foyer  and  Kurz,  303. 
Williams  v.  Liberman,  306,  307,  341. 
Williams  v.  Ogle.  187. 
Williams  v.   Peri,   119,  352. 
Williams  v.  Webster  v.  Sprague,  209. 
Williamson,  E.x  parte,  70,  116. 
Willits,  Ex  parte,  30. 


XXXVl 


TABLE  OF  CASES. 


Willowcrtft  Shops,  The,  Ex  parte.  599. 
Wimmer,  Ex  parte,  9. 

Winand  v.  The  P.  J.  Drur>-  Company,  587. 
Winchester  Repeating  Arms  Company,  The  v. 

The  Peters  Cartridge  Company,  548. 
Windhorst  &  Company,  Ex  parte,  617. 
Windsor  Milling  and  Elevator  Company,  The 

V.   Brunner,  574. 
Winslow  V.  Austin,  287,  440. 
Winsor  v.  Struble,  279. 
Winter  and  Eichberg  v.  Latour,  324,  451. 
Winter  v.  Slick  v.  Vollkommer,  231,  237,  376, 

385,  407. 
Winton  v.  Jeffrey.  251.  357. 
Wirt,  Ex  parte,  37. 
Wishart  and  Seidel,  Ex  parte,  76. 
Wixford,  Ex  parte,  56. 
Wlost,  Ex  parte,  154. 
Wolf  Brothers  and  Company,  The  v.  Hamilton 

Brown  Shoe  Company,  525,  579,  588,  609. 
Wolfenden  v.  Price,  87,  202. 
Wolski  et  al..  Ex  parte,  465. 
Wolfersperger  and  Moran.  Ex  parte,  129. 
Woltereck,  Ex  parte,  486. 
Woltereck,  In  re,  486. 
Wolverine  Manufacturing  Company,  Ex  parte, 

557. 
Wood  V.  Hinchman,  571. 
Wood  V.  Pfister,  209. 
Woodbridge  v.  Conrad,  209. 
Woodbridge  v.  Winship,  259,  433. 
Woods,  Ex  parte,  5,  15. 
Woods  V.  Poor,  293,  328,  332,  344. 
Woods  V.  Waddell,  242,  401,  414,  452. 
Woodward,  Ex  parte,  40. 
Woodward  v.  Kennedy,  302,  303,  308,  316. 
Woodward  v.  Newton.  205.  210,  215,  216,  221. 

331. 
Woolwine,  Ex  parte,  524. 
Woodworth  Ex  parte,  23.  448. 
Wool  worth,  Ex  parte,  544. 
Worcester  Brewing  Corporation  v.   Rueter  & 

Company,  532,  533,  545,  575. 


Worden,  Ex  parte.  119. 

Wright,  Ex  parte.  486,  513. 

Wright,  In  re,  486. 

Wright  and  Stebbins,  Ex  parte,  9. 

Wright  and  Stebbins  v.  Church,  249. 

Wright  and  Stebbins  v.  Hansen,  411. 

Wright  &  Taylor  et  al..  In  re,  569,  605. 

Wright  &  Taylor  v.  Bluthenthal  &  Bickart  v. 

Mayer,   Sons  &  Company  v.   Cushman  & 

Company,  574,  582. 
Wright  v.  Lorenz,  100,  101,  103,  205,  347. 
Wurtz,  Ex  parte,  69,  449. 
Wurz,  Jr.,  In  re,  449. 
Wyman  v.  Donnelly,  336,  369,  386. 


Yale  &  Towne  Manufacturing  Company,  The, 

Ex  parte,  585. 
Yankauer,  Yankauer,  and  Yankauer,  Ex  parte, 

24. 
Yarnall  v.  Pope,  415. 
Yonkers  Brewery  v.  Her  and  Bergweger,  571, 

573. 
York  v.  Hartman,  583. 
Young,  Ex  parte.  609. 
Young  v.  Donnelly,  270,  439. 
Young  v.  Eick,  78,  253. 
Young,  Smith,  Field  Company,  Ex  parte,  605, 

611. 
Young  v.  Struble,  358. 
Young  V.  Townsend  v.  Thullen,  191. 
Younger,  Ex  parte,  150. 

Z. 

Zacharias,  Ex  parte,  515. 
Zehrbach.  Ex  parte,  149. 
Zimmer  v.  Horton,  261,  350. 
Zimmerman  v.  Zamboni,  215. 
Zinn,  Ex  parte,  459. 
Zwiebel,  Ex  parte,  134. 


DIGEST  OF  DECISIONS. 


[Decisions  of  the  Secretary  of  the  Interior  are  indicated  by  a  dagger  (f)  ;  Opinions  of  the 
Attorney-General  are  indicated  by  a  double  dagger  (J)  ;  of  the  Supreme  Court  of  the  Dis- 
trict of  Columbia  by  the  letter  (n)  ;  of  the  United  States  District  Court  by  the  letter  (b)  ; 
of  the  United  States  Circuit  Courts  by  the  letter  (c) ;  of  the  United  States  Circuit  Court 
of  Appeals  by  the  letter  (rf)  ;  of  the  Court  of  Appeals  of  the  District  of  Columbia  by  a 
star  (*)  ;  and  of  the  Supreme  Court  of  the  United  States  by  two  stars   (**).] 


ABANDONMENT   OF   APPLICATION. 

(See  Abandoned  Applications.) 

I.  In  General. 
II.  Delay  of  Applicant. 

(a)  In  General. 

(b)  Excusable. 

(c)  Not  E.rcusable. 

III.  Response  of  Applicant. 

(a)  In  General. 

(b)  Sufficient. 

(c)  Insufficient. 

IV.  Statutory  Term. 

(a)  In  General. 

(b)  Effect  of  Susf'cnsion. 
V.  Effect  of  Various  Delays. 

VI.  Failure  to  Complete  Application. 
VII.  Formal. 

I.  In  General. 

1.  Where  no  action  whatever  is  taken  by  the 
applicant  within  the  time  fixed  by  law,  the 
primary  examiner  is  empowered  to  exercise 
no  discretion  upon  the  question  of  abandon- 
ment, but  acts  in  a  ministerial  capacity,  and 
therefore  a  letter  asking  him  to  reconsider  his 
action  holding  the  case  abandoned  is  inef- 
fective and  improper.  Ex  parte  Vail,  C.  D. 
1905,  115  O.  G.  1583. 

2.  Where  no  action  is  received  in  a  case 
within  the  year  allowed  by  law,  the  examiner 
is  without  discretion  and  must  regard  the  ease 
as  abandoned  unless  and  until  the  commis- 
sioner considers  the  excuse  for  the  delay  and 
determines  whether  or  not  it  was  unavoid- 
able. Ex  parte  Rees,  C.  D.  1905,  116  O.  G. 
2007. 

3.  Where  the  question  of  abandonment  of 
an  application  for   failure  to  act  responsively 

1 


depends  upon  the  correctness  of  the  examin- 
er's conclusion  that  claims  in  a  proposed 
amendment  are  drawn  to  independent  inven- 
tions, Held  (1)  that  the  question  of  inde- 
pendence of  invention  is  not  reviewable  on 
petition  (Steinmetz  v.  Allen,  C.  D.  1904,  703, 
109  O.  G.  549),  and  (2)  that  this  question 
should  at  no  time  be  reviewed  upon  either  pe- 
tition or  appeal,  except  after  reconsideration 
by  the  examiner  in  connection  with  the  specifi- 
cation of  errors  required  by  Rule  69.  Ex 
parte  Gaily,  C.  D.  1903,  115  O.  G.  802. 

4.  The  question  of  abandonment  of  an  ap- 
plication decided  by  a  former  commissioner 
will  not  be  reviewed  except  upon  a  clear  and 
satisfactory  showing  that  the  commissioner 
was  misled  by  the  applicant  as  to  the  facts, 
and  mere  ex  f'arte  affidavits  cannot  be  regard- 
ed as  such  showing.  Kinsman  v.  Strohm,  C. 
D.  1906,  120  O.  G.  2127. 

.  5.  The  action  of  the  office  holding  an  appli- 
cation to  be  abandoned  is,  in  effect,  a  rejec- 
tion. If  that  action  is  erroneous,  the  applicant 
has  his  remedy  by  way  of  appeal,  a  The 
United  States  of  America,  ex  rel.  Tuttle  v. 
Allen,  126  O.  G.  760. 

II.  Delay  of  Applicant. 

(a)  In  General. 

6.  It  is  the  right  of  an  applicant  to  wait 
until  the  last  of  the  time  allowed  him  by  law 
for  action ;  but  when  he  continually  does  so  he 
is  not  in  a  position  to  asic  for  leniency  in  the 
application  of  the  rule  against  delay.  E.x 
parte  Pietzner,  C.  D.  1903,  103  O.  G.  2171. 
^  7.  The  fact  that  the  applicant  is  barred  from 
filing  a  new  application  is  not  in  itself  a  rea- 
son for  holding  that  the  application  is  not 
abandoned.     It    furnishes    a   reason    why    the 


ABANDONMENT  OF  APPLICATION,  II,  (b). 


application  should  not  be  permitted  to  become 
abandoned ;  but  the  rule  against  delay  applies 
to  such  a  case  as  well  as  to  others.    Id. 

8.  No  application  is  abandoned  by  mere 
delay  beyond  the  year  allowed  by  law  for  ac- 
tion; but  the  office  is  justified  in  treating  it 
and  referring  to  it  as  abandoned  unless  and 
until  it  is  shown  to  the  satisfaction  of  the 
commissioner  that  the  delay  was  unavoidable. 
Ex  parte  Raymond,  2d,  C.  D.  1903,  104  O.  G. 
439. 

^  9.  After  the  year  allowed  by  law  has  ex- 
pired without  action  by  the  applicant  the  com- 
missioner has  no  authority  to  revive  the  case 
to  await  action  by  the  applicant  in  the  future. 
He  is  authorized  to  determine  the  question 
of  unavoidable  delay  only  in  connection  with 
an  action  taken.     Id. 

«,■  10.  In  connection  with  a  petition  to  revive 
should  be  made  in  excuse  for  the  delay,  and 
it  should  state  all  of  the  reasons  for  all  of  the 
delay  up  to  the  time  when  the  proper  action 
called  for  by  the  rules  is  taken.    Id. 

11.  The  word  unavoidable  in  the  statute 
means  more  than  that  to  act  would  have  been 
inconvenient,  and  the  mere  plea  that  the  in- 
ventor was  busy  upon  other  matters  cannot 
be  accepted  as  showing  that  the  delay  was 
unavoidable.  Ex  parte  Marconi,  C.  D.  1904, 
108  O.  G.  796. 

12.  A  delay  of  four  j-ears  in  acting  upon  an 
application  is  not  to  be  excused  except  upon 
the  clearest  and  most  satisfactory  showing 
that  it  was  unavoidable.  Ex  parte  Gironcoli, 
C.  D.  1906,  120  O.  G.  2753. 

V  13.  The  question  whether  delay  in  acting 
upon  a  case  was  unavoidable  can  be  deter- 
mined only  after  action  is  taken,  and  ther»- 
fore  a  petition  not  accompanied  by  an  action 
must  be  denied.  Ex  parte  Richardson,  C.  D. 
1906,  120  O.  G.  2753. 

^  14.  Supposed  error  in  the  examiner's  action 
is  no  excuse  for  delay  in  responding  beyond 
the  year  allowed  by  law.     Id. 

15.  Where  an  applicant  attempts  to  excuse 
the  delay  in  the  prosecution  of  his  case  on 
the  ground  that  its  subject-matter  is  domi- 
nated by  certain  claims  in  a  copending  appli- 
cation and  that  he  considered  it  advisable  to 
press  the  broad  application  to  allowance  be- 
fore letting  this  application  go  to  issue.  Held, 
that  the  conduct  of  applicant  in  the  prosecu- 
tion of  his  case  has  not  been  such  as  to  en- 
title him  to  leniency  in  the  application  of  the 
rule  that  amendments  must  be  such  as  the 
condition    of    the   case    requires   and   that    in 


electing  to  prosecute  his  application  in  this 
manner  he  must  assume  all  risk  as  to  the  suf- 
ficiency of  his  actions.  Id.  Ex  parte  Leich, 
C.  L.   1907,  126  O.  G.  1066. 

16.  Where  it  appears  that  for  several  years 
action  upon  the  case  has  been  intentionally 
delayed  until  the  latter  part  of  the  period  al- 
lowed by  law  within  which  to  take  such  ac- 
tion, failure  to  file  an  amendment  within  the 
statutory  period  after  the  last  office  action  can 
be  considered  unavoidable  only  in  view  of  cir- 
cumstances of  a  compelling  nature  which  pre- 
vented such  action.  Ex  parte  Ciolfi,  C.  D. 
1908,  137  O.  G.  1238. 

17.  The  remedy  by  bill  in  equity  to  obtain 
a  patent  which  has  been  refused  by  the  patent 
office  given  by  Revised  Statutes,  section  4915 
(U.  vS.  Comp.  St.,  1901,  p.  3392),  is  a  part  of 
the  application  for  the  patent  and  is  governed 
by  the  rule  as  to  laches  declared  by  Revised 
Statutes,  section  4894  (U.  S.  Comp.  St.,  1901, 
p.  3384),  which  provides  that  the  failure  of 
an  applicant  to  prosecute  his  application  within 
one  year  after  any  action  therein  shall  be  re- 
garded as  an  abandonment,  unless  it  be  shown 
that  the  delay  was  unavoidable,  c  Westing- 
house  Electric  &  Mfg.  et  al.  v.  Ohio  Brass  Co., 
C.  D.  1911,  169  O.  G.  205. 

(b)  Excusable. 

18.  Where  all  parts  of  an  application  save 
the  fee  were  filed  April  9,  1904,  but  in  ac- 
knowledging the  filing  this  office  gave  the  date 
as  April  12,  and  the  applicant  subsequently 
paid  the  fee  on  April  12,  1905,  Held,  that  the 
case  is  not  abandoned.  Ex  parte  Matthews, 
C.  D.  1905,  117  O.  G.  2631. 

19-  Where  it  clearly  appears  that  the  attor- 
ney prepared  and  forwarded  a  proper  amend- 
ment in  ample  time,  but  it  was  not  received 
by  this  office,  and  upon  discovering  that  fact 
the  attorney  prepared  and  filed  a  second 
amendment,  Held,  that  the  case  is  not  abaa- 
doned  although  the  second  amendment  was 
received  after  the  expiration  of  the  year  al- 
lowed for  action.  Ex  parte  Eluere,  C.  D. 
1905,   117  O.  G.  2635. 

20.  Where  an  inventor  prosecuting  his  own 
case  failed  to  receive  the  original  office  ac- 
tion and  where  a  copy  subsequently  mailed  at 
his  request  reached  him  when  he  was  ill,  from 
which  illness  he  never  recovered,  and  where 
the  assignees  took  steps  to  prosecute  the  case 
as  soon  as  they  were  able  after  the  death  of 
the  inventor,  but  the  amendment  filed  by  them 


ABANDONMENT  OF  APPLICATION,  II,  (c). 


3 


was  not  received  until  after  the  expiration  of 
the  time  allowed  by  law,  Held,  that  the  delay 
was  unavoidable  and  that  the  case  is  not  aban- 
doned. Ex  parte  Sellers,  C.  D.  1905,  118  O. 
G.  270. 

21.  Where  upon  petition  from  holding  that 
an  application  is  abandoned  it  is  pointed  out 
that  the  practice  under  which  the  application 
had  been  held  abandoned  was  an  extension  of 
prior  practice  and  a  surprise  to  applicant  and 
it  is  further  shown  that  the  applicant  had  been 
diligently  engaged  upon  the  case  and  it  appears 
that  responsive  action  was  taken  as  soon  as 
the  applicant  was  finally  convinced  of  what 
was  required.  Held,  that  the  delay  in  taking 
such  action  may  be  considered  unavoidable, 
and  that  the  application  is  not  abandoned.  Ex 
parte  Wagner,  C.  D.  1005,  119  O.  G.  965. 

22.  Where  delay  beyond  the  year  allowed 
for  action  is  slight  and  the  application  prior 
to  such  delay  had  been  prosecuted  vigorous- 
ly and  in  good  faith  and  the  applicant  had 
reason  to  suppose  that  his  action  was  filed  in 
time,  the  delay  may  be  regarded  as  unavoid- 
able.    Ex  parte  Wentzel,  131  O.  G.  941. 

23.  Delay  in  prosecuting  a  case  occasioned 
by  the  fact  that  the  attorney's  file  of  the  ap- 
plication was  placed  in  the  file  of  an  interfer- 
ence involving  a  divisional  application  which 
was  kept  in  a  part  of  the  attorney's  office 
other  than  that  where  his  application  files 
were  kept,  so  that  his  attention  was  not  called 
to  it  by  his  clerk  until  after  the  expiration 
of  the  year,  Held,  unavoidable.  Ex  parte  Cur- 
tis, 138  O.  G.  767. 

(c)  .Vo.'  Excusable. 

24.  Where  an  applicant's  claims  were  re- 
jected and  a  letter  was  subsequently  received 
requesting  a  re-examination  of  one  of  said 
claims,  but  not  referring  to  the  others,  and 
where  this  one  claim,  as  also  the  other  claims, 
was  finally  rejected  for  the  reasons  and  on 
the  references  before  cited,  and  where,  after 
waiting  nearly  two  years,  applicant  filed  an 
amendment  canceling  all  the  claims  and  sub- 
stituting others  without  making  any  showing 
as  to  cause  of  delay,  Held,  that  the  applica- 
tion was  abandoned.  E.x  parte  Stebbins,  C.  D. 
1899,  88  O.  G.  1335. 

25.  Where  after  the  final  rejection  of  the 
claims  a  party  persists  in  presenting  inadmis- 
sible amendments  and  makes  no  attempt  to  file 
an  appeal,  as  the  condition  of  the  case  re- 
quires, until  eleven  days  before  the  year  ex- 


pires and  through  a  mistake  or  clerical  error 
then  fails  to  file  a  proper  appeal  until  after 
the  time  has  expired.  Held,  that  the  delay  was 
not  unavoidable  and  a  revival  is  not  warrant- 
ed.    Ex  parte  Warren,  C.  D.  1901,  96  O.  G. 

2410. 

2G.  Where  a  party  intentionally  postpones 
proper  action  until  the  last  of  the  time  al- 
lowed, he  assumes  the  risk  from  accidents, 
mistakes,  and  other  circumstances  which  may 
then  prevent  action.    Id. 

27.  To  warrant  the  revival  of  an  abandoned 
application,  it  must  be  shown  that  the  delay 
was  unavoidable  for  the  entire  period.     Id. 

28.  In  considering  the  question  whether  the 
delay  in  the  prosecution  of  a  case  is  unavoid- 
able the  office  must  look  to  the  conduct  of 
the  attorney  who  is  empowered  to  act,  and 
if  there  was  neglect  by  him  a  revival  of  the 
case  is  not  warranted,  notwithstanding  the 
desire  of  the  applicant  that  the  case  be  prop- 
erly prosecuted.  Ex  parte  Collins,  C.  D.  1901, 
97  O.  G.  1372. 

29.  Where  action  on  a  case  is  not  taken 
within  the  year  allowed  by  law  and  as  an  ex- 
cuse for  the  delay  the  attorney  says  that  a 
clerical  error  was  made  in  the  date  of  ex- 
piration of  the  time  entered  in  his  office  cal- 
endar. Held,  that  the  excuse  is  insufficient  and 
that  the  case  is  abandoned.    Ex  parte  Beccher, 

C.  D.   1902,   101   O.  G.   1132. 

30.  Where  a  party  voluntarily  postpones  ac- 
tion upon  an  application  in  order  to  experi- 
ment with  the  invention  before  determining 
whether  to  proceed  and  is  thereafter  unable 
to  give  attention  to  the  matter  because  of 
other  business  engagements  until  after  the 
year  has  expired.  Held,  that  the  delay  was 
not  unavoidable  and  that  the  application  is 
abandoned.  Ex  parte  Smith,  C.  D.  1902,  101 
O.  G.  1369. 

31.  Where  an  applicant  intentionally  post- 
pones action  until  the  last  part  of  the  year 
allowed  by  law  and  is  then  prevented  from 
acting  by  reason  of  sickness,  Held,  that  the 
delay  is  not  unavoidable  and  that  the  appli- 
cation  is  abandoned.     Ex  parte  McElroy,  C. 

D.  1902,  101  O.  G.  2823. 

32.  The  law  says  that  the  delay  in  acting 
upon  a  case  must  be  unavoidable  and  not 
merely  that  the  last  few  weeks  of  the  delay 
must  be  unavoidable.     Id. 

33.  Where  an  applicant  voluntarily  fails  to 
act  upon  his  application  because  it  is  barred 
by  foreign  patents  and  in  his  opinion  no  ac- 
tion which  he  could  take  would  serve  any  use- 


ABANDONMENT  OF  APPLICATION,  II,  (c). 


ful  purpose,  Held,  that  the  delay  cannot  be 
considered  unavoidable  and  the  case  revived 
after  the  bar  is  removed  by  an  amendment  to 
the    law.      Ex   parte    Casalonga,    C.    D.    11)1)3, 

105  O.  G.  261. 

34.  Applications  which  were  barred  by  for- 
eign patents  and  were  permitted  to  become 
abandoned  cannot  be  revived  merely  because 
an  amendment  to  the  law  has  removed  the  bar. 
Ex  parte  Casalonga,  C.  D.  1003,  105  O.  G.  261. 
Id. 

35.  Where  claims  arc  finally  rejected  and  the 
applicant  presents  an  argument,  but  does  not 
appeal  within  the  year  fixed  by  law.  Held, 
that  the  contention  that  the  final  rejection  was 
premature  cannot  save  the  case  from  abandon- 
ment whether  well  founded  or  not.  Ex  parte 
Munson,  C.  D.   100.1,  105  O.   G.  264. 

36.  An  alleged  error  in  the  action  of  the 
examiner  furnishes  no  reason  for  ignoring 
that  action  and  is  no  excuse  for  the  failure  to 
either  take  the  action  called  for  therein  or 
have  it  set  aside  as  irregular  within  the  time 
fixed  by  law.    Id. 

37.  Where  the  office  requires  a  new  drawing 
in  the  case  and  no  response  is  received  from 
the  applicant  for  four  years,  Held,  that  the 
delay  is  not  to  be  excused  upon  the  allegation 
that  a  drawing  was  prepared  and  mailed  to 
the   office.     Ex  parte   Stuckgold,   C.   D.    1903, 

106  O.  G.  544. 

38.  It  is  the  duty  of  applicants  not  merely 
to  prepare  the  papers  called  for  by  the  office 
actions,  but  to  see  that  they  arc  received  by 
the  office.  If  he  receives  no  acknowledgment 
from  the  office  within  a  reasonable  time  after 
mailing  the  paper,  it  is  his  duty  to  make  in- 
quiries and  correct  the  mistake  which  appar- 
ently exists.     Id. 

39.  There  is  no  reasonable  excuse  for  wait- 
ing four  years  to  receive  an  acknowledgment 
from  this  office  of  the  receipt  of  a  paper  said 
to  have  been  sent  to  it.  It  was  evident  long 
before  that  time  that  the  paper  had  not  been 
received.    Id. 

40.  The  fact  that  the  applicant  is  barred 
from  filing  a  new  application  is  no  reason  for 
holding  that  the  application  is  not  abandoned 
where  there  has  been  delay  beyond  the  year 
allowed  by  law.     Id. 

41.  Where  an  applicant  failed  to  act  upon  his 
case  because  it  was  barred  by  foreign  patents, 
and  when  the  bar  was  removed  by  the  act 
of  March  3,  1903,  he  failed  to  act  for  eight 
months  because  he  didn't  know  the  law  was 
amended,  Held,  that  the   delay  was   not  un- 


avoidable   and    the    case    is    abandoned.      Ex 
parte  Hcnke,  C.  D.  1903,  107  O.  G.  2528. 

42.  Where  there  was  a  delay  of  more  than 
sixteen  months  in  acting  upon  a  case  and  it 
is  said  that  for  the  first  seven  months  the  at- 
torneys were  waiting  for  an  opportunity  to 
consult  the  inventor  and  during  the  balance 
of  the  time  were  waiting  for  instructions 
from  him  and  no  reason  appears  why  he  did 
not  give  the  instructions  except  that  he  was 
busy.  Held,  that  the  delay  was  not  unavoidable 
and  the  case  is  abandoned.  Ex  parte  Marconi, 
C.  n.  1004,  108  O.  G.  796. 

43.  Where  it  is  said  that  intelligent  action 
could  not  be  taken  by  the  attorneys  without 
consulting  the  inventor,  but  no  attempt  was 
made  to  consult  him  for  several  months,  and 
after  being  consulted  he  did  not  furnish  the 
information  required  or  make  a  real  effort  to 
do  so.  Held,  that  the  delay  was  not  unavoid- 
able.   Id. 

44.  Where  it  appears  that  through  a  clerical 
error  the  attorneys'  records  indicated  that  the 
year  allowed  by  law  for  action  expired  at  a 
later  date  than  the  actual  date  and  the  error 
was  not  discovered  until  an  amendment  was 
filed  supposedly  within  the  year,  but  actually 
after  that  time.  Held,  that  the  application  is 
abandoned.  Ex  parte  Raymond,  C.  D.  1004, 
100  O.  G.  1608. 

45.  Where  the  applicant  postpones  action 
until  what  he  supposes  is  the  latter  part  of 
the  time  allowed  him  and  he  then  discovers 
that  there  was  a  mistake  in  his  records  and 
the  time  has  already  expired,  Held,  that  al- 
though the  mistake  may  have  been  unavoid- 
able the  delay  was  not  unavoidable,  and  the 
case  is  abandoned.    Id. 

46.  The  allegation  of  a  clerical  error  in  the 
last  office  action  furnishes  no  excuse  for  delay 
in  responding  unless  it  is  made  to  appear  that 
the  error  misled  the  applicant  and  caused  the 
delay.  Ex  parte  Naef,  C.  D.  1905,  115  O.  G. 
1583. 

47.  Delay  in  acting  upon  an  application  is 
not  to  be  excused  for  the  purpose  of  permit- 
ting the  applicant  to  devise  means  for  making 
the  alleged  invention  practical  and  useful.  The 
law  does  not  contemplate  the  filing  of  applica- 
tions upon  incomplete  or  useless  inventions. 
Ex  parte  Murphy,  C.  D.  1905,  115  O.  G.  1848. 

48.  Delay  in  prosecution  of  an  application 
beyond  the  time  allowed  by  statute  is  not  to 
be  excused  by  the  allegation  that  the  applicant 
wished  time  to  improve  his  invention.  The 
improvements    can    not    be    included    in    the 


ABANDONMENT  OF  APPLICATION,  II,  (c). 


pending  case.    Ex  parte  Raymond,  C.  D.  1905, 
118  O.  G.  269. 

49.  Where  the  attorney  makes  a  note  as 
to  when  the  time  allowed  by  law  for  action 
expires  and  inadvertently  gets  the  date  wrong 
and  delays  action  until  that  time,  which  is 
after  the  expiration  of  the  year.  Held,  that  the 
case  is  abandoned  and  that  the  excuse  for  the 
delay  is  insufficient.  Ex  parte  Hallot,  C.  D. 
190.-),  118  O.  G.  592. 

50.  Where  there  was  delay  of  four  years 
after  the  last  office  action  and  it  was 
shown  that  the  applicant  had  become  sick 
within  this  time  and  died  and  that  the  widow 
had  suffered  great  trouble  and  expense,  but 
there  was  nothing  to  show  why  the  applica- 
tion was  not  amended  during  the  first  six 
months  following  the  office  action,  in  which 
time  the  applicant  was  well,  or  why  the  attor- 
ney in  the  case  did  not  act  within  the  succeed- 
ing six  months  in  spite  of  the  applicant's  ill- 
ness. Held,  that  the  case  was  abandoned. 
Ex    parte  Simon,  C.  D.  1905,  118  O.  G.  8:!8. 

51.  Where  the  applicant  intentionally  delays 
acting  until  what  he  supposed  was  the  last 
day  of  the  year  allowed  for  that  purpose  and 
through  mistake  in  the  attorney's  office  such 
action  is  not,  in  fact,  filed  until  one  day  after 
said  year  had  expired,  Held,  that  the  delay 
cannot  be  considered  unavoidable  and  that  the 
case  is  abandoned.  Ex  parte  Clausen,  C.  D. 
1905,  118  O.  G.  838. 

52.  Unavoidable  delay  is  not  made  out  by 
the  statement  that  the  attorney's  copy  of  the 
papers  in  the  application  was  submitted  to 
prospective  buyers,  and  upon  its  return  to  the 
attorney's  office  it  was  mislaid  and  was  not 
again  discovered  until  after  the  expiration  of 
the  time  allowed  for  action.  Ex  parte  Block, 
C.  D.  1905,  119  O.  G.  963. 

53.  Where  it  appears  from  an  unverified 
statement  that  an  amendment  was  mailed  in 
Berlin  in  time  to  reach  this  office  before  the 
expiration  of  the  year  allowed  by  law  for  tak- 
ing action,  but  the  amendment  was  not  actual- 
ly received  until  two  days  after  the  expiration 
of  the  year,  Held,  that  the  showing  is  insuf- 
ficient, as  the  statement  is  not  verified,  and  it 
seems  probable  that  action  was  intentionally 
delayed.  Ex  parte  Botzky,  C.  D.  1906,  121  O. 
G.  338. 

54.  Where  the  year  for  taking  action  ex- 
pired September  2,  1905,  and  it  appears  that 
on  August  1",  1905,  the  inventor,  who  was 
abroad,  mailed  a  letter  of  instructions  to  the 
attorney,   which    letter   was   mislaid   and   was 


not  again  called  to  the  attorney's  attention 
until  October  26,  at  which  time  it  was  found 
that  the  instructions  were  incomplete  and 
further  communication  with  the  inventor  was 
necessary,  and  no  amendment  of  the  applica- 
tion was  filed  until  November  18,  1905,  Held, 
that  the  delay  was  not  unavoidable.  Ex  parte 
Marburg,  C.  D.  1906,  121  O.  G.  687. 

55.  Held,  that  failure  to  receive  an  office 
action  will  not  excuse  failure  to  respond 
where  the  applicant  received  notice  of  said 
action  and  took  no  steps  to  secure  a  copy 
thereof.  Ex  parte  Woods,  C.  D.  1906,  121 
O.  G.  689. 

56.  Where  action  on  an  application  was  de- 
layed for  nearly  three  years,  the  showing  that 
the  delay  was  unavoidable  must  be  very  com- 
plete and  satisfactory.  Ex  parte  Ilgner,  C.  D. 
1906,  122  O.  G.  1721. 

57.  Where  prior  to  the  expiration  of  the 
time  allowed  for  action  the  attorney  notified 
the  assignee  that  an  amendment  was  required 
and  neither  the  assignee  nor  the  inventor  took 
any  action  whatever  until  nearly  seventeen 
months  thereafter  and  no  satisfactory  reason 
is  given  for  the  delay,  Held,  that  the  delay 
was  not  unavoidable.    Id. 

58.  A  delay  of  more  than  one  year  after 
the  discovery  that  the  application  was  aban- 
doned, for  which  no  excuse  is  given,  cannot 
be  considered  unavoidable.     Id. 

59.  Where  the  showing  of  unavoidable  delay 
presented  to  secure  the  revival  of  an  applica- 
tion apparently  abandoned  through  absence 
of  proper  action  within  the  period  allowed 
for  the  same  relates  to  matters  outside  of  the 
office  and  is  not  verified  and  no  proper  action 
is  filed  and  the  excuse  for  delay  does  not  cover 
the  entire  period,  the  delay  will  not  be  held 
unavoidable.  Ex  parte  Myers,  C.  D.  1906,  123 
O.  G.  1663. 

60.  Where  action  is  intentionally  delayed 
until  near  the  close  of  the  period  allowed  for 
action  and  through  accident  the  action  is  not 
then  taken,  but  is  further  delayed  until  after 
that  period  has  expired,  the  failure  to  act 
within  the  proper  period  is  not  unavoidable, 
and  the  application  is  abandoned.  Ex  parte 
Klussmann,  C.  D.  1906,  123  O.  G.  2311. 

61.  Confusion  upon  the  attorney's  docket  by 
reason  of  office  action  suggesting  claims  for 
interference  is  not  acceptable  as  a  showing 
of  unavoidable  delay  in  responding  to  the 
prior  office  action.  Ex  parte  Hess,  C.  D.  1907, 
126  O.  G.  3041. 


6 


ABANDONMENT  OF  APPLICATION,  II,  (c). 


62.  The  fact  tliat  tlie  examiner  in  the  regu- 
lar course  of  business  did  not  reach  applicant's 
case  and  give  him  notice  of  the  insufficiency 
of  his  action  until  after  the  year  allowed  for 
action  had  expired  does  not  relieve  applicant 
of  the  necessity  of  taking  responsive  action 
within  the  year  required  by  the  rules  or  shift 
the  responsibility  for  failure  to  comply  with 
the  rules  to  the  patent  office.  Ex  parte  Mid- 
gely,  C.  D.   1907,  127  O.  G.  l.'>77. 

63.  Where  the  delay  has  not  been  termi- 
nated by  the  filing  of  an  action  fully  respon- 
sive to  the  last  rejection  and  where  no  good 
reason  appears  why  such  an  action  should  not 
have  been  filed  within  the  year  allowed  there- 
for, Held,  that  the  delay  was  not  unavoidable 
and  that  the  application  is  abandoned.     Id. 

64.  Tlie  failure  of  the  attorney  to  act  with- 
in the  statutory  period  is  not  excused  by  the 
allegation  that  he  did  not  act  earlier  because 
not  authorized  by  the  applicant  to  do  so, 
where  it  does  not  appear  that  he  could  not 
have  been  earlier  authorized  to  proceed.  Ex 
parte  Trebon,  C.  D.  1907,  127  O.  G.  281. ">. 

65.  The  delay  of  more  than  one  year  is  re- 
sponding to  the  office  action  is  not  unavoid- 
able in  those  cases  where  action  might  have 
been  taken  had  reasonable  efforts  been  exer- 
cised to  that  end  at  any  time  within  the  period 
following  the  office  action.    Id. 

66.  .applications  are  abandoned  without  re- 
gard to  what  the  intention  of  the  applicant 
may  have  been  in  case  of  delay  for  more  than 
one  year  in  responding  to  the  office  action  un- 
less the  delay  was  unavoidable.    Id. 

67.  Where  the  action  taken  near  the  close 
of  the  year  was  not  a  proper  action.  Held, 
that  the  applicant  has  a  perfect  right  to  delay 
action  until  the  close  of  the  year  allowed  by 
law  therefor;  but  in  doing  so  he  assumes  the 
risk  of  any  mistake  in  the  character  of  the  ac- 
tion. Ex  parte  Grant,  C.  D.  1907,  128  O.  G. 
8.-)5. 

68.  Since  earlier  action  by  applicant  would 
have  permitted  correction  of  the  mistake  with- 
in the  year  and  since  it  does  not  appear  that 
earlier  action  could  not  have  been  taken,  the 
failure  to  duly  prosecute  the  application  can- 
not be  regarded  as  unavoidable,  and  it  is 
therefore  abandoned  under  the  statute.     Id. 

69.  Where  it  is  alleged  that  the  case  was  in- 
advertently crossed  off  the  attorney's  docket, 
and  therefore  overlooked  until  after  the  pe- 
riod for  action  had  expired,  but  it  does  not 
appear  that  there  was  any  intention  to  respond 
to  the  last  oflice  action  until  near  the  close  of 


tlie  year  allowed  therefor  or  that  action  could 
not  have  been  taken  in  the  earlier  part  of 
this  period  had  it  been  so  desired.  Held,  that 
the  delay  was  not  unavoidable  and  the  case  is 
abandoned.  Ex  parte  Duryea,  C.  D.  1907,  128 
O.  G.  1291. 

70.  The  fact  that  the  oflSce  did  not  suggest 
claims  from  a  copending  application  does  not 
render  applicant's  delay  in  prosecuting  his 
case  unavoidable.  E.\  parte  McKee,  C.  D. 
1907,  130  O.  G.  980. 

71.  The  fact  that  an  applicant  who  has  al- 
lowed an  application  to  lapse  by  failure  to 
prosecute  becomes  involved  in  an  interfer- 
ence on  a  subsequently  filed  application  in  no 
way  shows  that  the  delay  in  prosecuting  the 
earlier  application  was  unavoidable.  Ex  parte 
Davis,  C.  D.  1908,  137  O.  G.  2222. 

72.  Where  an  applicant  delays  action  on  an 
application  beyond  the  statutory  period  in 
order  to  prevent  another  partly  from  secur- 
ing access  thereto  by  reason  of  its  being  the 
parent  case  of  an  application  involved  in  in- 
terference with  sucli  party,  Held,  that  the  fail- 
ure to  act  was  not  unavoidable  within  the 
meaning  of  section  4894  of  the  Revised  Stat- 
utes and  that  the  application  is  abandoned. 
Ex  parte  Dilg  and  Fowler,  Jr.,  C.  D.  1908, 
132  O.  G.  1837. 

73.  The  fact  that  the  attorney  of  record  did 
not  receive  instructions  from  the  agent  of  the 
applicant,  who  resides  abroad,  in  time  to 
amend  the  application  within  one  year  from 
the  date  of  the  last  office  action.  Held,  insuf- 
ficient to  show  that  the  delay  was  unavoid- 
able within  the  meaning  of  section  4894,  Re- 
vised Statutes,  in  the  absence  of  any  showing 
that  instructions  were  necessary  or  that  any 
request  for  such  instructions  was  made  by  the 
attorney  of  record.  Ex  parte  Bohn,  C.  D. 
1911,  169  O.  G.  701. 

74.  When  one  who  is  registered  to  practice 
before  the  patent  office  accepts  the  appoint- 
ment as  attorney  from  a  foreign  applicant, 
the  entire  responsibility  for  the  prosecution 
of  the  case  rests  upon  the  attorney  so  ap- 
pointed, and  he  cannot  shift  that  responsibil- 
ity to  the  foreign  correspondent,  who  so  far 
as  shown  by  the  record,  is  not  concerned  with 
the  application.    Id. 

75.  Where  an  application  is  formerly  aban- 
doned in  favor  of  a  second  application,  the 
fact  that  a  certain  construction  was  inadver- 
tently omitted  from  the  latter  and  that  the 
entry  of  an  amendment  disclosing  the  same 
was  refused  admission  on  the  ground  that  it 


ABANDONMENT  OF  APPLICATION,  III,  (a). 


involved  new  matter  does  not  render  the  delay 
in  the  prosecution  of  the  former  unavoidable. 
Ex  parte  Hagey,  C.  D.  1911,  173  O.  G.  287. 

76.  An  amendment  directing  the  cancela- 
tion of  finally-rejected  claims  and  the  presen- 
tation of  new  claims  in  lieu  thereof,  unaccom- 
panied by  a  showing  under  Rule  68,  Held,  not 
responsive  prosecution,  and  where  no  other 
action  was  taken  within  the  year  following 
the  final  rejection.  Held,  that  the  application 
is  abandoned.  Ex  parte  Hodge,  C.  D.  1911, 
173  O.  G.  1079. 

III.  Response  of  Applicant. 
(a)  III  General. 

77.  The  statute  authorizes  a  revival  of  an 
abandoned  application  only  where  it  is  shown 
to  the  satisfaction  of  the  commissioner  that 
the  delay  has  been  unavoidable,  and  therefore 
the  existence  of  a  bar  to  the  filing  of  a  new 
application  does  not  alone  warrant  the  revival 
of  any  case.  Such  a  bar  merely  justifies  re- 
solving doubts  in  the  applicant's  favor.  Ex 
parte  Bohleche,  C.  D.  1901,  97  O.  G.  2743. 

78.  Abandonment  is  not  established  by  al- 
leged delays  in  the  patent  ofiice  where  the  ap- 
plicant in  each  instance  took  the  necessary 
action  within  the  two  years  allowed  him  by 
statute  within  which  to  act.  The  law  deter- 
mines the  measure  of  the  applicant's  rights, 
and  the  courts  cannot  exact  any  degree  of  dil- 
igence other  than  compliance  with  the  statu- 
tory provisions,  official  regulations,  and  de- 
partmental regulations.  If  congress  thinks  too 
long  a  time  is  allowed,  it  should  change  the 
law.  Crown  Cork  &  Seal  Co.  of  Baltimore 
City  v.  Aluminum  Stopper  Co.  of  Baltimore 
City  et  al,  C.  D.  1901,  96  O.  G.  2573. 

79.  The  propriety  or  sufficiency  of  the  ac- 
tion required  by  the  rules  has  reference  to  its 
extent  as  well  as  to  its  subject-matter.  It 
must  be  an  action  made  in  good  faith,  with  the 
purpose  and  effect  of  making  a  substantial  ad- 
vance toward  closing  the  prosecution  of  th» 
case.  (Citing  ex  parte  Vaughen  et  al,  ante, 
161.  97  O.  G.  957.)  Ex  parte  Kuper,  C.  D. 
1601,  97  O.  G.  2981. 

V  80.  As  evidence  that  the  actions  in  this  case 
were  not  taken  in  good  faith  with  the  purpose 
and  expectation  of  advancing  the  prosecu- 
tion, judicial  notice  is  taken  of  the  procedure 
in  many  other  applications  filed  by  the  same 
applicant  and  the  same  attorney.  Ex  parte 
Bassett,  C.  D.  1902,  98  O.  G.  2174. 


81.  A  case  cannot  be  revived  by  a  change  in 
practice  after  it  becomes  abandoned.  The 
question  whether  a  particular  action  is  such  as 
the  condition  of  the  case  requires  must  be 
determined  from  the  rules  and  practice  in 
force  at  the  time.  Ex  parte  Thompson,  C.  D. 
1904,  113  O.  G.  2504. 

82.  Where  action  is  taken  on  a  case  within 
the  statutory  period,  but  the  examiner  holds 
that  it  is  insufficient  to  save  the  case  from 
abandonment,  it  is  proper  to  ask  for  reconsid- 
eration, but  such  request  should  be  made  with 
diligence.  Ex  parte  Naef,  C.  D.  1905,  115  O. 
G.  1583. 

83.  The  question  whether  an  amendment 
presented  was  such  proper  action  as  the  con- 
dition of  the  case  required  must  be  deter- 
mined by  the  practice  of  the  office  in  force 
at  the  time,  and  it  is  not  affected  by  a  subse- 
quent change  of  practice.  Ex  parte  Naef,  C. 
D.  1905,  115  O.  G.  2135. 

84.  Where  applicant's  attorneys  place  the 
case  in  condition  for  final  action  and  final  ac- 
tion is  given,  the  applicant  cannot  secure  an 
extension  of  the  time  allowed  by  law  by  revok- 
ing the  power  of  attorney  and  filing  a  request 
for  further  explanation,  even  though  such  re- 
quest is  filed  within  the  year.  Ex  parte  Cazin, 
C.  D.  1906,  110  O.  G.  660. 

85.  Where  claims  are  placed  under  rejection, 
an  applicant  is  not  excused  from  making  a 
proper  response  to  said  rejection  merely  be- 
cause the  claims  had  at  one  time  been  regard- 
ed by  the  examiner  as  allowable.  Ex  parte 
Ruthenburg,  C.  D.  1906,  121  O.  G.  337. 

86.  A  strained  construction  should  not  be 
placed  upon  an  amendment  in  order  that  it 
may  save  the  application  from  abandonment, 
but  it  should  be  construed  according  to  the 
intent  of  the  applicant  as  determined  from  a 
consideration  of  the  whole  instrument.  Ex 
parte  Richards,  C.  D.  1906,  124  O.  G.  627. 

87.  Where  affidavits  are  filed  to  the  effect 
that  an  error  in  an  amendment  was  due  to  a 
stenographer's  failure  to  write  the  amendment 
as  directed,  but  the  affidavits  contain  no  state- 
ment relative  to  the  precise  nature  of  the  mis- 
take and  do  not  show  that  the  intended  action 
would  have  been  responsive,  Held,  that  the 
showing  is  insufficient  to  warrant  favorable 
action  on  a  petition  that  the  applicant's  action 
We  regarded  as  responsive.    Id. 

V  88.  Where  the  delay  over  the  year  permitted 
for  action  was  slight  and  there  is  doubt  as 
to  whether  the  entire  delay  was  unavoidable. 


ABANDONMENT  OF  APPLICATION,  III,   (a),   (b). 


and  where  the  petition  was  accompanied  by 
an  amendment  which  places  the  case  in  condi- 
tion for  allowance,  I/cId,  that  the  doubt  will 
be  resolved  in  the  applicant's  favor.     Id. 

89.  Where  after  final  requirement  of  di- 
vision numerous  letters  and  petitions  are  filed 
in  regard  thereto,  but  no  appeal  is  taken  or 
compliance  had  within  the  ensuing  year.  Held, 
that  it  is  not  clear  that  the  actions  taken  could 
prevent  the  operation  of  the  statute  as  to 
abandonment,  a  The  United  States  of  .Amer- 
ica, ex  rel.  Tuttle  v.  Allen,  Commissioner  of 
Patents,  C.  D.  1907,  126  O.  G.  760. 

90.  An  amendment  which  is  otherwise  re- 
sponsive to  an  action  by  the  office  is  not  ren- 
dered unresponsive  by  reason  of  the  fact  that 
it  includes  a  claim  to  an  independent  inven- 
tion, claims  for  which  were  previously  can- 
celed upon  requirement  for  division.  In  such 
cases  the  examiner  should  require  the  can- 
celation of  such  claim  on  the  ground  that  it 
covers  an  invention  different  from  that  orig- 
inally elected,  and  the  amendment  should 
otherwise  receive  action  as  though  such  clain^ 
were  not  present  Ex  parte  Gaily,  C.  D.  1908, 
133  O.  G.  991. 

91.  Where  an  applicant  cancels  claims  to  an 
independent  invention  upon  requirement  for 
division  and  just  within  the  year  allowed  by 
law  for  action  responds  to  a  rejection  by 
amending  the  rejected  claims  and  adding  a 
series  of  new  claims,  one  of  which  is  drawt^ 
to  the  independent  invention,  the  amendment 
should  be  entered  and  a  requirement  should 
be  made  that  the  reinserted  claim  be  canceled 
on  the  ground  that  applicant  was  bound  by 
his  original  election,  and  at  the  same  time  ac- 
tion should  be  given  on  the  merits  of  the 
claims  of  the  invention  elected.    Id. 

92.  Where  the  claims  of  an  application  have 
been  rejected  and  within  the  year  allowed  for 
action  the  applicant,  in  lieu  of  an  oath  under 
Rule  75,  files  a  paper  calling  attention  to  cer- 
tain testimony  taken  in  an  interference  in- 
volving the  application  of  which  the  applica- 
tion containing  the  rejected  claims  was  a  divi- 
sion, upon  which  reliance  is  placed  to  show 
prior  invention,  and  the  examiner  does  not 
object  to  the  competency  of  the  testimony,  but 
regards  it  as  insufficient,  the  application  is  not 
abandoned  through  lack  of  proper  prosecu- 
tion. The  sufficiency  of  the  testimony  is  a 
question  of  merits,  on  which  the  applicant 
has  a  right  to  the  opinions  of  the  various  ap- 
pellate tribunals.  Ex  parte  Newman,  C.  D. 
1908,  13.5  O.  G.  1122. 


1/93.  Where  the  commissioner  decided  that 
an  amendment  filed  within  the  time  fixed  by 
the  statute  was  not  responsive  and  entered 
an  order  holding  the  application  abandoned, 
Held,  that  such  order  "is  within  the  purview 
of  the  statutes  providing  for  appeals  from  the 
commissioner's  decisions."  *In  re  Selden,  C. 
D.  1911,  164  O.  G.  741. 
"V  94.  Where  action  was  taken  by  the  appli- 
cant within  the  time  fixed  by  the  statute,  but 
it  was  decided  by  the  commissioner  that  such 
action  was  not  fully  responsive  to  the  last 
office  action.  Held,  that  "the  facts  being  ad- 
mitted, the  question  of  abandonment  became 
one  of  law  and  is  not  governed  by  the  same 
rule  applicable  to  cases  where  it  is  sought  to 
review  the  exercise  of  discretion  on  the  part 
o/  the  commissioner.  *Id. 
"  95.  On  an  appeal  from  a  decision  of  the 
examiners-in-chief  holding  claims  unpatent- 
able twenty-one  new  claims  were  presented 
for  the  consideration  of  the  commissioner, 
who  held  that  these  claims  might  be  admitted 
if  amended  in  accordance  with  certain  sug- 
gestions made  in  his  decision  affirming  the 
decision  of  the  examiners-in-chief  as  to  all 
but  three  of  the  appealed  claims.  Subsequent- 
ly amendments  were  submitted  containing 
such  claims  and  eleven  others,  which  amend- 
ments were  considered  by  the  primary  ex- 
aminer. After  several  actions  by  the  office 
and  the  applicant  the  commissioner  entered 
an  order  holding  the  application  abandoned 
on  the  ground  that  applicant  had  not  com- 
plied with  the  decision  of  the  commissioner 
within  the  time  allowed  by  section  4894,  Re- 
vised Statutes.  Held,  that  the  terms  of  the 
decision  permitting  the  reopening  of  the  case 
having  been  complied  with  and  the  amend- 
ment having  been  entered  and  considered,  ap- 
plicant "cannot  be  said  to  have  failed  to  prose- 
cute the  application  within  the  meaning  of 
the  statute  merely  because  he  added  claims 
not  expressly  authorized  by  the  commission- 
er."   *Id. 


■J 


(b)  Sufficient. 


96.  On  January  19,  1897,  the  examiner  re- 
jected claims  on  references  and  required  divi- 
sion. In  response  the  applicants  filed  affidavits 
to  overcome  the  references,  but  did  not  di- 
vide. The  examiner  refused  to  consider  the 
affidavits  on  the  ground  that  applicants'  ac- 
tion was  not  completely  responsive  to  the  last 
official  action  in  that  the  requirement  of  divi- 


ABANDONMENT  OF  APPLICATION,  III,  (b). 


9 


sion  had  not  been  complied  with.  After  some 
correspondence  on  the  subject  the  examiner 
stated  in  a  letter  of  January  23,  1899,  that 
the  application  had  become  abandoned  on 
January  19,  1899.  Held,  that  the  filing  of  the 
affidavits  in  order  to  avoid  the  references  is 
responsive  to  the  action  rejecting  claims,  and 
is  such  action  as  the  condition  of  the  case 
requires  and  saves  it  from  abandonment.  Ex 
parte  Write  and  Stebbins,  C.  D.  1899,  88  O. 
G.  1161. 

97.  .A.ction  by  the  applicants  made  in  good 
faith  and  which  is  such  action  as  the  condi- 
tion of  the  case  requires  is  sufficient  to  save 
it  from  abandonment,  although  it  is  not  com- 
pletely responsive  to  every  requirement  made. 
(Ex  parte  Todd,  C.  D.  1889,  217,  49  O.  G.  732, 
cited.)     Id, 

98.  Where  division  is  required  and  the  claims 
are  rejected  and  the  applicant  amends  the 
claims  in  the  effort  to  avoid  the  references 
and  presents  an  argument  upon  the  question 
of  division  within  the  time  required  by  law, 
Held,  that  the  application  is  not  abandoned. 
Ex  parte  Chamberlain,  C.  D.  1902,  101  O.  G. 
447. 

99.  An  applicant  may  accept  the  ruling  of 
the  office  as  to  some  of  its  requirements  and 
at  the  same  time  controvert  the  ruling  as  to 
others,  and  when  he  does  so,  treating  all  re- 
quirements, his  action  cannot  be  objected  to 
as  insufficient.  Ex  parte  Naef,  C.  D.  1902,  100 
O.  G.  2601. 

100.  Where  a  proper  and  substantial  amend- 
ment is  filed  within  the  time  fixed  by  law, 
Held,  that  it  cannot  be  regarded  as  insufficient 
to  save  the  case  from  abandonment  because 
the  examiner  is  of  the  opinion  that  it  should 
be  supported  by  a  supplemental  oath.  Ex 
parte  Yerdon,  C.  D.  1902,  101  O.  G.  1830. 

101.  Where  the  examiner  requires  division 
and  within  the  year  fixed  by  law  the  applicant 
presents  an  argument  pointing  out  wherein  he 
thinks  the  examiner  is  wrong,  Held,  that  the 
application  is  not  abandoned.  Ex  parte  Love- 
joy,  C.  D.  1904,  108  O.  G.  1053. 

102.  Where,  upon  requirement  of  division, 
election  was  made  and  after  rejection  of  the 
elected  claims  amendment  was  made  shifting 
ground,  which  amendment  was  entered  and 
acted  upon,  the  claims  being  rejected  upon 
references.  Held,  that  as  the  office  had  ac- 
cepted and  acted  upon  an  amendment  filed 
within  a  year  from  the  preceding  office  ac- 
tion,  and    fully   responsible   thereto   the   case 


cannot  properly  be  held  to  have  become  aban- 
doned. Meden  v.  Curtis,  C.  D.  1905,  117  O. 
G.   1795. 

103.  Where  it  appears  that  an  amendment 
was  filed  in  an  application  within  the  year  al- 
lowed by  law,  but  that  it  was  informal  in  that  it 
sought  to  amend  an  amendatory  clause,  which 
is  prohibited  by  Rule  74,  and  no  supplementary 
oath,  which  was  considered  necessary  by  the 
examiner,  was  filed  with  the  amendment. 
Held,  that  the  amendment  as  originally  filed, 
notwithstanding  its  informalities,  was  suf- 
ficiently responsive  to  the  action  to  prevent 
abandonment  of  the  application.  Ex  parte 
Gaylord,  C.  D.  1905,  117  O.  G.  2366. 

104.  Where  upon  the  last  day  of  the  year  fol- 
lowing final  rejection  the  applicant  filed  an 
amendment  to  the  case  and  an  appeal  to  the 
examiners-in-chief,  Held,  that  the  amendment 
does  not  nullify  the  appeal  nor  the  appeal  the 
amendment  and  that  the  case  is  not  aban- 
doned. The  examiner  holding  the  amendment 
inadmissible  should  proceed  to  answer  the 
appeal.  Ex  parte  Bach,  C.  D.  1905,  118  O.  G. 
1363. 

105.  Where  the  applicant  filed  an  appeal 
within  one  year  after  the  final  rejection  and 
thereafter  filed  a  paper  in  which  it  was  "tem- 
porarily withdrawn"  for  the  purpose  of  con- 
sidering a  question  as  to  the  regularity  of  the 
examiner's  action,  Held,  that  the  case  is  not 
abandoned.  Ex  parte  Dieterle,  C.  D.  1905, 
118  O.  G.  1685. 

106.  Where  an  amendment  is  filed  after  an 
action  on  the  merits  and  no  reasons  accom- 
pany that  amendment  in  support  of  a  request 
for  reconsideration  of  claims  not  amended, 
but  an  argument  is  subsequently  filed  setting 
forth  the  reason  of  the  applicant  why,  in  his 
opinion,  the  office  should  recede  from  its  first 
rejection,  and  both  the  amendment  and  argu- 
ment are  filed  within  one  year  from  the  date 
of  the  rejection,  Held,  that  the  actions  taken 
by  the  applicant  were  sufficient  to  entitled  him 
to  further  consideration.  Ex  parte  Wimmer, 
C.  D.  1905,  115  O.  G.  1585. 

\/  107.  Where  the  examiner  in  his  letter  finally 
rejecting  the  claims  of  an  application  raised 
for  the  first  time  a  number  of  formal  objec- 
tions and  the  applicant  replied  by  curing  the 
objections  in  part  and  traversing  the  exam- 
iner's action  as  to  the  remainder,  whereupon 
the  examiner  repeated  the  objections  >iot 
cured  and  the  applicant  subsequently  cured 
the   remaining   formal   objections.   Held,  that 


10 


ABANDONMENT  OF  APPLICATION,  III,  (b) 


the  application  is  not  abandoned,  notwith- 
standing that  the  applicant's  last  action  above 
referred  to  was  made  more  than  a  year  after 
the  final  rejection  of  the  claims.  Ex  parte 
Thomas,  C.  D.  190G,  124  O.  G.  623. 
\/  108.  Where  the  examiner  acts  on  formal  ob- 
jections after  the  final  rejection  of  the  claims, 
Held,  that  the  applicant  is  entitled  to  a  year 
from  the  examiner's  action  in  which  to  cure 
the  objections,  and  in  the  absence  of  any  rule 
or  practice  to  the  contrary  he  should  likewise 
be  allowed  this  year  in  which  to  appeal  to  the 
exaniiners-in-chief  or  to  cancel  the  rejected 
claims.     Id. 

109.  VVhere  two  days  before  the  expiration 
of  the  year  following  the  action  of  the  ex- 
aminer notifying  applicant  that  his  claims 
stood  finally  rejected  under  Rule  133  be  filed 
an  amendment,  in  which  he  canceled  part  of 
the  claims  involved  in  the  interference,  in- 
serted one  new  claim,  and  requested  a  recon- 
sideration of  the  office  action  on  the  ground 
that  the  subject-matter  of  the  uncanceled 
claims  was  not  shown  in  the  application  of 
the  successful  party,  Held,  that  the  amend- 
ment is  a  proper  one,  and  the  case  is  not 
abandoned.  Ex  parte  Lyon,  C.  D.  1906,  124 
O.  G.  2903. 

110.  On  October  16,  190.--.,  the  examiner  final- 
ly rejected  certain  claims.  The  applicant  on 
June  6,  1906,  filed  an  amendment  substituting 
new  claims  for  those  rejected,  which  amend- 
ment was  refused  entry  by  the  examiner  in 
view  of  the  final  rejection.  On  September  24, 
1906,  applicant  filed  a  request  for  reconsidera- 
tion of  the  final  rejection  and  refusal  of  his 
amendment,  accompanied  by  a  statement  of 
reasons  why  he  considered  said  actions  im- 
proper. In  reply  he  was  notified  by  the  ex- 
aminer on  November  3,  1906,  that  his  appli- 
cation was  abandoned,  and  on  November  6, 
190G,  he  took  this  petition.  Held,  that  if  the 
final  rejection  of  October  16,  1905,  was  proper 
the  condition  of  the  case  called  for  either  a 
cancelation  of  the  rejected  claims  or  an  ap- 
peal to  the  examiners-in-chief,  and  since  such 
action  was  not  taken  within  the  year  the  case 
is  abandoned;  but  in  case  the  final  rejection 
was  irregular  or  premature,  then  the  actions 
of  June  6  and  September  24  were  such  as  the 
condition  of  the  case  required,  and  the  appli- 
cation is  not  abandoned.  Ex  parte  Fowler, 
Jr.,  C.  D.  1907,  127  O.  G.  l.'>78. 

111.  Where  the  examiner  rejects  the  claims 
of  an  application  on  the  ground  that  they 
cover   an    inoperative   device   and    requires    a 


demonstration  of  the  utility  thereof  and  with- 
in the  year  allowed  by  law  for  responsive 
action  applicant  files  an  argument  attempting 
to  show  that  the  device  would  operate  as  set 
forth  in  the  specification,  Held,  that  the  ap- 
plication is  not  abandoned  for  lack  of  proper 
prosecution.  Ex  parte  Viniello,  C.  D.  1909, 
144  O.  G.  276. 

112.  Where  the  examiner  rejected  certain 
claims  a  second  time  on  a  single  reference  and 
rejected  other  claims  on  an  additional  refer- 
ence cited  for  the  first  time  and  applicant, 
within  a  year,  canceled  one  of  the  two  claims 
against  which  the  new  reference  was  cited, 
filed  an  argument  as  to  the  allowance  of  the 
other,  but  made  no  reference  to  the  rejection 
of  the  other  claims.  Held,  that  the  application 
was  not  abandoned,  since  applicant  having 
once  presented  his  argument  as  to  these  claims 
it  was  not  necessary  for  him  to  repeat  it. 
Ex  parte  Newbold,  C.  D.  1910,  155  O.  G.  553. 

113.  Where  in  response  to  an  action  reject- 
ing two  claims  on  a  patent  to  L.  and  other  claims 
as  stating  aggregations  of  features  shown  in 
certain  prior  patents,  one  of  which  was  the 
patent  to  L.,  the  applicant  within  the  year  filed 
a  slight  amendment  and  a  more  or  less  ex- 
tended argument  discussing  the  pertinency  of 
the  patent  to  L.  and  contrasting  what  was 
shown  therein  with  what  was  shown  in  the 
application,  but  not  specifically  referring  to 
the  two  claims  rejected  on  the  patent  to  L., 
Held,  that  the  amendment  was  responsive. 
Ex  parte  Oilman,  C.  D.  1911,  162  O.  G.  783. 

>  114.  "The  fact  that  an  argument  is  not  a 
convincing  one  should  never  be  urged  in  sup- 
port of  an  objection  that  the  action  contain- 
ing that  argument  was  not  responsive,  except 
possibly  in  some  extreme  case  where  the  ar- 
gument on  its  face  is  directed  to  a  discussion 
of  subject-matter  which  is  entirely  beside  the 
case."    Id. 

115.  The  examiner  after  some  prosecution 
of  an  application  cited  for  the  first  time  a 
Swedish  patent  and  rejected  certain  claims 
thereon  without  specifically  applying  it  to  the 
claims.  At  the  end  of  the  year  from  this 
action  applicant  presented  an  amendment  can- 
celing the  rejected  claims  and  substituting  five 
new  claims,  stating  that  the  Swedish  patent 
had  been  translated  and  that  the  new  claims 
were  believed  to  clearly  distinguish  there- 
from. Held,  that  the  application  is  not  aban- 
doned. (Ex  parte  Copeland,  149  O.  G.  309, 
distinguished.)  Ex  parte  Watters,  C.  D.  1911, 
163  O.  G.  231. 


ABANDONMENT  OF  APPLICATION,  III,  (c). 


11 


(c)  Insufficient. 

116.  Presentation  of  an  amendment  which  is 
refused  entry  after  a  decision  by  the  exam- 
iners-in-chief does  not  save  the  same  from 
abandonment.  E.x  parte  Grant,  C.  D.  1900, 
93  O.  G.  2532. 

117.  Where  an  apphcation  was  finally  reject- 
ed on  December  12,  1898,  an  applicant  pre- 
sented amendments  on  January  11,  1899,  and 
on  March  2,  1899,  which  were  entered  for  the 
purpose  of  appeal,  and  in  acting  on  the  last 
amendments  on  March  10,  1899,  the  examiner 
informed  applicant  that  the  amendments  en- 
tered since  December  12,  1S93,  would  not  save 
the  application  from  abandonment  after  De- 
cember 12,  1899,  and  applicant  took  no  further 
action  until  he  filed  this  petition  on  February 
28,  1900,  to  require  the  examiner  to  permit 
further  amendment.  Held,  that  the  case  be- 
came abandoned  on  December  12,  1899.  Ex 
parte  Tiffany,  C.  D.  1900,  91  O.  G.  G43. 

118.  Where  the  examiner  rejects  the  claims 
and  makes  certain  formal  objections,  Held, 
that  a  mere  correction  of  one  of  the  formal 
defects  with  no  action  in  reference  to  other 
matters  is  not  such  an  action  as  will  save  the 
case  from  abandonment.  Ex  parte  Vaughen 
et  al.,  C.  D.  1901,  97  O.  G.  957. 

119.  The  propriety  or  sufficiency  of  the  ac- 
tion required  of  applicants  by  the  rules  has 
reference  to  its  e.xtent  as  well  as  to  its  sub- 
ject-matter. It  must  be  an  action  made  in 
good  faith  with  the  purpose  and  effect  of 
making  a  substantial  advance  toward  closing 
the  prosecution  of  the  case.    Id. 

120.  There  is  no  warrant  in  the  rules  for  ac- 
tions the  purpose  and  effect  of  which  are 
merely  to  "keep  the  case  alive"  or  "avoid 
abandonment,"  and  such  actions  cannot  be 
considered  such  proper  actions  as  the  condi- 
tion of  the  case  requires.     Id. 

121.  Where  in  an  office  action  certain  formal 
objections  are  made  to  the  claims  and  the 
claims  are  rejected  on  references,  Held,  that 
the  filing  of  an  amendment  curing  the  formal 
objection  and  adding  a  new  claim,  which 
amendment  is  accompanied  by  a  mere  request 
for  a  reconsideration  of  the  rejected  claims, 
is  "not  such  proper  action  as  the  condition  of 
the  case  may  require"  and  in  the  absence  of 
any  further  action  within  the  period  of  time 
allowed  by  law  to  prosecute  the  application 
that  the  said  application  has  become  aban- 
doned.    Id. 


122.  Where  the  examiner  called  attention  to 
a  formal  defect  in  the  application  and  the 
applicant  while  admitting  the  defect  made  no 
effort  for  six  years  to  correct  it,  but  merely 
wrote  letters  in  regard  to  it.  Held,  that  the 
application  is  abandoned.  Ex  parte  Sack,  C. 
D.  1902,  99  O.  G.  2101. 

123.  Where  several  claims  are  rejected  by  the 
examiner  and  at  the  end  of  the  time  allowed 
by  law  for  action  the  applicant  requests  recon- 
sideration of  some  claims  and  says  he  intends 
to  lile  an  affidavit  under  Rule  75  as  to  others, 
Held,  not  such  action  as  the  condition  of  the 
case  requires  and  that  it  is  abandoned.  Ex 
parte  Spiller,  C.  D.  1902,  99  O.  G.  2320. 

■^  124.  Where  division  was  required  between 
apparatus  and  process  claims  under  the  plain 
and  unmistakable  provisions  of  Rule  41  and 
the  applicant  waited  nearly  one  year  and 
then  filed  a  request  for  reconsideration  and 
thereafter  waited  one  year  and  filed  a  petition 
to  the  commissioner,  but  presented  no  brief 
or  argument  in  support  of  any  allegation  of 
error.  Held,  that  the  action  of  the  applicant 
is  obviously  a  mere  pretext  and  that  the  case 
is  abandoned.  Ex  parte  Bassett,  C.  D.  1902, 
93  O.  G.  2174. 

125.  The  law  and  the  rules  are  not  so  de- 
fective as  to  permit  a  party  by  action  which 
is  obviously  a  mere  pretext  to  avoid  the  re- 
quirement that  he  shall  take  action  in  prose- 
cution of  the  application  within  one  year  from 
the  last  office  action.     Id. 

126.  An  action  which  is  taken  without  any 
intention  or  expectation  of  making  an  ad- 
vance toward  closing  the  consideration  of  a 
case  is  not  an  action  in  prosecution  thereof 
within  the  meaning  of  section  4894,  Revised 
Statutes.     Id. 

127.  An  action  taken  with  the  sole  purpose 
of  saving  the  case  from  abandonment  and 
keeping  it  in  this  office  as  a  pending  applica- 
tion is  not  such  action  as  the  condition  of  the 
case  requires.     Id. 

128.  An  alleged  error  in  the  action  of  the 
examiner  furnishes  no  good  reason  for  a 
failure  to  take  proper  action  in  response  there- 
to within  the  time  fixed  by  law.  Ex  parte 
Fritts,  C.  D.  1902,  101  O.  G.  1131. 

129.  Where  the  claims  are  finally  rejected 
the  action  required  within  the  year  allowed 
by  law  is  an  appeal  to  the  examiners-in-chief, 
and  a  petition  taken  to  the  commissioner 
which  does  not  change  the  status  of  the  case 
as  finally  rejected  will  not  save  it  from  aban- 
donment.   Id. 


12 


ABANDONMENT  OF  APPLICATION,  III,  (c). 


130.  Where  an  applicant  takes  the  full  statu- 
tory period  for  amendment  and  upon  two  oc- 
casions is  warned  by  the  examiner  that  his 
actions  do  not  tend  to  make  a  substantial  ad- 
vance toward  closing  the  prosecution  of  the 
case  and  thereafter  files  an  amendment  upon 
the  last  day  but  one  allowed  by  law  which 
does  not  meet  the  examiner's  requirements 
and  renders  it  impossible  to  close  the  con- 
sideration of  the  case  upon  its  merits,  Held, 
that  the  application  is  abandoned.  Ex  parte 
Whiting,  C.   D.  1902,  98  O.  G.   1969. 

131.  The  mere  presentation  of  an  amend- 
ment, which  is  not  in  order  after  a  decision 
by  the  examiners-in-chief,  does  not  change  the 
status  of  the  case  as  subject  to  appeal  to  the 
next  higher  tribunal  or  relieve  the  applicant 
from  the  necessity  of  taking  that  appeal  with- 
in the  time  fixed  by  law.  Ex  parte  Cutten 
and  Eraser,  C.  D.  1902,  98  O.  G.  2172. 

132.  Where,  instead  of  appealing  from  the 
decision  of  the  examiners-in-chief  or  cancel- 
ing the  rejected  claims  within  the  time  allow- 
ed by  law,  the  applicant  filed  an  amendment 
which  was  refused  admission,  HelJ,  that  the 
application  is  abandoned.     Id. 

133.  An  applicant  is  as  much  entitled  to  file 
an  amendment  on  the  last  day  of  the  year 
allowed  by  law  to  prosecute  the  case  as  he  is 
to  file  it  on  any  other  day  during  the  year ; 
but  the  amendment  at  either  time  must  be 
such  an  action  as  the  condition  of  the  case  re- 
quires. Its  deficiencies  cannot  be  excused  by 
the  fact  that  it  is  filed  on  the  last  day.  Ex 
parte  Morrison,  C.  D.  1902,  99  O.  G.  2969. 

134.  When  an  applicant  waits  until  the  last 
day  of  the  year  to  file  an  amendment,  he  as- 
sumes all  risks,  and  an  action  which  would  be 
insufficient  if  made  earlier  cannot  be  held  suf- 
ficient because  it  is  too  late  for  the  applicant 
to  correct  his  error.     Id. 

135.  Where  an  amendment  is  presented 
which  if  entered  would  necessitate  a  require- 
ment for  division.  Held,  that  it  should  not  be 
entered  notwithstanding  the  fact  that  it  is 
presented  only  one  day  before  the  case  will 
become  abandoned  through  a  lack  of  prosecu- 
tion.   Id. 

136.  After  the  final  rejection  of  a  case  an 
amendment  requesting  the  cancelation  of 
claims  and  the  substitution  of  others  therefor 
which  the  examiner  refuses  to  enter  is  not 
such  action  in  prosecution  of  the  case  as  will 
save  it  from  abandonment.  Ex  parte  Sues, 
C.  D.  1902,  98  O.  G.  1972. 


137.  Where  the  final  rejection  was  made  on 
Fel)ruary  27,  1900,  and  no  appeal  therefrom 
was  taken  within  the  lime  limit  allowed  by 
the  statute,  all. the  intermediate  actions  being 
limited  to  proceedings  relative  to  the  admis- 
sion of  an  amendment  canceling  the  rejected 
claims  and  substituting  others  in  lieu  thereof. 
Held,  that  it  would  be  useless  to  admit  claims 
for  the  purpose  of  appeal,  as  the  application 
is  abandoned.  Ex  parte  Raymond,  C.  D.  1902, 
99  O.  G.  1386. 

138.  Where  after  a  final  rejection  the  appli- 
cant presents  another  claim  by  amendment 
without  making  the  showing  required  by  Rule 
68,  Held,  that  a  petition  that  it  be  entered 
filed  one  year  thereafter  and  more  than  one 
year  after  the  final  rejection  will  be  denied 
and  that  the  case  is  abandoned.  Ex  parte 
Landis,  C.  D.  1903,  103  O.  G.  1164. 

139.  Where  division  is  required  and  the  ap- 
plicant files  three  successive  amendments,  each 
nearly  one  year  after  the  date  of  the  office  let- 
ter and  no  one  of  which  complies  with  the 
requirement  for  division.  Held,  that  the  case 
is  abandoned.  Ex  parte  Pietzner,  C.  D.  1903, 
103  O.  G.  2171. 

140.  Where  a  mere  request  for  reconsidera- 
tion is  filed  and  it  is  admitted  that  the  pur- 
pose thereof  is  merely  to  gain  time  and  save 
the  case  from  abandonment.  Held,  that  the 
case  is  abandoned.  Ex  parte  La  France,  C. 
D.   1903,  105  O.  G.  262. 

141.  An  action  which  does  not  and  was  not 
intended  to  make  a  substantially  advance  to- 
ward closing  the  prosecution  of  the  applica- 
tion is  not  such  proper  action  as  is  required 
by  the  law  and  the  rule,  and  it  will  not  save 
the  case  from  abandonment.     Id. 

142.  A  mere  request  for  reconsideration 
without  even  an  allegation  of  error  furnishes 
no  reason  for  reconsideration.    Id. 

143.  Where  after  decision  by  the  examiners- 
in-chief  the  applicant  cancels  the  rejected 
claims  and  more  than  one  year  after  the  deci- 
sion wishes  to  reinstate  them  for  the  purpose 
of  further  appeal,  Held,  that  he  will  not  be 
permitted  to  reinstate  them,  since  an  appeal 
filed  more  than  one  year  after  the  decision 
could  not  be  entertained.  Ex  parte  Oviatt 
and  Dean,  C.  D.  1903,  107  O.  G.  269. 

144.  Where  the  only  action  taken  by  an  ap- 
plicant within  the  year  following  an  action 
by  the  office  finally  rejecting  his  claims  was 
to  file  an  amendment  in  which  he  attempted  to 
insert  eight  additional  claims,  the  first  six  of 
which    were   the   same   as   claims   which   had 


ABANDONMENT  OF  APPLICATION,  III.  (c). 


13 


previously  been  considered  and  the  other  two 
were  new  claims,  and  there  was  no  request 
that  the  six  old  claims  be  admitted  for  the 
purpose  of  "presenting  those  rejected  in  bet- 
ter form  for  consideration  on  appeal"  and  no 
showing  duly  verified  of  good  and  sufficient 
reasons  why  the  new  claims  were  not  earlier 
presented.  Held,  that  this  was  not  such  an 
action  as  the  condition  of  the  case  required 
in  order  to  save  it  from  abandonment.  Ex 
parte  Bowles,  C.  D.  1903,  103  O.  G.  429. 

145.  Where  the  applicant  is  clearly  and  un- 
mistakably informed  that  the  claim  is  finally 
rejected  and  he  fails  to  appeal  within  the  year 
fixed  by  law.  Held,  that  the  case  is  abandoned. 
Ex  parte  Minich,  C.  D.  1903,  107  O.  G.  1971. 

146.  Where  the  applicant  is  twice  informed 
that  the  claims  arc  finally  rejected  and  that 
an  amendment  presented  involves  new  matter 
and  at  the  end  of  the  time  allowed  by  law  for 
action  he  presents  substitute  claims  and  an 
argument  as  to  new  matter.  Held,  that  his  ac- 
tion is  not  such  as  the  condition  of  the  case 
required  and  that  it  is  abandoned.  Ex  parte 
Edwards,  C.  D.  1904,  108  O.  G.  1051. 

147.  Where  after  final  rejection  of  the  claims 
the  applicant  presents  amendments  touching 
the  merits  unaccompanied  by  the  showing  re- 
quired by  Rule  68.  but  does  not  appeal  within 
the  year  fixed  by  law.  Held,  that  the  conten- 
tion that  the  final  rejection  was  premature 
cannot  save  the  case  from  abandonment 
whether  well  founded  or  not.  Ex  parte  Le- 
fever,  C.  D.  1004,  110  O.  G.  1430. 

148.  \n  alleged  error  in  the  action  by  the 
examiner  furnishes  no  reason  for  ignoring 
that  action  and  is  no  excuse  for  the  failure 
to  either  take  the  action  called  for  therein  or 
have  it  set  aside  as  irregular  within  the  time 
fixed  by  law.     Id. 

149.  Where  a  requirement  for  division  is 
made  final  and  the  applicant  neither  complies 
with  the  requirement  nor  appeals  within  one 
year,  but  presents  arguments.  Held,  that  the 
case  is  abandoned.  Ex  parte  Ries,  C.  D.  1904, 
113  O.  G.  1147. 

150.  Where  the  applicant  keeps  a  case  pend- 
ing for  a  long  time  without  action  upon  the 
merits  and  in  each  instance  waits  the  full 
statutory  period  before  acting.  Held,  that  he 
is  entitled  to  no  leniency  in  the  application  of 
the  rule  that  the  action  must  be  such  as  the 
condition  of  the  case  requires.     Id. 

151.  Where  the  examiner  required  division 
on  the  ground  that  the  claims  were  drawn  to 
cover   eight    distinct   and    independent    inven- 


tions and  specified  which  in  his  opinion  be- 
longed to  each  group.  Held,  that  an  amend- 
ment canceling  one  of  these  sets  of  claims 
only,  unaccompanied  by  reasons  why  the  re- 
quirement for  division  was  not  further  com- 
plied with,  was  not  such  an  action  as  the 
condition  of  the  case  required  and  would  not 
save  the  case  from  abandonment.  Ex  parte 
Naef,  C.  D.  1904,  110  O.  G.  2016. 

152.  Where  the  claims  of  an  application  are 
under  rejection  and  the  applicant  subsequently 
files  an  amendment  submitting  new  claims  for 
the  purpose  of  an  interference  and  accom- 
panies the  amendment  with  a  request  that  the 
claims  under  rejection  should  not  be  recon- 
sidered. Held,  that  such  action  was  not  re- 
sponsive to  the  rejection.  Ex  parte  Parkes, 
C.   D.   1904,  113  O.  G.  2213. 

153.  Where  at  the  end  of  the  time  allowed 
liim  by  law  for  action  the  applicant  presents 
two  additional  claims,  but  takes  no  action  in 
reference  to  the  rejected  claims  save  to  ask 
for  reconsideration.  Held,  that  the  case  is 
abandoned.  Ex  parte  .41ton,  C.  D.  1904,  113 
O.  G.  1968. 

154.  An  amendment  in  which  the  applicant 
shifts  his  ground  from  one  species  of  the 
invention  to  another  is  not  such  proper  action 
as  the  case  requires  and  does  not  save  it 
from  abandonment.  Ex  parte  Lillie,  C.  D. 
190,5,  114  O.  G.  541. 

155.  After  final  rejection  it  is  incumbent 
upon  the  applicant  to  appeal  or  take  action 
to  have  the  case  reopened  within  the  year 
allowed  by  law  if  he  wishes  to  prosecute  the 
claims  further.  The  filing  of  an  amendment 
is  not  such  action  as  the  condition  of  the 
case  requires.  Ex  parte  Marr,  C.  D.  1905,  119 
O.  G.  2521. 

156.  Where  a  proposed  amendment  was  re- 
fused entry,  under  practice  then  existing,  as 
one  which  would  necessitate  the  requirement 
of  division,  and  attention  was  also  directed 
to  the  fact  that  portions  of  said  proposed 
amendment  constituted  new  matter  and  the 
only  action  by  the  applicant  in  the  ensuing 
year  discusses  the  question  of  new  matter, 
but  ignores  the  question,  of  division.  Held, 
that  the  case  is  abandoned.  Ex  parte  Gaily, 
C.   D.  1905,   115  O.  G.  802. 

157.  Where  the  applicant  directs  matter  to 
be  inserted  in  his  specification  from  the  speci- 
fication of  a  patent,  but  does  not  quote  such 
matter,  and  the  examiner  refuses  to  insert 
the  matter  until  presented  by  amendment. 
Held,  that  the  statement  by  the  applicant  that 


14 


ABANDONMENT  OF  APPLICATION,  III,  (c). 


the  objection  will  be  attended  to  at  some  fu- 
ture time  is  no  proper  response  to  save  the 
case  from  abandonment.     Id. 

158.  Where  the  only  attempt  to  prosecute  an 
application  within  the  year  following  an  of- 
fice action  was  by  a  proposed  amendment, 
which  was  refused  admission,  under  practice 
then  existing,  as  one  which  would  necessi- 
tate division.  Held,  that  the  case  became  aban- 
doned at  the  expiration  of  said  year,  providing 
that  the  examiner's  position  holding  claims 
in  the  proposed  amendment  to  be  drawn  to 
independent  inventions  was  well  taken.     Id. 

159.  Where  an  applicant  at  the  end  of  the 
period  allowed  him  by  statute  files  an  amend- 
ment, but  as  to  many  of  the  claims  merely 
asks  for  reconsideration,  without  pointing 
out  how  they  arc  supposed  to  avoid  the  ref- 
erences cited.  Held,  that  he  has  not  taken  such 
action  as  the  condition  of  the  case  required 
and  that  it  is  abandoned.  Ex  parte  Buscn- 
benz,  C.  D.  1905,  117  O.  G.  600. 

160.  Where  division  was  required  between 
certain  groups  of  claims  and  an  argument  is 
made  against  the  requirement  and  the  ex- 
aminer makes  the  requirement  final  and  in- 
cludes a  claim  overlooked  in  the  original  re- 
quirement in  one  of  the  original  groups  and 
petition  is  taken,  which  is  dismissed  with  the 
information  that  relief  must  be  sought  in  ap- 
peal to  the  examiners-in-chief,  and  thereafter 
reconsideration  is  requested  as  to  the  claim 
originally  overlooked,  but  renewed  petitions 
are  taken  before  action  upon  such  request, 
and  when  the  ease  finally  came  before  the 
examiner  for  action  more  than  the  statutory 
period  for  action  upon  applications  had 
elapsed  since  the  final  requirement  of  division. 
Held,  that  the  case  was  abandoned.  E.x  parte 
Tuttle,  C.  D.  1905,  117  O.  G.  1796. 

161.  Where  requirement  for  division  had 
been  made  final,  Held,  that  the  only  actions 
open  to  the  applicant  thereafter  which  could 
be  considered  such  as  the  condition  of  the 
case  required  and  sufficient  to  save  it  from 
abandonment  at  the  end  of  the  year  follow- 
ing the  date  of  the  final  requirement  were 
actions  complying  with  the  requirement  and 
actions  seeking  in  proper  manner  to  have  the 
requirement  set  aside  by  higher  authority.    Id. 

162.  Where  several  petitions  were  taken  os- 
tensibly to  have  a  requirement  for  division  set 
aside,  but  proper  action  to  that  end  lay  in 
appeal  to  the  examiners-in-chief,  and  not  in 
petition,  and  the  applicant  was  repeatedly  so 
informed,  but  persisted  in  filing  petitions  lead- 


ing to  no  useful  end.  Held,  that  the  course 
adopted  lacks  both  the  appearance  and  the 
substance  of  prosecution  in  good  faith.     Id. 

163.  When  in  the  year  following  final  re- 
jection no  appeal  to  examincrs-in-chief  was 
taken,  but  petition  from  the  propriety  of  the 
final  rejection  was  taken  just  before  the  end 
of  such  year,  which  petition  was  denied.  Held, 
that  the  application  had  become  abandoned. 
Ex  parte  Wagner,  C.  D.  1905,  118  O.  G.  1684. 

164.  Where  during  the  year  following  final 
rejection  amendments  to  claims  were  pre- 
sented, but  no  contention  was  made  that  the 
final  rejection  was  premature,  and  the  exam- 
iner at  end  of  the  year  held  the  case  to  have 
become  abandoned.  Held,  that  the  contention 
on  petition  that  the  final  rejection  was  prema- 
ture comes  too  late.  Ex  parte  Read,  C.  D. 
1905,  119  O.  G.  337. 

165.  An  applicant  cannot  ignore  an  examin- 
er's action  simply  because  he  believes  that  it  is 
not  well  founded.  Whether  well  founded  or 
not,  it  is  binding  upon  the  applicant  until  set 
aside,  and  it  is  incumbent  upon  him  to  take 
steps  to  have  it  set  aside  within  the  year  al- 
lowed by  law  for  action.    Id. 

166.  Where  a  case  is  decided  on  appeal  and 
the  applicant  takes  no  action  within  a  year 
thereafter,  save  to  present  an  amendment  can- 
celling the  rejected  claims  and  inserting  oth- 
ers. Held,  that  the  case  is  abandoned.  Ex 
parte  Auer,  C.  D.  1905,  116  O.  G.  595. 

167.  Where  certain  formal  objections  are 
raised  and  the  claims  are  finally  rejected,  an 
amendment  curing  the  formal  objections  will 
not  save  the  case  from  abandonment,  even 
though  by  curing  the  formal  objections  the 
scope  of  the  claims  is  changed.  A  final  re- 
jection must  be  met  by  an  appeal  and  not  by 
an  amendment  changing  the  scope  of  the 
claims.  Ex  parte  Walton,  C.  D.  1906,  120  O. 
G.  659. 

168.  Where  an  applicant  took  advantage  of  a 
technical  error  in  the  citation  of  one  of  nu- 
merous references  to  delay  his  reply  for  two 
years  and  then  made  reply  only  to  a  portion 
of  the  examiner's  action.  Held,  that  the  action 
was  not  such  as  the  condition  of  the  case  re- 
quired, and  the  same  is  abandoned.  Ex  parte 
Sperry,  C.  D.  1906,  121  O.  G.  687. 

1G9.  Where  an-applicant  presented  an  amend- 
ment canceling  two  of  his  six  rejected  claims 
and  substituted  others  therefor  and  no  action 
whatever  was  taken  as  to  the  remaining 
claims.  Held,  that  the  action  was  insufficient 
to  save  the  case  from  abandonment.    Ex  parte 


ABANDONMENT  OK  APPLICATION,  III,  (c). 


15 


Schmidt  and   Tanody,   C.   D.   1906,   121   O.   G. 
688. 

170.  Where  after  a  certain  action  by  the  ex- 
aminer the  apph'cant's  amendment  purporting 
to  he  in  response  to  a  prior  action  by  the  ex- 
aminer and  not  in  fact  responsive  to  the  last 
action  of  the  examiner,  and  where  the  ap- 
plicant was  notified  that  said  amendment  was 
not  so  responsive  and  failed  to  take  respon- 
sive action  within  the  year  from  the  exam- 
iner's action.  Held,  that  the  application  was 
aliandoncd.  Ex  parte  Woods,  C.  D.  1906,  121 
().  G.  689. 

171.  A  mere  request  for  reconsideration 
without  giving  any  reasons  therefor,  especially 
where  a  party  has  abandoned  all  hope  or  ex- 
pectation of  securing  a  patent,  is  not  sufficient 
to  save  an  application  from  abandonment.  Ex 
parte  Krejci,  C.  D.  1906,  121  O.  G.  1011. 

172.  Where  claims  are  rejected,  a  mere  re- 
quest for  reconsideration  filed  within  the 
year  allowed  by  law,  unaccompanied  by  some 
statement  or  argument  which  controverts  the 
ruling  of  the  examiner  or  throws  light  upon 
the  facts  of  the  case,  is  not  sufficient  to  save 
the  application  from  abandonment  for  failure 
to  prosecute.  Ex  parte  Einstein,  C.  D.  1906, 
121  O.  G.  1675. 

173.  Where  claims  are  placed  under  final  re- 
jection and  within  the  year  following  no  ap- 
peal is  filed  nor  any  amendment  or  argument 
upon  the  merits  presented  and  the  communi- 
cations filed  are  directed  to  traversing  the 
propriety  of  the  final  rejection.  Held,  that  a 
petition  filed  one  day  before  the  year  expired 
that  the  final  rejection  be  withdrawn  is  not 
such  an  action  as  will  save  the  application 
from  abandonment.  Ex  parte  Thayer,  C.  D. 
1906,  122  O.  G.  1724. 

174.  Where  a  broadened  claim  was  presented 
in  the  twenty-eighth  action  on  the  case,  taken 
more  than  eight  years  after  the  case  was 
filled,  and  the  broadening  of  the  claims  was 
not  called  for  by  anything  in  the  previous 
office  action  and  no  statement  was  made  by 
the  applicant  to  point  out  the  supposed  patent- 
able novelty  in  the  case  or  how  the  amend- 
ments avoided  the  references  and  objections 
and  no  other  action  was  taken  within  the 
year  following  the  previous  office  action,  Held, 
that  the  case  is  abandoned.  Ex  parte  Rich- 
ards, C.  D.  1906,  124  O.  G.  2r,:i4. 

175.  Where  the  only  action  by  the  applicant 
in  the  year  following  an  office  action  contains 
errors  which,  if  the  amendment  be  accepted, 
would  extend  the  time  for  prosecution  by  the 


applicant  another  year  for  no  purpose  but 
the  correction  of  the  errors,  the  case  should 
be  regarded  as  abandoned  until  a  proper 
amendment  is  presented  with  a  showing  of 
reasons  for  delay  covering  the  entire  period 
thereof.    Id. 

176.  Where  the  only  amendment  filed  within 
the  year  allowed  by  law  was  filed  by  an  attor- 
ney who  had  not  furnished  proper  evidence 
of  his  power  to  act  in  the  case.  Held,  that  the 
application  is  abandoned.  Ex  parte  Rogers, 
C    D.   lOOfi,  125  O.  G.  2766. 

177.  Where  the  first  amendment  made  by  ap- 
plicant five  days  before  the  expiration  of  the 
year  from  the  examiner's  first  action  reject- 
ing all  the  claims  consisted  of  a  few  correc- 
tions to  the  specification,  an  argument  as  to 
the  patentability  of  the  claims,  and  the  addi- 
tion of  a  new  claim,  and  the  examiner  in  ad- 
mitting this  amendment  and  rejecting  the 
claims  warned  applicant  that  it  was  not  such 
an  action  as  the  condition  of  the  case  required 
and  that  the  added  claim  was  so  broad  as  to 
be  met  in  nearly  all  selective  signaling  sys- 
tems, and  where,  following  this,  applicant  filed 
an  amendment  two  days  before  the  expiration 
of  a  year  from  the  last  action  of  the  examiner 
in  which  he  amended  all  of  the  claims  except 
the  broad  claim  added  by  the  previous  amend- 
ment, which  claim  he  neither  canceled  nor 
amended  nor  presented  any  reasons  why  he 
considered  it  allowable.  Held,  that  the  latter 
amendment  was  not  entirely  responsive  to 
the  examiner's  rejection  and  was  not  sufficient 
to  save  the  application  from  abandonment.  Ex 
parte  Lcich,  C.  D.  1907,  126  O.  G.  1066. 

178.  Where  an  application  is  withdrawn  from 
issue  at  the  request  of  the  applicant  to  await 
the  allowance  of  a  related  application  and  no 
action  is  taken  therein  until  after  the  expira- 
tion of  the  statutory  period  allowed  for  tak- 
ing action,  which  dates  from  the  notice  of  al- 
lowance, the  application  is  abandoned  in  the 
absence  of  special  circumstances  excusing  the 
delay.  Ex  parte  Brooks,  C.  D.  1907,  127  O.  G. 
847. 

179.  Where  27  claims  were  rejected  on 
August  9,  1905,  and  on  June  9,  1906,  the  ap- 
plicant amended  two  of  the  rejected  claims 
and  added  two  new  claims,  but  made  no  al- 
lusion to  the  remaining  25  rejected  claims,  and 
the  examiner  on  August  14,  1906,  on  taking 
up  the  case  in  the  regular  course  of  his  work, 
notified  applicant  that  his  case  was  abandoned. 
Held,  that  the  examiner's  action  is  entirely 
in  accord  with  sound  reason  and  well-estab- 


16 


ABANDONMENT  OF  APPLICATION,  III,  (c). 


lishcd  practice  and  is  the  only  proper  action 
which  could  have  been  given  under  the  cir- 
cumstances. Ex  parte  Midgley,  C.  D.  1907, 
127  O.  G.  i:.77. 

180.  Petitioner's  contention  that  his  unre- 
sponsive amendment  tiled  within  the  year  is 
entitled  to  consideration  and  action  upon  its 
merits  is  clearly  unfounded,  since  the  statutes 
provide  for  no  piecemeal  consideration  and 
the  rules  prohibit  the  same.     Id. 

181.  Where  after  fmal  rejection  the  appli- 
cant presents  an  amendment  curing  informal- 
ities and  containing  claims  which  differ  sub- 
stantially from  those  finally  rejected,  but  does 
not  make  a  showing  of  good  and  sufficient 
reasons  why  the  amendment  was  not  earlier 
presented.  Held,  that  the  amendment  is  inad- 
missible, although  it  would  have  been  proper 
to  cure  the  informalities  by  proper  amend- 
ment, and  that  such  action  does  not  relieve 
the  application  from  its  condition  as  subject 
to  appeal  or  save  it  from  abandonment.  Ex 
parte  Green,  C.  D.  1907,  130  O.  G.  209. 

182.  Where  claims  are  finally  rejected  and 
the  formal  requirement  that  the  drawings  be 
corrected  to  meet  the  requirement  of  the  rule 
with  respect  to  artistic  merit  is  also  made 
final,  the  filing  of  an  appeal  within  the  year 
following  the  final  rejection  constitutes  a  suf- 
ficient action  to  save  the  case  from  abandon- 
ment, although  the  drawings  have  not  been 
amended  as  required,  the  formal  objection 
being  such  as  may  be  corrected  after  the 
final  decision  on  the  merits.  Ex  parte  Proc- 
tor.   C.    D.    1900,   1,38  O.   G.   2:)8. 

183.  Where  an  applicant  was  notified  that 
certain  interferences  had  been  decided  in  his 
favor  and  that  the  case  awaited  action  in 
response  to  previous  office  actions,  the  filing 
of  an  amendment  containing  the  claims  of  a 
patent  and  requesting  an  interference  there- 
with is  not  such  action  as  the  condition  of  the 
case  required  and  did  not  operate  to  stay  the 
running  of  the  year  from  the  date  of  the 
previous  office  action.  Ex  parte  Curtis,  C.  D. 
1900.  138  O.  G.  767. 

184.  Where  in  response  to  the  rejection  of 
ten  claims  by  the  examiner  the  applicant  filed 
an  amendment  only  two  days  before  the  ex- 
piration of  the  year  allowed  for  action  in 
which  eight  of  the  rejected  claims  were  can- 
celed, one  left  unchanged,  one  amended,  and 
a  new  claim  added,  without  mentioning  the 
claim  which  was  left  intact  and  without  at- 
tempting to  point  out  how  the  amended  claim 
or  the  new  claim  differed  from  the  references 


cited.  Held,  that  the  amendment  was  not  a 
proper  response  and  that  the  application  was 
abandoned,  particularly  in  view  of  the  fact 
that  the  record  disclosed  that  after  each  re- 
jection of  the  claims  since  the  filing  of  the 
application  in  1901  applicant  had  taken  the 
full  period  allowed  by  law  for  amendment 
and  that  he  also  delayed  action  on  the  case 
for  one  year  after  he  was  notified  by  the 
primary  examiner  that  the  application  was 
abandoned.  Ex  parte  Copeland,  C.  D.  1909, 
140  O.  G.  1207. 

185.  Where  in  an  application  filed  by  joint 
applicants  the  only  amendment  filed  within 
the  year  after  the  examiner's  action  was  an 
amendment  signed  by  an  attorney  appointed 
by  only  one  of  such  applicants,  Held,  that  the 
application  was  abandoned.  Ex  parte  De 
Forest  and  Horton,  C.  D.  1909.  141  O.  G.  .566. 

186.  Where  an  amendment  filed  within  the 
year  allowed  by  law  for  action  is  held  to  have 
no  standing,  on  the  ground  that  it  was  signed 
by  the  attorney  appointed  by  only  one  of  two 
joint  applicants,  the  ratification  of  such 
amendment  by  the  other  joint  applicant  after 
the  expiration  of  the  year  is  not  effective 
to  carry  the  date  of  the  action  back  to  the 
date  of  the  filing  of  such  amendment.  A 
ratification  may  not  have  a  retroactive  effect 
to  defeat  the  express  provisions  of  the  stat- 
ute relating  to  the  time  within  which  a  party 
must  prosecute  an  application  to  save  it  from 
abandonment.    Id. 

187.  Where  the  examiner  rejected  eight 
claims  and  just  before  the  expiration  of  the 
year  the  applicant  canceled  four  of  these, 
amended  one,  pointed  out  wherein  the  other 
three  avoided  the  references,  and  added  two 
new  claims  without  pointing  out  how  these 
two  were  believed  to  distinguish  over  the 
prior  art.  Held,  that  the  application  is  aban- 
doned. Ex  parte  Copeland,  C.  D.  1909,  149 
O.  G.  309. 

188.  Where  an  applicant  relies  upon  his  tech- 
nical right  to  delay  action  as  long  as  possible 
in  each  instance,  he  is  entitled  to  no  leniency 
in  the  application  of  the  rule  which  provides 
that  prosecution  of  an  application  to  save  it 
from  abandonment  must  include  such  proper 
action  as  the  condition  of  the  case  may  re- 
quire.    Id. 

189.  Where  on  appeal  from  a  decision  of  the 
cxaminers-in-chief,  the  commissioner  affirmed 
that  decision,  but  stated  that  the  claims,  if 
amended  as  suggested  by  applicant,  might  be 
entered  and  allowed  by  the  examiner  in  the 


ABANDONMENT  OF  APPLICATION,  III,  (c),  IV,  (a). 


17 


absence  of  further  reference,  subject  to  cer- 
tain requirements,  Held,  that  where  the  only 
amendment  presented  within  one  year  from 
the  examiner's  letter  citing  new  references 
did  not  comply  with  such  requirements  the 
application  was  abandoned.  Ex  parte  Chip- 
man,  C.  D.  1910,  153  O.  G.  545. 

190.  Where  on  the  last  day  of  the  year  al- 
lowed for  action  applicant  filed  an  amend- 
ment and  argument,  but  discussed  only  three 
of  the  eleven  patents  cited  and  did  not  point 
out  specifically,  as  required  by  Rule  68,  why 
these  patents  were,  in  his  opinion,  inappli- 
cable to  the  claims.  Held,  that  the  examiner 
was  justified  in  holding  the  application  aban- 
doned. Ex  parte  Sachs,  C.  D.  1910,  157  O. 
G.  755. 

191.  Where  the  examiner  rejected  certain 
claims  and  required  further  illustration,  the 
mere  amendment  of  the  drawing  was  not  an 
action  which  amounted  to  the  prosecution  of 
the  application  within  the  meaning  of  section 
4894,  Revised  Statutes,  citing  ex  parte  Wal- 
ton, C.  D.  1906,  28,  120  O.  G.  659;  and  ex 
parte  Wentzel,  C.  D.  1907,  352,  131  O.  G. 
941.  E.X  parte  Sturtevant  and  Sturtevant,  C. 
D.  1910,  158  O.  G.  885. 

192.  Where  the  examiner  required  that  the 
specification  be  rewritten  and  new  drawings 
filed.  Held,  that  the  filing  of  a  substitute  spe- 
cification accompanied  by  blue  prints  in  which 
many  of  the  reference-numerals  of  the  orig- 
inal drawings  were  omitted  was  not  such 
proper  prosecution  of  the  case  as  required  by 
the  rules.  Ex  parte  Mastaglio,  C.  D.  1910,  159 
O.  G.  489. 

193.  Where  at  the  end  of  the  year  following 
a  final  rejection  of  certain  claims  applicant 
filed  an  amendment  to  each  of  such  claims 
accompanied  merely  by  a  statement  that  the 
amendment  is  believed  to  place  the  case  in 
condition  for  allowance.  Held,  that  such  ac- 
tion is  not  responsive  and  that  the  applica- 
tion is  abandoned.  Ex  parte  Lorenz,  C.  D. 
1910,  160  O.  G.  1039. 

194.  In  response  to  a  rejection  accompanied 
by  a  statement  that,  in  the  opinion  of  the  ex- 
aminer, there  was  no  patentable  novelty  in 
the  case  the  applicant  presented  one  specific 
claim.  The  examiner  finally  rejected  this 
claim  and  called  attention  to  a  certain  deci- 
sion. The  applicant  filed  an  argument  stating 
that  he  did  not  understand  the  application  of 
the  references  or  the  pertinency  of  the  deci- 
sion cited.  The  examiner  then  called  atten- 
tion to  a  slight  fallacy  in  the  mode  of  opera- 

2 


tion  described  and  pointed  out  the  portion  of 
the  decision  considered  pertinent  The  only 
action  taken  by  applicant  within  one  year 
from  this  latter  action  of  the  examiner  was 
to  file  an  amendment  containing  three  claims 
broader  than  that  finally  rejected.  Held,  that 
the  application  is  abandoned.  Ex  parte  Hardy, 
C.  D.  1910,  161  O.  G.  268. 

IV.  Statutory  Term. 
(a)  In  General. 

195.  A  reissue,  application,  like  an  original 
application,  becomes  abandoned,  under  section 
4894  of  the  Revised  Statutes,  by  a  failure  to 
prosecute  it  within  one  year  from  the  date  of 
the  last  office  action.  Ex  parte  Laughlin  and 
Rculeaux,  C.  D.  1900,  92  O.  G.  2002. 

196.  The  statute  provides  that  "all  applica- 
tions for  patents"  become  abandoned  by  failure 
to  prosecute  within  one  year,  and  reissue  appli- 
cations clearly  come  within  these  broad  terms. 
Even  if  they  did  not,  however,  the  provision 
that  reissue  applications  are  subject  to  revi- 
sion "in  the  same  manner  as  original  appli- 
cations" would  make  the  limitation  as  to  the 
time  within  which  action  should  be  taken  ap- 
plicable.    Id. 

197.  The  contention  that  delay  in  the  prose- 
cution of  an  application  for  a  reissue  is  not 
objectionable,  since  it  does  not  change  the 
time  when  the  invention  will  become  public 
property  by  the  expiration  of  the  patent,  is 
not  well  founded,  since  it  is  well  settled  that 
delay  in  filing  the  application  is  objectionable 
on  account  of  the  possible  intervening  rights 
of  the  public,  and  the  same  reasons  apply  to 
make  an  unreasonable  delay  in  the  prosecu- 
tion of  an  application  after  it  is  filed  improp- 
er and  objectionable.     Id. 

198.  Where  after  acting  upon  a  case  the  ex- 
aminer writes  a  letter  under  Rule  96  sug- 
gesting other  claims  for  the  purpose  of  in- 
terference, Held,  that  the  year  allowed  for 
action  by  the  applicant  commences  to  run 
from  the  date  of  the  letter  suggesting  claims. 
Coulson  V.  Callender  and  Callender,  C.  D. 
1909,  101  O.  G.  1607. 

199.  The  provision  of  Rule  77  that  the  year 
allowed  by  law  commences  to  run  from  the 
date  of  the  action  preceding  the  requirement 
to  place  the  case  in  condition  for  interference 
applies  only  where  no  new  requirement  is 
made.  The  suggestion  of  new  claims  is  a  new 
requirement.     Id. 


18 


ABANDONMENT  OF  APPLICATION.  IV,  (a). 


200.  Where  llic  examiner  did  not  inform  the 
applicant  clearly  which  claims  were  rejected 
until  July  10,  1901,  when  in  response  to  an 
inquiry  he  mentioned  the  particular  claims  re- 
jected, Held  that  the  applicant  must  be  al- 
lowed one  year  from  July  10,  1901,  within 
which  to  take  action.  Ex  parte  Kuhlewind, 
C.  D.  1902,  101  O.  G.  3107. 

201.  A  request  for  an  extension  of  time  for 
filing  an  amendment  cannot  be  granted  when 
the  period  extends  over  the  statutory  limit 
within  which  the  application  must  be  prose- 
cuted under  the  provisions  of  section  4894  of 
the  Revised  Statutes  in  order  to  save  it  from 
abandonment.     Ex  parte  Bauercamper,  C.  D. 

1902,  99  O.  G.  448. 

202.  Where  a  rejection  of  an  application  is 
incomplete,  in  that  all  the  references  are  not 
cited  with  sufficient  particularity  to  enable  the 
applicant  to  be  certain  what  patent  is  deemed 
a  reference,  and  the  examiner  subsequently 
writes  another  letter  supplementary  to  his 
letter  of  rejection  specifying  distinctly  the 
patents  intended  to  be  cited,  Held,  that  the 
rejection  was  not  made  complete  until 
the  second  letter  was  written,  and  the 
year  allowed  by  law  in  which  to  amend  the 
application  commenced  to  run  from  the  date 
of  the  second  letter.     E.x  parte  Stead,  C.  D. 

1903,  107  O.  G.   834. 

203.  Where  the  last  day  of  the  year  allowed 
by  law  for  action  comes  on  Sunday,  action 
must  be  taken  the  day  before ;  otherwise  the 
case  is  abandoned.  Ex  parte  Koritski  and 
Wipf,  C.  D.  1904,  113  O.  G.  1145. 

204.  Where  an  application  is  rejected  April 
7,  1903,  and  an  action  is  subsequently  made 
which  brings  up  matters  for  consideration 
which  are  entirely  distinct  and  separate  from 
those  raised  by  the  rejection  of  April  7,  1903, 
Held,  that  the  one  year  begins  to  run  from 
April  7,  1903,  in  which  action  responsive 
thereto  should  be  made  in  order  to  save  the 
case  from  abandonment.  Id.  Ex  parte  Parkes, 
C.  D.  1904,  113  O.  G.  2213. 

205.  Where  the  last  day  for  action  expired 
March  5,  and  an  amendment  was  mailed 
March  3  and  failed  to  reach  the  office  until 
March  6,  because  of  the  closing  of  the  office 
on  March  4,  which  was  unexpected  to  the  ap- 
plicant, Held  that  the  case  is  not  abandoned. 
Ex  parte  Reis,  C.  D.  1905,  116  O.  G.  2007. 

206.  Where  on  December  29,  1905,  an  ex- 
aminer rejected  certain  claims  and  made  a 
formal  objection  to  another  claim,  to  which 


the  applicant  made  a  sufficient  response  on 
January  27,  1906,  with  the  exception  that  he 
failed  to  mention  the  informal  claim,  and  the 
examiner  in  his  next  action,  on  February  16, 
1906,  reiterated  the  formal  objection,  but  did 
not  state  that  the  applicant's  action  by  rea- 
son of  failure  to  mention  the  informal  claim 
was  unresponsive  and  did  not  make  such  ob- 
jection final.  Held,  that  an  amendment  cur- 
ing the  informality  filed  January  18,  1907,  is 
filed  in  proper  tim.c,  the  renewal  of  the  ob- 
jection by  the  examiner  without  objection  to 
the  insufficiency  of  the  applicant's  action  of 
January  27,  1906,  constituting  a  waiver  of  the 
question  of  incompleteness  of  such  action. 
Ex  parte  Westinghouse,  C.  D.  1907,  131  O.  G. 
1420. 

207.  Where  the  examiner  finally  rejected  the 
claims  of  an  application  and  also  made  final 
certain  objections  to  such  claims  on  July  3, 
1906,  and  a  petition  upon  the  formal  matters 
was  taken  on  August  2,  1906,  which  was  de- 
cided by  the  commissioner  on  August  27, 
1906,  an  appeal  to  the  examiners-in-chief  Aug- 
ust 24,  1907,  is  filed  without  the  period  of  one 
year  allowed  for  prosecution,  which  dates 
from  the  final  rejection  and  not  from  the  deci- 
sion of  the  commissioner  on  the  petition.  Ex 
parte  Wentzel,  C.  D.  1907,  131  O.  G.  941. 

208.  Where  on  appeal  the  commissioner  af- 
firmed the  decision  of  the  examiners-in-chicf 
holding  certain  claims  unpatentable,  there  is 
no  reason  for  the  examiner  to  further  notify 
applicant  that  these  claims  stand  finally  re- 
jected, and,  unless  applicant  appeals  to  the 
court  of  appeals,  his  year  in  which  to  take 
action  runs  from  the  date  of  the  decision  of 
the  commissioner.  Ex  parte  Gale,  Sr.,  C.  D. 
1910,  161  O.  G.  530. 

209.  On  August  3,  1909,  applicant  was  re- 
quired to  revise  his  specification  and  claims. 
On  May  13,  1910,  an  amendment  was  filed 
canceling  the  original  specification  and  claims 
and  substituting  a  new  specification.  On  May 
28,  1910,  the  applicant  was  informed  that  the 
new  specification  contained  no  claims  and  that 
action  on  the  merits  of  the  case  was  deferred. 
Held,  that  the  year  in  w-hich  applicant  could 
take  action  ran  from  August  3,  1909,  and  that 
an  amendment  containing  new  claims  not  hav- 
ing been  filed  till  October  21,  1910,  the  ap- 
plication was  abandoned  in  the  absence  of 
a  showing  establishing  that  the  delay  was  un- 
avoidable within  the  meaning  of  section  4894 
of  the  Revised  Statutes.  Ex  parte  Kehrhahn, 
C.  D.  1911,  162  O.  G.  537. 


ABANDONMENT  OF  APPLICATION,  IV,   (b),  V. 


19 


(b)  Effect  of  Suspension. 

210.  On  June  22,  1895,  applicant  requested  a 
suspension  of  action  on  his  application  for 
three  months,  which  was  granted.  Nothing 
further  was  done  until  January  10,  1806,  when 
the  examiner,  on  his  own  motion,  called  the 
applicant's  attention  to  the  fact  that  the  ap- 
plication was  suspended  and  suggested  to  him 
that  if  he  desired  a  further  suspension  he 
should  promptly  apply  for  it.  On  January 
22,  1896,  the  applicant  followed  the  sugges- 
tion of  the  examiner  and  requested  a  suspen- 
sion for  sixty  days.  For  reasons  not  dis- 
closed by  the  record  the  examiner  granted  a 
suspension  for  six  months  instead  of  for 
sixty  days.  Nothing  further  was  done  with 
the  application  until  March  1,  1897,  when  the 
examiner,  on  his  own  motion,  informed  the 
applicant  that  the  case  would  stand  suspended 
until  June  12,  1897,  when  it  would  be  passed 
to  issue.  The  case  was  not  passed  to  issue 
and  no  attention  was  paid  to  it  until  August 
25,  1898,  when  the  present  examiner  informed 
the  applicant  that  his  case  was  abandoned. 
Held,  that  were  it  not  for  the  letter  of  the 
examiner  of  March  1,  1897,  the  application 
would  have  been  abandoned,  but  that  said  let- 
ter was  such  an  action  as  that  referred  to  in 
the  statute  and  that  it  saved  the  application 
from  abandonment.  Ex  parte  McCaskey,  C. 
D.   1898,  85  O.  G.  935. 

211.  Held,  further,  that  if  such  practice  as 
that  indicated  in  this  case  exists  in  the  office  it 
cannot  be  too  strongly  disapproved  and  should 
be  stopped.  It  is  such  cases  as  this  that 
bring  the  office  into  ill-repute  and  justly  give 
ground  for  the  criticism  that  is  sometimes  in- 
dulged in  by  the  public.     Id. 

212.  The  office  has  no  authority  to  grant  a 
request  for  a  suspension  of  action,  which 
amounts  to  a  request  to  extend  the  year  al- 
lowed the  applicant  by  law  within  which  to 
act  Ex  parte  Whitney,  C.  D.  1901,  109  O.  G. 
2442. 

213.  Where  after  amendment  the  examiner 
wrote  a  letter  suspending  action  upon  the 
amendment  until  the  applicant  filed  a  drawing 
in  accordance  with  an  oral  interview  and  the 
applicant  neither  filed  the  drawing  nor  took 
action  in  the  case  for  three  years.  Held,  that 
the  case  is  abandoned.  Ex  parte  Hunter,  C. 
D.  1905,  116  O.  G.  1731. 

214.  A  letter  by  the  examiner  suspending  ac- 
tion until  a  drawing  is  furnished  must  be  re- 
garded as  a  requirement  for  a  drawing  and  as 


an   action   calling   for  a   response   within   the 
time  allowed  by  law  for  action.    Id. 

215.  Where  after  amendment  of  a  case  the 
examiner  writes  suspending  action  to  permit 
the  applicant  to  file  other  amendments  agreed 
upon  at  an  oral  interview  and  no  further 
action  is  taken  in  the  case  for  more  than  two 
years,  Held,  that  the  case  is  abandoned,  not- 
withstanding the  fact  that  the  examiner  made 
his  suspension  for  the  definite  period  of 
thirty  days.  Ex  parte  Herzog  and  Wheeler, 
C.  D.  1905,  116  O.  G.  2009. 

216.  Where  the  examiner  suspends  action  to 
permit  the  filing  of  an  amendment  agreed 
upon  at  an  oral  interview.  Held,  that  he  has  in 
fact  made  a  requirement,  and  it  is  incumbent 
upon  the  applicant  to  comply  or  take  issue 
within  the  time  fixed  by  law.     Id. 

217.  Where  an  applicant  files  an  amendment 
and  then  requests  suspension  of  action  there- 
on, he  leaves  the  case  as  if  no  such  amend- 
ment had  been  filed,  and  therefore  the  time 
for  action  is  to  be  computed  from  the  pre- 
ceding office  action.     Id. 

218.  Where  the  examiner  suspends  action 
upon  a  case  and  fixes  a  definite  period,  as 
required  in  the  rule,  he  should  take  the  case 
up  for  action  on  the  expiration  of  the  time. 
This,  however,  does  not  relieve  the  applicant 
from  the  responsibility  or  effect  of  his  action 
in  requesting  suspension.     Id. 

V.  Effect  of  Variol-s  Delays. 

219.  Where  it  appears  that  in  the  past  the 
applicant  has  availed  himself  of  the  full  statu- 
tory period  allowed  him  by  law,  he  is  not 
entitled  to  leniency  in  the  consideration  of 
excuses  offered  for  delay  in  the  last  action. 
Ex  parte  Naef,  C.  D.  190.5,  115  O.  G.  1583. 

220.  Where  the  record  shows  that  the  appli- 
cant is  in  the  habit  of  waiting  almost  the  full 
statutory  period  before  amending,  he  is  not  in 
a  position  to  rely  on  any  matters  of  equity 
when  a  question  is  raised  whether  he  has 
acted  in  time,  but  only  upon  his  strict  techni- 
cal rights.  Ex  parte  Naef,  C.  D.  1905,  115 
O.  G.  2133. 

221.  Where  a  record  of  useless  dilatory  pros- 
ecution was  presented  and  a  course  of  sys- 
tematic opposition  had  been  adopted  by  the 
applicant,  carried  out  by  him  in  unnecessarily 
numerous  letters,  arguments,  and  petitions  ex- 
tremely harassing  to  the  office  and  wasteful 
of  the  time  that  should  be  devoted  to  the 
cases  of  other  applicants.  Held,  that  only  the 


20 


ABANDONMENT  OF  INVENTION. 


utmost  good  faith  in  an  action  relied  upon 
to  save  the  case  from  abandonment  will  suf- 
fice for  this  purpose.  Meden  v.  Curtis,  C.  D. 
1005,  117  O.  G.  1795. 

222.  Where  an  applicant  delayed  one  year 
after  notice  that  his  case  was  abandoned  in 
bringing  his  petition,  Held,  that  he  was  not 
in  an  equitable  position  to  demand  any  leni- 
ency in  considering  the  question  whether  he 
had  complied  with  the  rule  requiring  diligent 
and  proper  prosecution  of  his  case.  Ex  parte 
Ruthenburg,  C.  D.  1906,  121  O.  G.  337. 

\'I.  Failure  to  Complete  .Application. 

223.  .\  fee  which  is  filed  more  than  a  year 
after  the  filing  of  the  other  parts  of  the  ap- 
plication cannot  be  applied,  inasmuch  as  the 
application    is    abandoned.      Ex    parte    Kurz, 

C.  D.  1905,  119  O.  G.  961. 

224.  Under  section  4894,  Revised  Statutes,  an 
application  is  abandoned  by  failure  to  com- 
plete it  within  one  year,  as  well  as  by  failure 
to  prosecute  it  within  one  year  after  com- 
pletion.    Id. 

225.  Where  an  applicant  failed  to  file  a  valid 
oath  within  a  year  from  the  date  of  the  re- 
ceipt of  the  other  application  papers,  though 
twice  notified,  the  application  held,  abandoned 
under  Rules  30  and  31.     Ricgger  v.  Bierl,  C. 

D.  1910,  150  O.  G.  826. 

VII.  Formal. 

226.  Where  after  a  case  is  allowed  the  appli- 
cant in  order  to  embody  other  claims  files  a 
new  case  covering  the  invention  without  com- 
plying with  or  seeking  to  obtain  the  benefit 
of  the  statute  relating  to  renewal  of  applica- 
tions and  files  a  written  abandonment  of  the 
first  case,  specifically  stating  that  the  inven- 
tion covered  thereby  is  not  abandoned,  Held, 
that  the  abandonment  of  the  first  case  was 
as  complete  as  provided  for  in  section  4894 
and  the  consequences  must  be  the  same.  *0s- 
tergren  et  al.  v.  Tripler,  C.  D.  1001,  95  O.  G. 
837. 


ABANDONMENT   OF  INVENTION. 

!•  The  use  or  sale  of  an  invention  by  the 
inventor  within  two  years  before  application 
is  no  just  ground  to  presume  its  abandonment, 
unless  accompanied  by  other  acts  or  declara- 
tions clearly  evincing  an  intention  to  dedicate 
the  invention  to  the  public.     Hence  abandon- 


ment will  not  be  presumed  merely  from  a 
statement  contained  in  the  patent  itself  that 
"the  invention  is  in  practical  operation  and 
on  the  market  in  considerable  numbers,  and 
the  facts  here  stated  with  regard  to  its  op- 
eration are  such  as  have  been  ascertained 
from  commercial  experience."  c  Mast,  Foos 
&  Co.  v.  Dempcter  Mill  Mfg.  Co.,  C.  D.  1898, 
82  O.  G.  338. 

2.  Where  after  a  reduction  to  practice  of 
an  invention  an  applicant  delayed  for  eleven 
years  in  filing  an  application  because  of  the 
fixed  and  determined  purpose  on  the  part  of 
the  owner  of  the  invention  to  keep  it  from 
the  public  and  to  prevent  his  partners  from 
obtaining  any  benefit  whatever  therefrom  until 
the  expiration  of  certain  patents  and  he  could 
find  it  profitable  to  dispose  of  certain  machines 
that  he  had  on  hand  and  in  the  meantime 
third  parties  had  applied  for  and  obtained  a 
patent  for  the  same  invention.  Held,  that  there 
was  no  excuse  or  justification  whatever  for 
the  want  of  diligence  in  making  the  applica- 
tion. *Mower  v.  Duell,  Commissioner  of 
Patents,  C.  D.  1899,  88  O.  G.  191. 

3.  Under  such  circumstances,  to  say  the 
least  of  the  matter,  there  was  not  much  con- 
sideration given  to  the  public  in  this  scheme 
of  delay,  however  much  it  may  have  inured  to 
the  benefit  and  advantage  of  the  owner  of  the 
invention.     *Id. 

4.  Where  an  applicant  reduced  an  invention 
to  practice,  and  delayed  for  about  eleven  years 
in  filing  an  application,  and  during  this  delay 
subsequent  and  independent  inventors  of  the 
same  device  came  into  the  office  with  their 
completed  invention  and  applied  for  and  ob- 
tained a  patent  at  much  cost  and  trouble,  and 
put  the  invention  into  operation  and  gave  the 
public  the  benefit  of  it.  Held,  that  to  grant 
a  patent  to  the  first  to  reduce  the  invention  to 
practice  and  thereby  defeat  the  patent  of  three 
years'  standing  would  neither  be  equitable  nor 
just,  nor  would  it  be  promotive  of  the  great 
object  of  the  patent  laws.  (Bates  v.  Coe, 
C.  D.  1879,  365,  15  O.  G.  337,  98  U.  S.  31, 
cited.)     *Id. 

5.  Parties  must  be  bound  by  the  conse- 
quence of  their  own  acts,  and  this  principle 
is  true  in  the  patent  law  as  it  is  in  all  other 
departments  of  the  law.  A  deliberate  inten- 
tional delay  and  non-action  in  a  matter  of 
either  a  public  or  private  concern  is  proof  of 
a  very  cogent  nature,  and  the  party  charge- 
able with  such  conduct  must  bear  the  conse- 
quences of  It  and  will  not  be  heard  to  excuse 


ABANDONED  APPLICATION,  I. 


21 


himself  by  simply  declaring  that  he  did  not 
intend  to  prejudice  the  rights  of  others  or 
to  waive  rights  of  his  own  that  would  have 
been  available  to  him  if  they  had  been  timely 
exercised.     *Id. 

6.  Abandonment  cannot  be  predicated  upon 
failure  to  put  the  patented  device  upon  the 
market,  d  Crown  Cork  &  Seal  Co.  of  Balti- 
more City  v.  Aluminum  Stopper  Co.  of  Balto. 
City  et  al.,  C.  D.  1901,  96  O.  G.  2573. 

7.  An  inventor  may  give  to  the  public  the 
benefits  of  his  ingenuity,  and  such  relinquish- 
ment may  be  either  direct  or  it  may  be  in- 
ferred from  circumstances,  and  it  may  occur 
before  application  or  thereafter.  The  law, 
however,  does  not  favor  forfeiture,  and  it 
being  a  question  of  fact  whether  there  has 
been  an  abandonment  all  reasonable  doubts 
must  be  resolved  in  favor  of  the  patent,  d  Id. 

8.  Where  the  inventor  clearly  manifests  his 
intention  to  relinquish  any  rights  to  the  in- 
vention which  he  has,  the  inchoate  right  to  a 
patent  cannot  be  resumed;  but  a  mere  aban- 
donment of  experiments  on  an  incomplete  in- 
vention with  the  expectation  of  again  taking 
the  matter  up  is  not  such  relinquishment. 
did. 

9.  While  in  the  case  of  a  renewal  applica- 
tion the  intention  of  the  applicant  in  allow- 
ing the  original  application  to  become  for- 
feited may  be  inquired  into  for  the  purpose 
of  determining  the  question  of  abandonment, 
such  inquiry  must  be  directed  to  the  abandon- 
ment of  the  invention  claimed  in  the  original 
application  and  not  to  some  other  invention 
which  may  be  described  incidentally  therein 
and  subsequently  brought  into  interference 
when  claimed  in  a  later  application.  *Saun- 
ders  V.  Miller,  C.  D.  1909,  146  O.  G.  50o. 

10.  A  statement  in  a  process  application 
which  disclosed  the  apparatus  used  for  carry- 
ing out  such  process  that  the  apparatus  form- 
ed no  part  of  the  invention  is  not  a  dis- 
claimer nor  an  abandonment  of  the  right  to 
subsequently  claim  a  patent  for  such  appa- 
ratus.    *Id. 

11.  Abandonment  is  not  to  be  presumed,  and 
the  burden  is  on  the  one  charging  it  to  es- 
tablish it  by  clear  and  convincing  proof.    *Id. 

12.  Where  the  evidence  raises  a  presump- 
tion of  abandonment,  it  may  be  rebutted  by 
showing  acts  assertive  of  the  inventor's  right 
and  his  intention  by  experiment  or  improve- 
ment to  perfect  his  discovery.     *Id. 

13.  In  an  interference  between  D.  and  B.  & 
S.  involving  a  species  different  from  that  in- 


volved in  the  present  interference  it  was  held, 
that  D.  had  forfeited  his  rights  in  favor  of  B. 
&  S.  Held,  that  the  testimony  in  the  earlier 
interference  has  no  bearing  on  the  question 
of  abandonment  of  the  invention  in  issue  in 
the  present  interference.  Von  Recklinghausen 
V.  Dempster,  C.  D.  1909,  148  O.  G.  277. 


ABANDONED  APPLICATION. 

I.  Right  to  Inspect,  Etc. 
II.  Revival  of. 

I.  Right  to  Inspect,  Etc. 

1-  A  statement  that  copies  of  an  alleged 
abandoned  application,  identified,  are  neces- 
sary for  defense  in  a  suit  does  not  constitute 
sufficient  ground  for  granting  the  petition. 
Ex  parte  Walworth  Manufacturing  Company, 

C.  D.   1898,  82   O.   G.   187. 

2.  Under  no  circumstances  should  a  petition 
for  copies  of  an  abandoned  application  be 
granted  without  opportunity  for  a  hearing  on 
the  part  of  the  applicant.    Id. 

3.  Where  the  file  wrapper  and  contents  of 
an  application  on  which  a  patent  was  granted 
make  reference  to  the  fact  that  one  of  the 
claims  of  the  patent  was  a  substitute  for  a 
claim  allowed  in  an  abandoned  application. 
Held,  that  an  interested  party  may  have  ac- 
cess to  said  abandoned  application.  (U.  S., 
ex  rel.  Pollok  v.  Hall,  C.  D.  1889,  582,  48  O. 
G.  126:i,  cited.)  Metropolitan  West  Side  Ele- 
vated   Railroad    Company   et    al.    Siemens,   C. 

D.  1898,  85  O.  G.  290. 

4.  The  case  of  U.  S.  ex  rel.  Bulkley  v.  But- 
terworth  (C.  D.  1897,  685,  81  O.  G.  505), 
should  not  be  interpreted  as  holding  that  no 
discretion  is  vested  in  the  commissioner  of 
patents  to  grant  or  withhold  copies  of  aban- 
doned applications  without  a  certificate  or 
order  from  a  court  that  they  are  necessary 
in  a  pending  suit.     Id. 

5.  As  a  general  rule  it  may  be  safer  to 
require  an  order  from  a  court  of  competent 
jurisdiction  before  furnishing  parties  with 
copies  of  pending  or  abandoned  applications; 
but  when  a  patentee  has  referred  to  a 
prior  application  for  patent,  whether  such 
reference  appears  upon  the  face  of  the 
specification  or  only  among  the  application 
papers,  and  thereafter  brings  suit  upon  his 
patent,  he  cannot  urge  that  the  papers  refer- 
red to  by  him  are  private  papers.     Id. 


38 


ABANDONED  APPLICATION,  I. 


6-  Where  suit  is  brought  against  a  party 
for  the  infringement  of  a  patent  and  the  party 
makes  appHcation  for  a  copy  of  an  abandoned 
application  by  the  patentee  and  the  judge  try- 
ing the  case  certifies  that  the  copy  would  be 
relevant  and  material  evidence,  Held,  that  the 
copy  will  be  furnished.  In  re  Ashtabula  Tele- 
phone Company,  C.  D.  1904,  110  O.  G.  860. 

7.  Where  in  the  record  of  a  patent  refer- 
ence is  made  to  an  abandoned  application  filed 
by  the  patentee  and  a  party  sued  for  infringe- 
ment of  the  patent  makes  a  motion  that  he  be 
furnished  with  copies  of  the  abandoned  appli- 
cation and  the  patentee  does  not  appear  and 
oppose  the  motion.  Held  that  the  copies  will 
be  furnished.  In  re  Standard  Plunger  Eleva- 
tor Company,  C.  D.  1904,  112  O.  G.  1480. 

8.  Where  the  petitioner  for  access  to  al- 
leged abandoned  applications  of  a  patentee 
who  opposes  access  fails  to  serve  his  oppo- 
nent with  arguments  presented  in  support  of 
the  petition,  Held,  that  the  petition  will  be 
denied.  In  re  Fowler,  C.  D.  1904,  113  O.  G. 
549. 

9-  Where  a  petition  is  made  for  copies  of 
applications  alleged  to  have  been  filed  and 
abandoned  by  certain  patentees  which  calls 
attention  to  decisions  and  briefs  in  interfer- 
ences where  these  applications  are  said  to  be 
mentioned.  Held,  that  the  exact  places  in  the 
records  where  references  are  made  by  the 
patentees  to  the  applications  should  be  pointed 
out,  as  the  duty  of  investigation  to  determine 
the  mode  of  introduction  of  the  applications 
is  not  properly  upon  the  opponent  nor  upon 
the  office,  but  upon  the  petitioner.     Id. 

10.  A  party  who  has  been  sued  for  the 
infringement  of  a  patent  will  not  be  furnished 
with  copies  of  abandoned  applications  filed  by 
the  patentee  merely  because  he  thinks  they 
may  assist  him.  Some  connection  between  the 
patent  and  the  application  must  be  shown. 
In  re  Buck,  C.  D.  1904,  li;!  O.  G.  1418. 

11.  Where  a  patent  purports  to  be  a  con- 
tinuation of  an  earlier  application  and  con- 
tains a  reference  to  that  effect,  it  is  to  be 
presumed  that  the  right  of  the  public  to  in- 
spect the  earlier  application  was  affirmatively 
determined  by  the  issue  of  the  patent  with 
such  reference  therein ;  but  where  a  patent 
contains  no  such  reference  and  a  petition  is 
filed  for  access  to  abandoned  applications 
which  the  petitioner  says  are  probably  on  file 
in  this  office.  Held,  that  the  petition  should 
not  be  granted,  if  at  all,  until  the  patentee 
has  had  an  opportunity  to  present  such  rea- 


sons as  he  may  have  to  the  contrary.     In  re 
Lanning,  C.  D.  1906,  124  O.  G.  2902. 

12.  Where  request  is  made  to  inspect  or  to 
be  furnished  with  a  copy  of  an  abandoned 
application  referred  to  in  a  patent  by  a  stran- 
ger to  the  record.  Held,  that  the  practice  re- 
quires that  the  request  be  supported  by  a 
showing  of  reasons  why  access  to  the  aban- 
doned application  is  desired,  together  with 
proof  of  service  upon  the  applicant  of  the 
papers  constituting  the  request  and  showing. 
In  re  Standard  Computing  Scale  Company  v. 
Stimpson,  C.  D.  1900,  125  O.  G.  2047. 

13.  Where  an  application  has  been  aban- 
doned a  long  time,  notice  of  the  petition  to 
inspect  should  be  given  to  the  owner  of  the 
invention,  whether  applicant  or  assignee.  In 
re  Commercial  Mica  Company,  C.  D.  1907, 
129  O.  G.  479. 

14.  A  petition  to  inspect  an  abandoned  ap- 
plication will  be  denied  where  the  reference 
to  the  abandoned  application  in  applicant's 
patent  is  not  of  such  a  nature  as  to  indicate 
that  it  was  relied  upon  for  any  purpose  in 
the  proceeding  eventuating  in  the  patent  or 
to  indicate  a  waiver  by  the  patentee  of  the 
right  of  secrecy  concerning  said  application. 
In  re  The  Bullock  Electric  Manufacturing 
Company,  C.  D.  1907,  129  O.  G.  1611. 

15.  Such  petitions  should  be  accompanied 
by  a  certificate  of  the  court  before  whom  a 
suit  is  pending.     Id. 

16.  Where  an  application  has  been  aban- 
doned a  long  time,  service  of  petition  to  in- 
spect upon  the  attorney  of  record  is  not  suffi- 
cient, but  service  should  be  made  upon  the 
owner  of  the  invention,  whether  applicant  or 
assignee.    Id. 

17.  A  reference  in  a  patent  to  an  application 
is  not  sufficient  to  justify  allowing  copies  of  the 
application  to  be  made  where  the  reference  is 
not  of  such  a  nature  as  to  indicate  that  it 
was  relied  upon  for  any  purpose  in  the  pro- 
ceeding eventuating  in  the  patent.  In  re 
Commercial  Mica  Company,  C.  D.  1907,  129 
O.  G.  479. 

18.  Petition  to  have  such  copies  made  de- 
nied in  the  absence  of  a  certificate  of  the  court 
before  whom  the  suit  is  pending.    Id. 

19.  Where  suit  is  brought  on  a  patent  the 
file-wrapper  of  which  shows  that  all  the  claims 
thereof  were  the  allowed  claims  of  a  prior 
application  belonging  to  the  same  assignee, 
which  were  transferred  to  the  patented  appli- 
cation, the  prior  application  at  the  same  time 
being  formally  abandoned,  and  the  only  dis- 


ADMINISTRATORS  AND  EXECUTORS. 


23 


cussion  of  the  merits  of  the  claims  was  in 
the  prior  application,  Held,  that  the  defendants 
are  entitled  to  inspect  and  obtain  copies  of  the 
prior  application  if  it  can  be  identified  by  the 
office,  although  neither  the  patent  itself  nor 
the  file-wrapper  identifies  it  by  the  name  of 
the  applicant,  the  serial  number,  or  the  date 
of  filing.  In  re  Vacuum  Specialty  Company, 
C.  D.  1909,  142  O.  G.  1114. 

20.  Where  suit  is  brought  on  a  patent  the 
record  of  which  shows  that  one  of  the  claims 
thereof  was  allowed  in  a  prior  application 
belonging  to  the  same  assignee  and  was  trans- 
ferred to  the  application  on  which  the  patent 
was  granted.  Held,  that  the  defendants  are 
entitled  to  inspect  and  obtain  copies  of  said 
prior  application.  In  re  Marvin  Estate  Com- 
pany, C.  D.  1909,  148  O.  G.  571. 

II.  Revival  of. 

1.  The  commissioner  has  no  discretion  in 
reviving  an  abandoned  application  unless  it 
appears  to  him  that  the  abandonment  was 
caused  by  unavoidable  delay,  and  that  means 
by  circumstances  beyond  the  control  of  the 
applicant.  Ex  parte  Beecher,  C.  D.  1902,  101 
O.  G.  1132. 

2.  Where  an  amendment  is  presented  which 
is  refused  admission  because  it  would  necessi- 
tate a  requirement  for  division  and  it  appears 
from  the  record  that  the  applicant  was  acting 
in  good  faith  in  the  effort  to  advance  the  case 
and  that  the  claims  are  not  plainly  for  two 
inventions  and  the  applicant  promptly  cor- 
rects the  error.  Held,  that  the  commissioner 
is  warranted  in  holding  under  the  authority 
vested  in  him  by  law  that  the  case  is  not 
abandoned  through  a  lack  of  proper  prosecu- 
tion. E.x  parte  McGenniss,  C.  D.  1902,  101 
O.  G.  2075. 

3.  Where  an  assignee  asks  to  have  an  aban- 
doned application  revived  as  a  pending  appli- 
cation on  the  ground  that  the  delay  in  taking 
action  was  unavoidable,  but  offers  no  excuse 
for  the  first  nine  months  of  the  delay.  Held, 
that  the  petition  should  be  denied.  Ex  parte 
Miller,  C.  D.  1903,  105  O.  G.  257. 

4.  An  abandoned  application  cannot  be  re- 
vived in  the  absence  of  an  amendment  or  such 
other  action  as  the  condition  of  the  case  re- 
quires. The  delay  in  taking  action  must  have 
been  unavoidable,  and  this  cannot  be  deter- 
mined until  the  action  is  taken.     Id. 

5.  Where  an  applicant  is  notified  that  his 
application  is  prima  facie  abandoned  for  fail- 


ure to  act  within  the  statutory  period  of  one 
year  and  he  delays  presenting  a  petition  for 
revival  for  one  year  and  a  half  thereafter 
without  excuse.  Held,  that  the  petition  will  be 
denied.  Ex  parte  Naef,  C.  D.  1905,  115  O. 
G.  1583. 

6.  The  showing  to  warrant  the  revival  of 
an  abandoned  case  must  include  a  sufficient 
excuse  for  the  delay  after  the  expiration  of 
the  year  allowed  by  law  as  well  as  that  before. 
Id. 

7.  Section  4894,  Revised  Statutes,  does  not 
authorize  the  commissioner  to  set  aside  a 
formal  abandonment  of  the  application  filed 
by  the  applicant  with  the  concurrence  of  his 
assignee.  Ex  parte  Hirth,  C.  D.  1908,  137 
O.  G.  977. 

8.  In  a  petition  to  revive  an  abandoned  ap- 
plication the  bare  statement  of  counsel  as  to 
the  existence  of  facts  which  would  excuse  the 
delay  is  insufficient.  A  verified  showing  has 
been  uniformly  held  by  the  office  as  requisite 
to  the  revival  of  an  abandoned  application, 
except  where  the  records  of  the  office  disclose 
a  reason  for  the  delay.  Ex  parte  De  Forest 
and  Horton,  C.  D.  1909,  141  O.  G.  566. 


ADMINISTEATOES  AND  EXECUTORS... 

1.  Legal  notice  not  having  been  given  to 
representative  of  a  deceased  inventor  and  such 
representative  not  having  waived  notice,  he 
is  not  bound  by  interference  proceedings  or 
by  an  adverse  decision  on  the  question  of 
priority.  Ex  parte  Woodworth,  C.  D.  1898, 
8t  O.  G.  811. 

2.  Where  an  application  was  filed  by  a  party 
as  an  administrator  of  the  estate  of  a  de- 
ceased person,  unaccompanied  by  letters  of 
administration  duly  taken  out  in  the  United 
States,  Held,  that  said  application  has  no 
standing  in  the  patent  office.  (Ex  parte  Ran- 
some,  C.  D.  1870,  143,  cited.)  Ex  parte  Lan- 
gen,  C.  D.  1899,  87  O.  G.  697. 

3.  The  fact  that  such  an  application  had 
been  given  a  serial  number  and  that  oral  in- 
structions had  been  given  to  forward  it  for 
examination  does  not  make  it  a  legal  appli- 
cation or  relieve  the  applicant  or  his  attor- 
ney from  the  responsibility  of  filing  an  appli- 
cation by  an  administrator  duly  appointed  in 
this  country,  so  as  not  to  be  affected  by  the 
statute  which  prohibits  the  grant  of  a  patent 
in  this  country  when  a  foreign  patent  had  been 
obtained    on    an    application    filed   more   than 


24 


ADMINISTRATORS  AND  EXECUTORS. 


seven   months  prior   to  the   filing  of   the   ap- 
plication in  this  country.     Id. 

4.  As  said  appHcation  has  no  standing,  an 
administrator  appointed  in  this  country  after 
the  application  is  tiled  cannot  be  substituted 
for  the  present  applicant  or  be  permitted  to 
sign  the  application  nunc  pro  tunc,  as  the  ap- 
plication would  then  lack  the  oath  of  the 
proper  administration  and  would  not  be  a  com- 
plete application  until  such  oath  was  filed.    Id. 

5.  Where  assignments  executed  by  the  ex- 
ecutor of  pending  applications  are  filed  for 
record,  together  with  a  request  that  the  pat- 
ents issue  to  the  assignee,  and  attached  to 
each  assignment  is  a  certificate  of  the  United 
States  consul  that  the  executor  was  properly 
appointed,  but  no  certified  copy  of  letters 
testamentary  has  been  filed,  Held,  that  the  as- 
of  the  proper  fees,  but  that  the  patents  would 
not  issue  to  the  assignee  in  the  absence  of  a 
certified  copy  of  letters  testamentary  properly 
authenticated,  as  provided  in  section  4896,  Re- 
vised Statutes.    In  re  Pilgrim  Paper  Company, 

C.  D.  1900,  125  O.  G.  993. 

6.  Where  papers  were  filed  signed  by  two 
alleged  executors  of  the  estate  of  the  de- 
ceased applicant,  together  with  copies  of  what 
purport  to  be  commissions  signed  by  the  clerk 
of  the  state  district  court  where  the  applicant 
resided,  empowering  them  to  act  as  executors 
within  the  state,  Held,  not  to  be  sufficient 
proof  of  the  genuineness  of  the  executor's 
commissions  and  that  the  proper  way  to  prove 
the  authority  of  executors  and  administrators 
to  intervene  in  the  prosecution  of  applications 
for  patents  is  by  a  certified  copy  of  letters 
testamentary  or  letters  of  administration 
signed  by  an  afficer  of  the  court  authenticated 
by  the  seal  of  the  court.    Ex  parte  Rogers,  C. 

D.  1906,  125  O.  G.  2766. 

7.  Where  the  alleged  executors  have  filed, 
as  evidence  of  their  authority,  a  certified  copy 
of  the  order  approving  the  will.  Held,  that 
said  order  does  not  specify  the  scope  of  the 
authority  of  the  persons  who  seek  to  inter- 
vene and  that  inasmuch  as  the  appointment 
of  an  executor  may  be  limited  as  to  the  time 
when  the  person  appointed  shall  begin  or 
when  he  shall  cease  to  be  executor,  or  as  to 
where  the  executor  shall  act,  or  as  to  the  sub- 
ject-matter over  which  the  executorial  power 
is  to  be  exercised  it  is  necessary  that  the  scope 
of  the  authority  of  the  executor  be  proved. 
Id. 

8.  Section  4890  of  the  Revised  Statutes 
is  not  interpreted  to  mean  that  the  certificate 


of  a  diplomatic  or  consular  officer  of  the 
United  States  is  necessarily  all  the  proof  re- 
quired as  to  the  authority  of  a  foreign  ex- 
ecutor or  administrator;  but,  on  the  contrary, 
it  is  construed  to  mean  that  such  evidence  is 
essential  in  addition  to  such  other  evidence 
as  may  be  deemed  necessary.  A  certified  copy 
of  the  letters  testamentary  are  required  in 
the  case  of  a  domestic  executor  or  adminis- 
trator in  order  that  the  office  can  determine 
the  powers  conferred  upon  the  executor  or  ad- 
ministrator, and  it  is  not  to  be  supposed  that 
the  proof  should  be  any  less  rigid  in  the  case 
of  a  foreign  executor  or  administrator.  In  re 
Pilgrim  Paper  Company,  C.  D.  1906,  125  O. 
G.  993. 

9.  Where  it  appears  that  the  applicant,  who 
was  a  subject  of  the  Emperor  of  Germany  and 
resided  in  Germany,  is  dead  and  application 
is  made  by  Mrs.  Neidenfiihr,  his  alleged  ad- 
ministratrix, to  prosecute  the  application. 
Held,  that  in  addition  to  a  properly-authen- 
ticated certificate  of  inheritance  there  should 
be  filed  either  a  certificate  of  a  German  court 
of  record  that  Mrs.  Neidenfiihr  is  entitled 
to  administer  the  estate,  such  certificate  being 
properly  proved  by  the  certificate  of  a  consular 
or  diplomatic  officer,  or  else  a  formal  state- 
ment to  that  effect  from  the  German  embassy 
or  the  German  consulate.  Ex  parte  Nieden- 
fiihr,  C.  D.  1907,  130  O.  G.  981. 

10.  The  administratrix  of  a  deceased  appli- 
cant held,  to  be  entitled  to  control  the  prose- 
cution of  the  application  to  the  exclusion  of 
the  assignee  where  the  assignment  does  not 
contain  a  request  that  the  patent  issue  to  the 
assignee,  notwithstanding  the  fact  that  the 
petition  accompanying  the  application  contains 
such  a  request.  In  re  Wetmore  and  Jennner, 
C.  D.  1910,  155  O.  G.  799. 

11.  Where  a  label  is  sought  to  be  registered 
by  the  executor  or  administrator  of  the  es- 
tate of  the  owner  of  the  label,  proof  of  the 
authority  of  such  executor  or  administrator 
should  be  filed  for  record  in  the  office,  as  re- 
quired by  Order  No.  1838,  with  reference  to 
patents.  Ex  parte  Yankauer,  Yankauer  & 
Yankauer,  C.  D.  1911,  170  O.  G.  927. 


AFFIDAVITS. 

I.  In  General. 

II.  To  Overcome  References. 
III.  To  Obtain  Interference. 


AFFIDAVITS,  I,  II. 


25 


I.  In  General. 

1.  Where  the  claims  in  an  application  have 
not  been  rejected,  Held,  that  affidavits  upon 
the  patentability  of  the  device  are  not  in 
order.  Ex  parte  Robinson,  C.  D.  1905,  115 
O.   G.   1584. 

2.  Where  affidavits  are  filed  comparing  the 
applicant's  device  with  other  devices  not  re- 
ferred to  by  the  examiner  or  otherwise  made 
pertinent  to  the  case.  Held,  that  such  affidavits 
are  inconsequential  to  the  patentability  of  the 
applicant's  device  and  will  be  refused  admis- 
sion to  the  case.    Id. 

3.  Held,  that  affidavits  going  to  show  the 
practical  success  of  the  applicant's  device 
where  the  truth  thereof  is  substantially  con- 
ceded are  entitled  to  material  weight  in  view 
of  the  fact  that  the  grant  of  a  patent  confers 
no  absolute  right  of  property  and  in  view  of 
the  customary  rule  of  resolving  ordinary 
doubts  in  favor  of  applicants.  *In  re  Thom- 
son, C.  D.  1906,  120  O.  G.  2756. 

4.  Where  affidavits  are  filed  containing  gen- 
eral expressions  of  opinion  in  respect  of  the 
patentability  of  claims,  Held,  that  they  are  en- 
titled to  no  weight.  *In  re  Garrett,  C.  D. 
1906,  123  O.  G.  1047. 

II.  To  Overcome  References. 

6.  Upon  the  requirement  of  an  examiner 
that  an  applicant  present,  in  addition  to  his 
own  affidavits,  affidavits  of  third  parties,  Held, 
that  the  question  raised  is  reviewable  by  peti- 
tion to  the  commissioner.  Ex  parte  Johnson, 
C.  D.  1899,  89  O.  G.  1341. 

6.  Held,  further,  that  such  requirement  is 
unauthorized,  as  Rule  75  does  not  provide  in 
terms  for  corroborative  affidavits.  If,  how- 
ever, the  examiner  believes  that  an  applicant's 
affidavit  is  fraudulent  and  so  charges,  the  ap- 
plicant should  be  given  leave  to  tile  corrobora- 
tive affidavits.  (Ex  parte  Hurlbut,  C.  D.  1890, 
135,  52  O.  G.  1062,  cited.)     Id. 

T-  When  objections  to  the  sufficiency  of  an 
affidavit  to  overcome  a  rejection  based  upon 
a  prior  patent  are  raised  by  the  examiner,  the 
question  presented  goes  to  the  merits,  and  an 
appeal  lies  in  the  first  instance  to  the  exam- 
iners-in-chief. (Ex  parte  Boyer,  C.  D.  1889, 
249,  49  O.  G.  1985,  cited.)     Id. 

8.  From  an  e.xaminer's  requirement  that  the 
original  model,  structure,  or  drawing,  referred 
to  in  an  affidavit  filed  under  the  provisions  of 
Rule  75,  be  produced,  petition  may  be  taken 
to  the  commissioner.     Id. 


9.  An  affidavit  to  overcome  a  prior  printed 
publication  or  foreign  patent  disclosing  the 
invention  or  a  United  States  patent  disclosing, 
but  not  claiming,  the  invention  must  show  in- 
vention in  this  country  before  the  date  of 
the  reference.  Acts  performed  abroad  are 
not  pertinent.  Ex  parte  Grosselin,  C.  D.  1901, 
97  O.  G.  2977. 

10.  Where  an  applicant  is  rejected  upon  a 
prior  German  patent  disclosing  the  invention 
and  attempts  to  overcome  it  as  a  reference  by 
affidavits  tending  to  show  that  he  made  the 
invention  in  France  before  its  date.  Held,  that 
the  affidavits  are  incompetent  for  the  purpose, 
since  they  do  not  tend  to  show  that  a  knowl- 
edge of  the  invention  was  introduced  into  this 
country.    Id. 

II-  Held,  that  Rule  75,  which  requires  a 
showing  of  invention  in  this  country,  is  not 
in  conflict  with  section  4886  of  the  Revised 
Statutes  and  is  in  accord  with  section  4923, 
which  provides  that  knowledge  or  use  abroad 
is  not  to  be  considered.    Id. 

12.  Where  the  affidavit  of  the  inventor  under 
Rule  75  cannot  be  procured,  the  affidavits  of 
the  assignees  and  other  parties  may  be  re- 
ceived as  competent  evidence.  Ex  parte  Fos- 
ter, C.  D.  1903,  105  O.  G.  261. 

13.  Rule  75  says  that  the  affidavit  of  the 
inventor  alone  is  sufficient  to  overcome  a  ref- 
erence cited;  but  it  does  not  say  that  the 
reference  cannot  be  overcome  in  any  other 
way.     Id. 

14.  Where  no  affidavit  by  the  inventor  is 
filed,  the  question  what  amount  of  proof  will 
be  regarded  as  sufficient  to  overcome  a  refer- 
ence cited  is  a  matter  to  be  determined  by  the 
tribunal  passing  upon  the  case.     Id. 

15.  The  essential  thing  to  be  shown  under 
Rule  75  is  priority  of  invention,  and  this  may 
be  done  by  any  satisfactory  evidence  of  the 
fact.     Id. 

16-  A  petition  from  the  examiner's  action 
holding  that  applicant's  prior  patent  cannot 
be  overcome  as  a  reference  by  an  affidavit 
under  Rule  75  dismissed.  The  matter  is  ap- 
pealable to  the  examiners-in-chief.  Ex  parte 
Marsteller,  C.  D.  1905,  118  O.  G.  2250. 

17.  Where  testimony  in  an  interference  pro- 
ceeding is  relied  upon  by  an  applicant  in 
place  of  affidavits  under  Rule  75  to  overcome 
the  effect  of  a  reference,  Held,  that  such  tes- 
timony should  be  considered  by  the  primary 
examiner  and  that  the  decisions  of  the  inter- 
ference tribunals  need  be  followed  only  when 
the  decisions  indicate  a  finding  that  the  appli- 


so 


AFFIDAVITS,  III-AMENDMENT,  I. 


cant  is  not  entitled  to  any  earlier  date  of  in- 
vention than  those  found.  Ex  parte  Roman, 
C.  D.   1!H).-),  117  O.  G.  2088. 

18.  Held,  that  in  view  of  the  great  amount 
of  work  before  the  examiner  an  appHcant 
should  not  expect  the  examiner  to  consider 
the  entire  interference  record  to  see  if  there 
is  something  therein  to  establish  the  date 
desired,  but  it  is  the  duty  of  the  applicant 
signments  would  be  recorded  upon  payment 
to  specifically  point  out  the  portion  relied  upon 
in  place  of  an  affidavit  under  Rule  7.").     Id. 

19.  Where  claims  are  rejected  on  the  ground 
of  non-invention,  affidavits  offered  in  response 
to  such  rejection  concerning  the  merits  and 
efficiency  of  that  for  which  a  patent  is  sought 
will  be  admitted.  Ex  parte  Robinson,  C.  D. 
190.-,,  11.-,  O.  G.  1384. 

20.  After  a  claim  has  been  finally  rejected 
on  several  references  an  antedating  affidavit 
under  Rule  75  fending  to  overcome  one  of  the 
references  cannot  be  admitted.  Ex  parte  Berg, 
C.   D.   1906,  120  O.  G.  903. 

21.  Where  affidavits  are  offered  as  evidence 
that  the  rejection  of  the  claims  by  the  pri- 
mary examiner  was  erroneous,  they  should 
ordinarily  be  submitted  to  the  primary  ex- 
aminer before  the  prosecution  of  the  case 
before  him  has  been  closed  by  final  rejection 
or  appeal ;  otherwise  they  should  be  accom- 
panied by  a  verified  showing  of  reasons  for 
the  delay,  similar  to  that  required  under  Rule 
68.  Ex  parte  Peirce,  C.  D.  190G,  121  O.  G. 
1347. 

22.  In  order  to  overcome  by  affidavit,  under 
Rule  75,  a  patent  which  shows  but  does  not 
claim  the  invention  covered  by  the  applicant, 
the  applicant  must  state,  on  oath,  facts  show- 
ing either  that  a  reduction  to  practice  had 
been  made  before  the  filing  of  the  application 
on  which  the  patent  was  granted  or  that  the 
invention  had  been  conceived  before  that  time 
and  by  due  diligence  connected  with  a  subse- 
quent reduction  to  practice.  Ex  parte  Gasser, 
C.  D.  1880,  94,  17  O.  G.  507;  Ex  parte  Saun- 
ders, C.  D.  1883,  23,  23  O.  G.  1324;  Ex  parte 
Donovan,  C.  D.  1890,  109,  53  O.  G.  309;  Ex 
parte  Hunter,  C.  D.  1889,  218,  49  O.  G.  733. 
Ex  parte  McElroy,  C.  D.  1909,  140  O.  G. 
1307. 

23.  The  filing  of  an  incomplete  application 
does  not  constitute  a  "completion  of  the  in- 
vention" within  the  meaning  of  Rule  75,  as  no 
patent  can  be  granted  on  an  application  until 
it  is  completed.    Id. 


24.  Where  claims  have  been  finally  rejected 
on  references,  antedating  affidavits  under 
Rule  75  cannot  be  admitted  in  the  absence  of 
a  good  and  sufficient  showing,  duly  verified, 
why  they  were  not  earlier  presented.  Ex 
parte  Romunder,  C.  D.  1910,  157  O.  G.  209. 

III.  To  Obtain  Interference. 

25.  Where  some  of  the  claims  of  an  appli- 
tion  interfere  with  claims  in  a  patent  granted 
on  a  copending  application,  Held,  that  an  in- 
terference should  be  declared  without  first 
requiring  the  applicant  to  overcome  that  patent 
as  a  reference  for  the  claims  which  do  not 
interfere  by  an  affidavit  under  Rule  75.  Ex 
parte  Sorlle,  C.  D.  1900,  90  O.  G.  2133. 

26.  Where  an  interference  exists  between 
claims  in  an  application  and  a  patent,  the 
question  as  to  the  patentability  of  the  appli- 
cant's non-interfering  claims  over  that  patent 
is  not  a  preliminary  question,  but  is  one  which 
may  be  determined  by  the  interference  pro- 
ceedings, since  the  evidence  may  show  which 
was  the  prior  inventor  of  that  matter  and 
take  the  place  of  the  affidavit  under  Rule  75. 
Id. 

27.  The  only  reason  for  accepting  in  any 
case  an  ex  parte  affidavit  as  sufficient  to  over- 
come a  patent  cited  as  a  reference  is  that  an 
interference  cannot  be  declared  between  the 
parties  by  reason  of  the  fact  that  there  are 
no  interfering  claims.  If  the  matter  can  be 
settled  in  inter  partes  proceedings,  that  is 
obviously  the  better  way  of  determining  it. 
Id. 


AMENDMENT. 

(See  Drawincs;  Amendment.) 

I.  In  General. 
II.  New  Matter. 

III.  Election,    Division,    Shifting   Ground, 

Etc. 

IV.  After  Final  Rejection. 

(a)  7)1  General. 

(b)  Permitted. 
V.  After  Appeal. 

VI.  After  Allowance. 

VII.  Upon  Recommendation  of  Examiners- 
in-Chief  or  Commissioner. 

I.  In  General. 

1-  When   the  letter  accompanying  a  substi- 
tute specification  specifically  requested  that  i^ 


AMENDMENT,  II. 


87 


be  substituted  for  one  forming  part  of  an  in- 
complete application,  Held,  that  there  was  no 
mistake  by  the  office  in  entering  it  as  an 
amendment  and  not  as  part  of  a  new  applica- 
tion. Ex  parte  Arakelion,  C.  D.  1898,  85  O.  G. 
1077. 

2.  It  is  a  well-settled  and  long-established 
practice  of  the  patent  office  to  allow  amend- 
ments to  applications  to  be  made  under  proper 
circumstances  to  supply  omissions  and  defects 
in  the  original  specifications  and  claims  as 
filed  which  have  occurred  by  mistake,  over- 
sight, or  inadvertence,  or  want  of  the  requi- 
site skill  in  the  preparation  and  presentation 
of  cases  to  the  office,  and  the  making  of  such 
amendments  should  not  be  allowed  to  operate 
to  the  prejudice  of  the  claims  of  applicants, 
if  made  in  due  and  reasonable  time  and  in 
good  faith.  *llulett  v.  Long,  C.  D.  18U9,  89 
O.  G.  1141. 

3.  When  an  amendment  is  presented  con- 
taining matters  which  in  the  opinion  of  the 
examiner  are  both  admissible  and  inadmis- 
sible, Held,  that  inasmuch  as  the  entire  amend- 
ment cannot  be  entered  no  part  of  it  should 
be,  and  the  action  of  the  examiner  refusing 
to  enter  the  entire  amendment  was  correct. 
(Ex  parte  Stern,  59  MS.  Dec,  254.)  Ex  parte 
Pugh,  C.  D.  1901,  96  O.  G.  842. 

4.  Where  an  amendment  is  suggested  by  the 
examiner  to  be  made  to  a  claim  on  the  ground 
that  the  claim  would  be  clearer  and  it  appears 
that  the  claim  if  amended  would  be  clearer 
in  the  sense  that  it  would  be  more  specific, 
Held,  that  inasmuch  as  the  question  whether 
or  not  the  amendment  should  be  made  can 
only  be  determined  by  a  consideration  of  the 
state  of  the  art  it  is  therefore  a  question  in- 
volving the  merits  and  should  be  determined 
in  the  first  instance  by  the  e.xaminers-in-chief. 
Ex  parte  Morse,  C.  D.  1901,  97  O.  G.  2982. 

5.  An  applicant  has  a  right  to  add  claims  by 
amendment  to  cover  matter  which  is  disclosed 
in  his  drawings,  but  not  originally  claimed, 
where  the  original  specifications  refer  to  such 
matter  as  an  essential  part  of  the  construc- 
tion sought  to  be  patented.  *Phillips  v.  Sen- 
senich,  C.  D.  190S,  i:!4  O.  G.  1806. 

6.  A  substitute  specification  is  objectionable 
and  in  general  should  not  be  filed  unless  re- 
quired by  the  office  in  view  of  the  number  or 
nature  of  the  amendments  to  the  original 
specification.  Ex  parte  Orewiler,  C.  D.  1911, 
170  O.  G.  481. 


II.  New  Matter. 

7.  Where  an  amendment  was  objected  to 
by  the  examiner  on  the  ground  that  it  con- 
tained new  matter  and  the  claims  which  de- 
pended on  the  disclosure  contained  in  the 
amendment  for  their  support  were  rejected 
and  no  reconsideration  of  the  examiner's  ac- 
tion was  asked  for  by  the  applicant,  but  peti- 
tion was  taken  to  the  commissioner.  Held, 
that  the  question  raised  by  the  petition  is  one 
affecting  the  merits,  and  applicant's  course 
under  the  rule  is  to  ask  reconsideration  of 
the  examiner's  action,  and  if  upon  reconsid- 
eration the  examiner  adheres  to  the  rejection 
appeal  lies  to  the  examiners-in-chief,  as  the 
question  is  one  which  may  not  be  brought  to 
the  commissioner  by  petition.  Ex  parte  Cou- 
sens,  C.  D.  1898,  84  O.  G.  1433. 

8.  When  an  incomplete  application  is  on  file, 
including  petition,  specification,  and  oath,  new 
matter  cannot  properly  be  inserted  by  amend- 
ment, but  must  be  presented  as  a  new  applica- 
tion supported  by  a  new  oath.  Ex  parte 
Arakelion,  C.  D.  1898,  85  O.  G.  1077. 

9.  A  misapprehension  by  the  applicant  as  to 
the  office  rules  cannot  justify  a  disregard  of 
the  rule  against  the  allowance,  in  a  case  of 
matter  involving  a  departure  from  the  orig- 
inal disclosure.     Id. 

10.  So  long  as  an  application  is  pending  be- 
fore this  office  the  applicant  may  be  permitted 
to  amend  in  the  direction  of  broadening  the 
statement  of  his  invention,  provided  he  does 
not  change  the  invention  on  which  that  state- 
ment is  based,  and  if  his  specification  and 
claims  as  filed  do  not  adequately  express  the 
full  breadth  of  his  invention  he  may  amend  in 
such  way  as  to  secure  full  protection.  Ex 
parte  Mollis,  C.  D.  1899,  86  O.  G.  489. 

11.  The  question  whether  or  not  matter 
sought  to  be  introduced  into  a  pending  appli- 
cation is  to  be  refused  as  new  matter  is  quite 
a  different  question  from  the  question  whether 
or  not  such  matter  may  be  introduced  in  a 
reissue  application.    Id. 

12.  The  insertion  by  amendment  in  an  orig- 
inal application  of  the  term  "preferably"  in 
describing  the  structure  of  certain  features 
should  be  permitted,  and  cannot  properly  be 
objected  to  as  involving  a  departure  from  the 
original  disclosure.     Id. 

13.  Where  the  original  application  showed 
and  described  a  cylinder  as  inclined,  and  stated 
that  the  inclination  may  be  changed  to  increase 
or  diminish  the  feed,  Held,  that  this  furnishes 


28 


AMENDMENT,  II. 


no  basis  for  an  amendment  stating  that  it  is 
important  that  the  base  of  tlie  cylinder  should 
be  level.  Ex  parte  Welch,  C.  D.  1900,  93  O. 
G.  2105. 

14.  Where  matter  held  to  constitute  a  depar- 
ture from  the  original  disclosure  is  involved 
in  the  merits  of  the  claims,  Held,  that  the 
question  will  not  be  reviewed  on  petition,  but 
is  appealable  to  the  examiners-in-chief.     Id. 

15.  Where  certain  features  are  merely  addi- 
tional and  unnecessary  elements  which  may 
or  may  not  be  used,  and  where  their  omission 
does  not  change  in  any  way  the  function  and 
operation  of  the  other  parts  of  the  device, 
Jleld,  that  their  omission  from  the  application 
does  not  involve  new  matter.  Ex  parte  Smith 
and  Hoyland,  C.  D.  1900,  93  O.  G.  939. 

16.  Where  a  party  cannot  be  permitted  to 
omit  from  his  case  a  certain  element  disclosed, 
since  its  omission  would  change  the  function 
and  operation  of  the  other  parts  and  thereby 
produce  a  new^  invention  involving  a  depar- 
ture from  the  original  disclosure.  Held,  that 
a  claim  omitting  that  element  cannot  be  en- 
tered and  allowed  after  final  decision  on  the 
merits  where  a  claim  including  it  was  held 
unpatentable.  Ex  parte  Hummel,  C.  D.  1901, 
94  O.  G.  583. 

17.  Where  the  examiner  is  of  the  opinion 
that  a  claim  presented  by  amendment  involves 
a  departure  from  the  original  disclosure,  he 
should  enter  the  amendment  and  reject  the 
claim.  Ex  parte  Keith,  C.  D.  1901,  97  O.  G. 
551. 

18.  Where  a  device  though  clearly  shown 
and  described  is  said  by  applicant  to  be  in- 
operative and  in  order  to  make  the  device  op- 
erative a  radical  change  in  the  construction 
shown  and  in  the  description  thereof  is  re- 
quired. Held,  that  under  the  rules  of  this  of- 
fice such  a  change  cannot  be  made  by  amend- 
ment. (Citing  ex  parte  Delbey,  ante,  103,  9G 
O.  G.  1240.)  Ex  parte  Clay,  C.  D.  1901,  97 
O.  G.  2980. 

19.  Where  in  his  original  application  for 
a  patent  the  inventor  described  one  purpose 
for  his  invention  and  subsequently  by  amend- 
ment stated  an  additional  purpose,  Held,  that 
the  amendment  was  proper  and  that  the  patent 
is  not  confined  to  use  for  the  purpose  first 
stated,  d  Singer  Manufacturing  Company  v. 
Cramer,  C.  D.  1901,  97  O.  G.  552. 

20.  An  inventor  is  not  circumscribed  by  the 
words  which  he  may  first  use  to  describe  the 
advantages  of  his  invention,  but  he  may  as- 


sert and  maintain  all  the  advantages  which  his 
device  possesses,    d  Id. 

21.  Held,  that  the  vague  and  general  state- 
ment that  a  coil-spring  could  be  substituted 
for  the  spring  shown  without  specifying  the 
arrangement  does  not  furnish  a  basis  for 
claiming  a  particular  arrangement  which  can 
be  made  by  the  use  of  coil-springs  when  it  ap- 
pears that  other  arrangements  could  be  made. 
Brill  and  Brill  v.  Hunter.  C.  D.  1901,  96  O. 
G.  641. 

22.  Where  in  the  answer  to  a  petition 
brought  on  another  point  the  examiner  calls 
attention  to  a  certain  amendment  made  to  the 
specification  and  states  that  if  retained  in  the 
case  he  will  be  compelled  to  reject  the  claim 
which  now  stands  allowed,  as  in  his  opinion 
the  alleged  new  matter  affects  the  claim.  Held, 
that  as  this  question  relates  to  the  merits  of 
the  case  and  is  therefore  appealable  in  the  first 
instance  to  the  examiners-in-chief  no  opinion 
in  regard  to  it  is  expressed.  Ex  parte  Henry, 
C.  D.  1902,  99  O.  G.  1170. 

23.  Where  an  application  as  filed  discloses 
several  specific  forms  of  the  same  generic 
invention.  Held,  that  an  amendment  cannot 
properly  be  made  disclosing  another  specific 
form  although  it  embodies  the  generic  in- 
vention. Ex  parte  Hoegh,  C.  D.  1902,  100  O. 
G.  453. 

24.  The  requirement  of  the  statute  that  an 
applicant  disclose  the  best  mode  of  applying 
his  invention  does  not  warrant  an  amendment 
to  an  application  disclosing  a  different  form 
of  the  invention  from  that  contained  in  the 
application  as  originally  filed.     Id. 

25.  Where  the  examiner  is  of  the  opinion 
that  certain  descriptive  matter  inserted  by 
amendment  and  included  in  a  claim  is  not 
warranted  by  the  original  disclosure.  Held, 
that  he  should  reject  the  claim.  Ex  parte 
Howlett,  C.  D.  1902,  100  O.  G.  2775. 

26.  Where  two  parts  were  originally  shown 
and  described  as  made  separately  and  fasten- 
ed together  detachably,  but  so  as  to  have  no 
relative  movement  in  operation,  Held,  that  an 
amendment  stating  that  they  are  "practically 
integral"  is  inaccurate  and  involves  new  mat- 
ter. Ex  parte  Kieflfer,  C.  D.  1902,  101  O.  G. 
449. 

27.  Where  an  element  performs  several 
functions  in  the  machine.  Held,  that  an 
amendment  stating  that  its  sole  function  is 
to  form  a  bearing  is  inaccurate  and  involves 
new  matter.    Id. 


AMENDMENT,  11. 


29 


28.  Where  the  parts  as  described  will  not 
operate  as  stated  and  it  appears  from  the 
whole  case  that  through  a  clerical  error  the 
parts  were  misnamed,  Held,  that  an  amend- 
ment correcting  the  error  does  not  involve 
new  matter  and  that  an  additional  view  may 
be  added  to  the  drawing  showing  the  con- 
struction more  clearly.  E.x  parte  Larson,  C. 
D.  1902,  101  O.  G.  2.")6S. 

29.  When  an  amendment  is  presented  con- 
taining a  new  description  and  claims  or  de- 
scriptive matter  affecting  the  claims  which  is 
regarded  as  a  departure  from  the  invention 
originally  disclosed.  Held,  that  the  amend- 
ment should  be  entered  in  the  application  and 
the  claims  rejected  on  the  ground  of  new 
matter.  (Ex  parte  Harvey,  C.  D.  1892,  47, 
,58  O.  G.  1257.)  Ex  parte  Furness,  C.  D.  1903, 
104  O.  G.  16.55. 

30.  Matter  cannot  be  read  into  a  case  or 
inserted  by  amendment  merely  because  it  was 
invented  before  the  application  was  filed  and 
was  intended  to  be  included.  Dow  v.  Con- 
verse, C.  D.  1903,  106  O.  G.  2291. 

31.  Where  an  applicant  presents  an  amend- 
ment including  new  matter  and  the  claims  are 
rejected  for  that  reason  and  he  seeks  to  over- 
come the  rejection  by  a  request  that  the  filing 
date  of  the  application  be  changed  to  the  date 
of  the  amendment.  Held,  that  his  request  will 
be  denied.  Ex  parte  Kinney,  C.  D.  1904,  110 
O.  G.  223.5. 

32.  Where  the  claims  differ  from  the  orig- 
inal disclosure  in  the  application  in  the  same 
respects  that  they  differ  from  the  disclosure 
in  a  prior  patent  cited  as  a  reference,  Held, 
that  the  differences  either  constitute  new  mat- 
ter or  are  necessary  inferences  from  the  first 
disclosure  and  that  the  claims  are  not  patent- 
able. Ex  parte  Carpenter,  C.  D.  1904,  110  O. 
G.  2233. 

33.  Where  the  applicant  shows  a  ball-re- 
tainer having  a  ring-shaped  base  provided 
with  vertical  standards  on  both  edges  and  to 
secure  an  interference  with  a  patent  he  copies 
a  claim  thereof  covering  standards  "springing 
from  one  edge  thereof  only,"  Held,  that  the 
claim  includes  new  matter  and  cannot  be  al- 
lowed. Ex  parte  Dilg,  C.  D.  1904,  112  O.  G. 
933. 

34.  Where  an  application  upon  a  printing 
press  disclosed  several  sets  of  printing 
mechanism,  two  folders,  means  for  deliv- 
ering the  webs  from  certain  mechanisms  to 
one  folder  and  from  other  mechanisms  to  the 
other  folder,  and  means  for  delivering  all  of 


the  webs  to  one  folder  when  desired,  but  did 
not  originally  disclose  means  by  which  all  of 
the  webs  could  be  sent  to  the  other  folder  or 
state  that  such  an  operation  was  contemplated, 
Held,  that  amendments  stating  that  all  the 
webs  may  be  sent  to  either  folder  at  will  and 
disclosing  means  to  accomplish  this  result 
constitute  new  matter,  and  that  the  application 
cannot  be  allowed  with  such  matter  in  it  under 
well-established  practice.  Ex  parte  Scott,  C. 
D.  1905,  114  O.  G.  260. 

35.  Where  an  application  upon  a  printing 
press  when  filed  failed  to  disclose  means  to 
silence  a  folder  while  its  corresponding  sets 
of  printing  mechanism  are  in  operation.  Held, 
that  the  reference  to  such  means  in  the 
amended  specification  and  the  illustration 
thereof  constitute  new  matter.    Id. 

36.  Where  the  application  as  filed  disclosed 
one  folder  and  one  powershaft  for  two  sets 
of  printing  mechanism.  Held  that  amendments 
disclosing  separate  folders  and  power  shafts 
for  each  printing  mechanism  constitute  new 
matter.     Id. 

37.  Held,  that  ex  parte  Hollis  (C.  D.  1899, 
10,  86  O.  G.  489)  does  not  apply  to  a  case 
where  it  is  sought  by  amendment  to  intro- 
duce additional  structure  into  an  application, 
as  the  amendment  which  was  found  not  to 
be  new  matter  in  Ex  parte  Hollis  merely 
changed  the  words  used  in  describing  the 
structure  originally  disclosed.     Id. 

38.  The  applicant's  contention  that  he  has 
the  right  to  amend  the  original  disclosure  by 
the  addition  thereto  of  specific  structure  if 
the  additional  structure  is  not  novel  and  falls 
within  the  scope  of  general  statements  in  the 
original  specification  is  not  supported  by  au- 
thority, and  the  fallacy  thereof  is  very  ap- 
parent when  it  is  considered  that  the  patent- 
ability of  combination  claims  drawn  to  include 
the  added  parts  would  be  independent  of  the 
novelty  of  these  parts.    Id. 

39.  Where  the  amended  application  presents 
new  matter,  the  exact  meaning  of  the  terms 
of  the  claims  to  be  adopted  in  determining 
whether  the  claims  involve  new  matter  must 
be  derived  from  the  description  and  drawings 
in  their  amended  form.     Id. 

40.  Where  claims  contained  matter  not  orig- 
inally disclosed  which  the  applicant  contended 
was  not  a  departure  from  the  original  inven- 
tion, but  a  mere  obvious  extension  thereof  and 
duplication  of  parts  originally  shown.  Held, 
that  if  this  contention  were  sound  it  would 
follow  that  the  claims  involved  mere  aggrega- 


30 


AMENDMENT,  II. 


tion  and  that  in  any  event  they  were  not  al- 
lowable in  that  application.     Id. 

41.  Where  the  examiner  objects  to  claims 
presented  on  amendment  on  the  ground  that 
they  include  new  matter  and  do  not  cover 
proper  processes,  Held,  that  he  should  enter 
the  claims  and  reject  them.  Ex  parte  Smyth, 
C.  D.  190.-.,  114  O.  G.  762. 

42.  New  matter  cannot  be  inserted  in  a 
case  by  amendment  simply  because  the  inven- 
tion originally  shown  is  inoperative  and  the 
amendment  will  make  it  operative.  (Ex  parte 
Snyder,  C.  D.  1882,  22,  22  O.  G.  1975,  con- 
strued.) Ex  parte  Willitts,  C.  D.  1903,  115 
O.  G.  1064. 

43.  The  patent  cannot  include  new  matter, 
but  must  be  limited  to  the  disclosure  in  the 
original  application.  Other  improvements 
cannot  be  included,  whether  they  are  intended 
to  make  the  device  operative  or  merely  to 
make  it  perform  its  functions  better.     Id. 

44.  Mere  clerical  or  draftsman's  errors  may 
be  corrected  where  the  errors  are  clear  from 
the  application  itself ;  but  changes  cannot  be 
made  in  the  application  based  upon  allega- 
tions of  fact  not  shown  by  the  record.     Id. 

45.  An  applicant  in  his  endeavor  to  protect 
his  invention  may  amend  the  specification  and 
claims  so  long  as  he  keeps  within  the  require- 
ments of  the  statutes  and  the  rules  of  the 
patent  office ;  but  he  cannot  be  permitted  at 
any  time  to  introduce  new  matter  into  his 
application  and  obtain  therefor  a  date  as  of 
the  date  of  the  original  application.  *In  re 
Dilg,  C.  D.  190.5,  115  O.  G.  1067. 

46.  Held,  that  the  commissioner  was  right 
in  rejecting  the  appellant's  claims  to  a  ball- 
retaining  ring,  because  they  do  not  correctly 
describe  his  invention,  but  include  new  matter 
borrowed  from  a  patent  granted  to  another 
party.     *Id. 

47.  Where  the  appellant  originally  disclosed 
standards  springing  from  both  edges  of  the 
annular  base  and  according  to  the  original  dis- 
closure both  were  necessary.  Held,  that  an 
amendment  claiming  a  base  having  standards 
springing  from  one  edge  only  involves  new 
matter.     *Id. 

48.  Where  the  original  case  disclosed  the 
top  pieces  of  the  standards  with  straight  sides, 
Held,  that  an  amendment  stating  that  those 
top  pieces  are  sector-shaped  or  flaring  involves 
new  matter.     *Id. 

49.  Where  a  claim  inserted  by  amendment 
includes  matter  not  originally  disclosed.  Held, 


that  if  the  change  from  the  original  is  an  ob- 
vious one  which  would  occur  to  anyone  it  is 
not  patentable,  and  if  it  is  not  obvious  it  in- 
volves new  matter.  In  re  Scott,  C.  D.  1905, 
117  O.  G.  278. 

50.  Where  the  original  specification  of  an 
application  relating  to  combined  type-writing 
and  adding  machines  did  not  describe  the  add- 
ing machine,  but  stated  that  the  invention  was 
illustrated  "in  connection  with  an  adding  ma- 
chine of  the  class  known  as  'registering  ac- 
countants,' "  and  only  the  case  and  a  few 
minor  elements  thereof  were  shown  in  the 
drawings.  Held  that  an  amendment  of  the  ap- 
plication reciting  a  patent  disclosing  the  con- 
struction referred  to  by  the  words  "register- 
ing accountants"  did  not  constitute  a  depar- 
ture from  the  original  disclosure  in  view  of 
evidence  showing  that  such  term  referred  to 
a  construction  well  known  in  the  market  em- 
bodying the  construction  of  the  patent  and 
that  such  construction  was  the  only  one  on 
the  market  which  had  the  distinctive  appear- 
ance illustrated  in  the  original  drawing.  Held, 
further,  that  such  party  had  a  right  to  make 
claims  to  a  combination  including  specific  ele- 
ments of  such  adding  machine.  Hopkins  v. 
Newman,  C.  D.  1907,  131  O.  G.  1161. 

51.  A  claim  for  a  latch  mounted  upon  a 
mold-blade  section  of  a  type  mold.  Held,  to 
cover  matter  not  within  the  original  disclosure, 
the  words  "mounted  upon"  not  being  properly 
descriptive  of  a  part  which  merely  rides  in 
or  over  another  in  a  slot  for  the  purpose.  *In 
re  Duncan,  Prichard,  and  Macauley,  C.  D. 
1907,  126  O.  G.  2.592. 

52.  The  statement  in  the  original  specifica- 
tion that  "I  am  aware  of  several  modified 
forms  of  my  invention,  but  deem  it  unneces- 
sary to  illustrate  and  describe  the  same  in 
detail"  does  not  warrant  the  insertion  by 
amendment  of  descriptions  and  illustrations 
of  species  different  from  that  originally  dis- 
closed. Ex  parte  Chaffee,  C.  D.  1908,  137  O. 
G.  1941. 

53.  Where  an  application  as  originally  filed 
did  not  differentiate  from  the  prior  art  either 
in  construction  .or  theory  of  operation  and  an 
amendment  thereto  was  filed,  without  verifica- 
tion by  the  inventor,  introducing  a  new  theory 
of  operation  and  containing  process  claims 
covering  such  theory,  such  claims  are  in- 
valid as  covering  new  matter.  **Steward  et 
al.  V.  American  Lava  Company  et  al. ;  Kirch- 
berger  et  al.  v.  American  Lava  Company  et 
al.,  C.  D.  1909,  149  O.  G.  602. 


AMENDMENT,  III. 


31 


54.  Where  an  original  claim  in  an  applica- 
tion is  not  indefinite,  but  is  objected  to  by 
the  examiner  on  the  ground  that  it  suggests 
a  variation  not  disclosed  in  the  original  spec- 
ification and  drawings.  Held,  that  either  the 
objection  is  unfounded  or  the  claim  is  suffi- 
cient basis  for  an  amendment  to  the  showing 
to  make  it  correspond  with  the  modification 
suggested  in  the  claim.  Ex  parte  Gugler,  C. 
D.  1910,  160  O.  G.  775. 

55.  Where  a  certain  change  in  the  specifica- 
tion held  to  constitute  new  matter  is  involved 
in  a  requirement  for  division,  such  question 
will  not  be  reviewed  on  petition,  but  is  appeal- 
able to  the  examiners-in-chief.  Ex  parte 
Fadem  and  Herman,  C.  D.  1910,  155  O.  G. 
553. 

56.  A  claim  for  a  composition  comprising 
gelatin,  glycerin,  and  bone-meal.  Held,  prop- 
erly refused  on  the  ground  that  it  was  not  dis- 
closed in  the  application  as  filed,  which  de- 
scribed the  composition  as  consisting  of  gela- 
tin, glycerin,  and  an  oxygenated  solution.  *In 
re  Mraz,  C.  D.  1911,  164  O.  G.  978. 

57.  Where  the  claims  called  for  "ketonic 
finish-softening  material,"  "aromatic  finish- 
softening  material,"  etc.,  as  one  element  of  a 
composition  of  matter  and  acetone  was  the 
only  substance  of  this  kind  specified  in  the 
original  disclosure.  Held,  that  there  was  no 
presumption  that  ketones  generally  could  be 
used  and  that  the  claims  were  properly  re- 
jected as  broader  than  the  disclosed  inven- 
tion (citing  the  Incandescent  Lamp  Patent, 
159  U.  S.  465).  *In  re  Dosselman  and  Ney- 
mann,  C.  D.  1911,  167  O.  G.  983. 

III.  Election,  Division,  Shifting  Ground, 
Etc. 

58.  An  applicant  has  no  right  to  have  an 
allowable  claim  drawn  to  a  species  alternative 
to  that  of  other  claim  and  presented  by  amend- 
ment after  the  rejection  of  such  other  claims 
considered.  He  is  bound  by  his  election  of 
species.  Ex  parte  Noble,  C.  D.  1898,  84  O.  G. 
1144. 

59.  An  amendment  should  not  be  entered 
when  its  entry  would  necessitate  the  require- 
ment of  division.  E.x  parte  Richter,  C.  D. 
1898,  85  O.  G.  1908. 

60.  When  the  primary  examiner  required  a 
division,  holding  that  the  claims  covered  two 
independent  inventions,  and  applicant  com- 
plied by  erasing  the  claims  as  to  one  inven- 
tion. Held,  that  having  his  election  as  to  which 


invention  he  would  claim,  applicant  is  estopped 
from  recalling  it,  the  claims  remaining  in  the 
case  now  being  under  rejection.  Ex  parte 
Clausen,  C.  D.  1809,  88  O.  G.  2242. 

61.  Where  an  amendment  is  presented  which 
in  the  opinion  of  the  examiner  covers  two 
distinct  and  independent  inventions,  he  should 
not  admit  it  until  the  question  of  division  has 
been  disposed  of.  (Ex  parte  Bailey,  C.  D. 
1890,  123,  53  O.  G.  608,  and  Ex  parte  Richter, 
C.  D.,  1898,  276,  85  O.  G.  1908.)  Ex  parte 
Murmann,  C.  D.  1900,  93  O.  G.  1721. 

62.  Where  an  amendment  is  filed  which  pro- 
poses to  cancel  all  the  claims  and  substitute 
others  which  the  examiner  states  cover  two 
distinct  inventions,  neither  of  which  is  ex- 
aminable in  his  division,  he  should  not  admit 
the  amendment  and  require  division,  but  he 
should  transfer  the  application  so  that  the 
examiner  to  whom  it  is  transferred  may  com- 
ply with  the  practice  of  the  office  and  give 
the  applicant  an  intelligent  cursory  examina- 
tion to  aid  him  in  dividing.    Id. 

63.  The  applicant  having  prosecuted  his 
claims  for  a  process  is  as  much  bound  by  his 
election  as  though  he  had  originally  presented 
claims  for  a  process  and  an  implement  or  ap- 
paratus and  upon  requirement  for  division  had 
elected  to  prosecute  the  process  claims.  Ex 
parte  Aberli,  C.  D.  1900,  91  O.  G.  2371. 

64.  To  permit  this  applicant  now  to  present 
claims  in  this  application  for  a  device,  as 
recommended  by  the  examincrs-in-chief, 
would  be  an  evasion  of  Rule  41  and  not  an 
advisable  precedent   to  establish.     Id. 

65.  Where  division  is  required  and  the  party 
limits  the  claims  to  one  of  the  inventions,  he 
will  not  after  those  claims  have  been  rejected 
be  permitted  to  shift  his  ground  to  the  other 
invention.  Ex  parte  Randall  and  Luck,  C.  D. 
1901,  95  O.  G.  2063. 

66.  It  is  the  duty  of  examiners  in  requiring 
division  to  cite  such  references  and  give  such 
information  in  regard  to  the  patentability  of 
the  claims  as  they  possess  without  making  an 
extended  search ;  but  such  action  is  not  intend- 
ed as  an  absolute  guide  to  the  applicant,  and 
the  fact  that  other  references  are  found  fur- 
nishes no  good  reason  for  permitting  him  to 
shift  his  ground  after  making  his  election. 
Id. 

67.  A  party  is  not  entitled  to  present  and 
prosecute  two  independent  inventions  in  one 
application,  and  where  such  inventions  are 
presented  by  amendment  the  procedure  is  sim- 
plified by  a  refusal  to  enter  it  instead  of  enter- 


33 


AMENDMENT,  III. 


ing  it  and  immediately  requiring  division.    Ex 
parte  Tschirner,  C.  D.  1901,  97  O.  G.  187. 

68.  Where  in  response  to  a  requirement  of 
division  between  claims  for  a  knot-forming 
mechanism  and  claims  for  a  tension  device 
applicant  filed  an  amendment  which  would  put 
the  claims  for  the  tension  device  in  the  form 
of  claims  for  the  tension  device  in  combina- 
tion with  the  knot-forming  device,  Held,  that 
the  amendment  should  be  entered.  Ex  parte 
Kugler.  C.  D.  1902,  98  O.  G.  2173. 

69.  The  operation  of  the  rule  quoted  in  ex 
parte  Brownell  (C.  D.  1901,  30,  94  O.  G.  98S) 
does  not  require  that  such  amendment  be  re- 
fused admission.  Ex  parte  Brownell  com- 
mented on  and  explained.     Id. 

70.  An  amendment  containing  claims  for  a 
process  should  not  be  entered  in  an  applica- 
tion containing  claims  for  an  apparatus,  be- 
cause division  would  be  necessitated  by  such 
entry  under  the  provisions  of  Rule  41.  Ex 
parte  Osborne,  C.  D.  1902,  98  O.  G.  2363. 

71.  Where  the  examiner  rejects  the  claims 
and  in  reply  the  applicant  requests  reconsid- 
eration and  presents  an  argument  responsive 
to  the  examiner's  action  and  at  the  same  time 
presents  as  an  amendment  a  new  claim  drawn 
to  a  different  invention,  Held,  that  the  amend- 
ment should  not  be  entered,  but  that  the  ex- 
aminer should  act  upon  the  claims  already  in 
the  case  in  view  of  the  argument  presented. 
Ex  parte  Scott,  C.  D.  1902,  100  O.  G.  681. 

72.  Where  an  amendment  to  the  claims  is 
made  in  response  to  a  rejection.  Held,  that  it 
cannot  be  refused  admission  upon  the  ground 
that  it  would  necessitate  a  requirement  for 
division  where  it  introduces  no  new  question 
of  division  and  merely  leaves  open  the  re- 
quirement previously  made.  Ex  parte  Cham- 
berlain, C.  D.  1902,  101  O.  G.  447. 

73.  Where  a  party  has  presented  claims  to 
and  received  an  action  from  the  office  in  re- 
gard to  one  invention  he  will  not  be  permitted 
to  shift  his  ground  and  present  claims  in  the 
same  case  to  a  different  invention.  E.x  parte 
Swantusch,  C.  D.  1902,  101  O.  G.  1129. 

74.  Where  a  party  has  two  claims,  one 
drawn  to  a  washing-machine  and  the  other  to 
the  same  machine  in  combination  with  a  hinge. 
Held,  that  he  cannot  thereafter  present  sub- 
stitute claims  drawn  to  the  hinge  alone.    Id. 

75.  Where  the  entry  of  an  amendment 
would  render  necessary  a  requirement  of  divi- 
sion. Held,  that  the  amendment  should  not  be 
entered.  Ex  parte  Metzger,  C.  D.  1902,  101 
O.  G.  1612. 


76.  Where  an  applicant  shows  and  describes 
two  or  more  forms  of  an  invention,  but  limits 
his  claims  to  cover  specifically  but  one  of 
the  forms,  thereby  excluding  the  other  specific 
form,  he  is  precluded  in  the  prosecution  of 
the  application  from  shifting  his  ground  to  a 
specific  claim  covering  another  form.  Ex 
parte  Plimpton,  C.  D.  1902,  101  O.  G.  2567. 

77.  Where  an  applicant  originally  shows  and 
describes  two  or  more  forms  of  an  invention, 
but  the  claims  were  broad  enough  to  include 
both  forms.  Held,  that  such  claims  did  not 
include  one  form  to  the  exclusion  of  the  other 
and  that  the  applicant  may  be  permitted  in 
the  same  application  to  insert  claims  drawn 
to  cover  specifically  one  of  the  forms  if  the 
state  of  the  art  so  warrants.  So  much  of  the 
decision  ex  parte  Heaton  (C.  D.  1879,  95,  15 
O.  G.  1054)  as  is  inconsistent  with  the  above 
is  overruled.     Id. 

78.  An  amendment  should  not  be  entered  if 
the  inventions  claimed  therein  are  such  that 
if  the  amendment  were  entered  division  would 
have  to  be  required.  E.x  parte  Stocking,  C.  D. 
1902,  101  O.  G.  2823. 

79.  Where  the  claims  in  an  amendment  cov- 
ered an  alleged  method  of  bookkeeping  in- 
volving a  particular  way  of  entering  records 
and  also  specific  account-books  for  entering 
such  records,  the  two  sets  of  claims  covered 
independent  inventions,  and  the  amendment 
was  properly  refused  entry.    Id. 

80.  After  prosecuting  claims  to  the  article 
the  applicant  is  not  entitled  to  shift  his  ground 
and  claim  the  process  of  making  it,  although 
the  process  was  disclosed  in  the  application 
as   filed.     Ex   parte   Christensen,   C.   D.   1903, 

105  O.  G.  1261. 

81.  Where  an  applicant  presents  generic 
claims  and  claims  limited  to  one  species,  he 
cannot  after  action  by  the  office  shift  his 
ground  and  present  claims  limited  to  a  differ- 
ent species.     Ex   parte   Maddux,  C.   D.   1903, 

106  O.  G.  764. 

82.  Where  after  action  by  the  office  the  ap- 
plicant presents  an  amendment  shifting  his 
ground  from  one  species  to  another,  Held. 
that  the  amendment  should  be  refused  admis- 
sion.    Id. 

83.  Where  an  application  as  filed  covered 
an  article  and  the  process  of  making  it  and 
after  action  by  the  office  an  amendment  is 
presented  embodying  claims  to  the  apparatus 
used  in  making  the  article.  Held,  that  the  ex- 
aminer properly  refused  to  enter  the  amend- 


AMENDMENT,  III. 


33 


ment.    Ex  parte  Fcrrcll,  C.  D.  1003,  106  O.  G. 
766. 

84.  A  party  will  not  be  permitted  to  shift 
his  ground  from  one  invention  to  another 
merely  because  both  were  disclosed  in  the  ap- 
plication. After  limiting  his  claims  to  one 
invention  he  is  bound  by  his  election.     Id. 

85.  Where  an  amendment  is  presented  which 
necessitates  the  requirement  of  division,  Held. 
that  the  amendment  should  not  be  entered. 
Ex  parte  Tschirncr,  C.  D.  1901,  141,  97  O.  G. 
187 ;  ex  parte  Morrison,  C.  D.  1902,  226,  99  O. 
G.  2969.  Ex  parte  Gaily,  C.  D.  1903,  107  O. 
G.  1660. 

86.  Where  a  claim  is  drawn  to  cover  a  me- 
chanical movement  and  that  claim  is  amended 
by  inserting  at  the  beginning  of  the  same  a 
descriptive  phrase  indicating  the  nature  of 
the  machine  in  which  the  invention  is  to  be 
used,  Held,  that  the  status  of  the  claim  is  not 
changed  by  such  an  amendment.     Id. 

87.  Where  specific  claims  to  one  form  of 
the  invention  are  originally  filed  and  subse- 
quently canceled  in  view  of  references,  an  ap- 
plicant is  not  entitled  to  present  in  the  same 
case  specific  claims  for  the  other  form.  Ex 
parte  Cram,  C.  D.  19U3,  102  O.  G.  227. 

88.  Where  it  is  quite  difficult  to  determine 
with  certainty  whether  the  original  claims  are 
specific  to  one  form  of  the  invention  or 
whether  they  are  broad  claims  covering  both 
forms  and  there  is  reasonable  doubt  as  to  the 
breadth  of  the  claims,  the  practice  of  the  of- 
fice will  not  suffer  if  the  applicant  is  subse- 
quently permitted  to  make  specific  claims  to 
one  of  the  forms.    Id. 

89.  Where  an  amendment  is  submitted 
which  would  necessitate  the  requirement  of 
division.  Held,  that  the  amendment  should  not 
be  entered.  Ex  parte  Kidde,  C.  D.  1903.  105 
O.  G.  1782. 

90.  Where  claims  are  canceled  upon  a  re- 
quirement for  division  and  are  presented  in  a 
separate  application.  Held,  that  they  cannot 
properly  be  reinstated  in  the  original  case  and 
considered  on  appeal.  Ex  parte  Fritts,  C.  D. 
1903,   10.1   O.   G.  2059. 

91.  Where  the  claims  have  been  rejected  as 
covering  "unpatentable  aggregations"  and  the 
applicant  is  informed  that  the  invention  lies 
in  either  one  of  the  specific  features  claimed, 
but  not  in  the  aggregation  of  the  two.  Held. 
that  an  amendment  canceling  certain  elements 
from  the  claim,  so  as  to  confine  the  claims  to 
one  of  the  specific  features,  should  be  entered 
and   acted   upon.     By   such   action   the   appli- 

3 


cant  is  not  attempting  to  shift  his  ground, 
but  is  only  attempting  to  limit  the  claim,  so 
as  to  avoid  the  rejection  and  objection  made 
by  the  examiner.  Ex  parte  Day,  C.  D.  1903, 
105  O.  G.  17S2. 

92.  An  amendment  should  not  be  entered  if 
its  entry  would  necessitate  a  requirement  for 
division,  and  this  applies  before  action  by  the 
office  as  well  as  afterward.  Ex  parte  Dubcrn, 
C.  D.  1904,  108  O.  G.  1588. 

93.  The  refusal  to  enter  an  amendment  in- 
cluding two  inventions  instead  of  entering  it 
and  requiring  its  elimination  keeps  the  office 
records  in  better  shape  and  affects  no  sub- 
stantial rights  on  the  part  of  the  applicant.    Id. 

94.  The  entry  or  refusal  to  enter  an  amend- 
ment including  two  inventions  does  not  affect 
the  question  whether  a  later  application  in- 
cluding one  of  those  inventions  is  to  be  con- 
sidered a  division  and  continuation  of  the 
first  case,  entitling  the  applicant  to  the  benefit 
of  the  original  date.    Id. 

95.  Where  an  amendment  is  presented  in- 
cluding claims  which  would  necessitate  a  re- 
quirement for  division.  Held,  that  the  amend- 
ment should  be  entered,  so  that  the  applicant 
may  appeal  the  question  of  division  to  the 
examiners-in-chief.  Ex  parte  Krause,  C.  D. 
1904,  111  O.  G.  1039. 

96.  Where  an  applicant  has  prosecuted 
claims  for  one  invention,  he  cannot  subse- 
quently, after  final  rejection  or  after  that  re- 
jection has  been  affirmed  by  an  appellate  tribu- 
nal, shift  his  ground  and  present  for  consid- 
eration in  the  same  application  claims  for  an- 
other and  distinct  invention.  Ex  parte  Walk- 
er, C.  D.  1904,  113  O.  G.  284. 

97.  In  ex  parte  Trevette  (C.  D.  1901,  170, 
97  O.  G.  1173),  where  an  amendment  changing 
the  form  of  the  claims  was  permitted  to  be 
made  after  rejection,  the  records  clearly 
showed  that  both  the  examiner  and  e.xaminers- 
in-chicf  were  of  the  opinion  that  the  inven- 
tion defined  in  the  claims  was  new,  but  that 
the  claims  were  in  the  wrong  form.  Such 
cases  are  to  be  distinguished  from  those  where 
the  tribunals  of  the  office  are  of  the  opinion 
that  the  invention  defined  in  the  claims  is  old, 
and  no  objection  is  made  by  them  to  the  form 
of  the  claims.     Id. 

98.  Where  an  election  is  originally  made  to 
prosecute  claims  covering  one  species, 
the  applicant  is  not  entitled  to  prose- 
cute and  have  considered  in  the  same  ap- 
plication claims  to  the  alternative  species,  and 
this  practice  is  not  to  be  changed  by  the  fact 


34 


AMENDMENT,  III. 


that  because  of  an  oversight  claims  for  the 
second  alternative  form  had  been  admitted 
and  considered.  The  office  vi\\\  not  knowing- 
ly continue  to  violate  a  well-established  prac- 
tice. Ex  parte  Loewenbach,  C.  D.  1904,  110 
O.  G.  837. 

99.  Since  the  question  whether  or  not  the 
examiner  was  right  in  requiring  division  is 
appealable  to  the  examiners-in-chicf,  Held, 
that  amendments  necessitating  the  require- 
ment should  be  entered,  so  that  the  claims  in 
controversy  will  be  properly  before  the  appel- 
late tribunal.  Ex  parte  Deane,  C.  D.  1904, 
111  O.  G.  1937. 

100.  Where  an  applicant  presents  process 
claims  and  no  objection  is  made  in  the  record 
to  these  claims  on  the  ground  that  they  do 
not  cover  true  process,  but  merely  cover  the 
function  of  the  apparatus,  and  the  claims  are 
rejected  on  the  ground  of  anticipation,  Held, 
that  the  applicant  cannot  shift  his  ground 
after  rejection  and  present  claims  for  an  ap- 
paratus. Ex  parte  Feld,  C.  D.  1904,  112  O.  G. 
252. 

101.  Where  it  appears  that  on  the  merits 
of  the  case  the  invention  is  patentable,  but 
the  applicant  is  believed  to  be  presenting 
claims  in  the  wrong  form.  Held,  that  the  ap- 
plicant may  be  permitted  to  subsequently 
change  the  form  of  the  claims  to  cover  the 
invention  sought  to  be  patented.  Ex  parte 
Trevette,  C.  D.  1901,  170,  97  O.  G.  1173.    Id. 

102.  Where  division  is  required,  the  appli- 
cant will  be  permitted  to  determine  for  him- 
self which  invention  will  be  retained,  unless 
he  is  estopped  by  a  previous  election  to  re- 
tain a  particular  one.  Ex  parte  Tuttle,  C.  D. 
1904,  ll.'l  O.  G.  1967. 

103.  Where  the  application  originally  con- 
tained only  apparatus  claims  and  after  rejec- 
tion the  applicant  presented  both  apparatus 
and  process  claims  and  the  examiner  required 
division.  Held,  that  if  the  requirement  for  di- 
vision was  proper  the  applicant  must  cancel 
the  process  claims  and  not  the  apparatus 
claims.  Ex  parte  Lawley,  C.  D.  1904,  113  O. 
G.  1967. 

104.  A  party  cannot  after  an  examination  of 
the  case  shift  his  ground  from  one  invention 
to  another  under  the  guise  of  electing  between 
two  inventions,  one  of  which  was  claimed  for 
the  first  time  by  amendment.    Id. 

105.  Where  an  amendment  is  presented  in- 
cluding claims  which  necessitate  a  require- 
ment for  division.  Held,  that  the  amendment 
should  be  entered  and  the  applicant  permitted 


to  appeal   from  the  requirement   for  division. 
Ex  parte  Selle,  C.  D.  1904,  110  O.  G.  1728. 

106.  The  practice  heretofore  of  refusing  to 
enter  an  amendment  which  would  necessitate 
division  was  based  upon  the  supposition  that 
the  matter  was  one  to  be  considered  on  inter- 
locutory petition,  and  it  has  no  application 
now,  since  the  question  of  division  is  appeal- 
able to  the  examiners-in-chief.    Id. 

107.  Where  an  applicant  by  amendment  as- 
serts claims  to  an  independent  invention.  Held, 
that  the  amendment  should  be  entered,  but  the 
applicant  should  be  required  to  cancel  the 
new  set  of  claims  instead  of  being  required 
to  elect  which  set  he  will  retain.    Id. 

108.  Where  after  prosecuting  claims  to  each 
of  two  distinct  features  the  claims  to  one  of 
these  features  were  voluntarily  canceled,  but 
after  action  upon  the  merits  of  the  claims  to 
the  remaining  feature  claims  to  each  feature 
were  again  presented  and  the  examiner  re- 
quired the  claims  to  the  reinstated  feature  to 
be  canceled.  Held,  the  examiner's  action 
was  based  upon  well-established  practice  re- 
garding shifting  ground,  and  if  his  conclusion 
that  two  features  are  independent  inventions 
is  correct,  his  action  refusing  consideration 
upon  the  merits  and  requiring  cancelation  of 
the  claims  to  the  feature  proposed  for  rein- 
statement was  clearly  proper.  Ex  parte 
Barnes,  C.  D.  1905,  115  O.  G.  247. 

109.  Where  the  examiner  refused  to  act 
upon  the  merits  of  a  case  as  amended  and 
required  the  cancelation  of  claims  on  the 
ground  that  they  were  drawn  to  an  invention 
independent  from  that  which  the  applicant 
had  elected  to  prosecute  in  that  case,  Held, 
the  question  of  independence  of  invention  in 
this  case  is  the  same  as  that  which  is  raised 
when  division  is  required  and  must  follow 
the  same  course  of  appeals,  wherefore  the 
examiner's  conclusion  upon  this  question  will 
not  be  reviewed  upon  petition.     Id. 

110.  Where  the  examiner  refused  further 
action  upon  the  merits  and  required  the  can- 
celation of  claims  on  the  ground  that  they 
were  for  an  invention  independent  from  that 
which  the  applicant  had  elected  to  prosecute 
in  that  case,  and  the  applicant  contends  that, 
as  no  requirement  for  division  had  been  made, 
he  should  be  permitted  to  try  that  question 
and  elect,  if  necessary,  which  invention  should 
be  retained,  Held,  the  contention  is  not  sound, 
since  the  applicant  has  already  elected  and 
since  the  fact  that  this  election  was  not  made 
in    response    to    a    requirement    for    division. 


AMENDMENT,  IV,  (a). 


35 


but  was  voluntary,  or  even  accidental,  is  im- 
material.    Id. 

111.  A  party  cannot  be  permitted  to  rein- 
state claims  canceled  in  view  of  a  requirement 
for  division,  and  thus  reopen  a  question  which 
was  finally  disposed  of.  Ex  parte  Wick,  C. 
D.  190.J,  117  O.  G.  902. 

112.  Where  claims  presented  by  amendment 
are  held  by  the  examiner  to  be  for  an  inde- 
pendent invention  from  that  presented  in  the 
other  claims,  Held,  that  the  question  of  wheth- 
er the  claims  are  in  fact  for  an  independent 
invention  must  be  settled  before  applicant  can 
demand  an  action  upon  their  merits.  If  for 
an  independent  invention,  applicant  is  estopped 
from  prosecuting  said  claims  on  their  merits 
in  this  application,  and  they  should  be  can- 
celed. This  question  is  the  same  as  that  or- 
dinarily presented  in  a  requirement  for  divi- 
sion, with  the  exception  that  in  originally 
presenting  and  prosecuting  claims  to  one  in- 
vention only  applicant  has  already  made  his 
election  and  has  now  no  choice  as  to  which 
set  of  claims  he  will  cancel.  (Ex  parte  Selle, 
C.  D.  1904,  221,  110  O.  G.  1728 ;  ex  parte  Tut- 
tle,  C.  D.  1904,  .537,  113  O.  G.  1967.)  Ex  parte 
Bullock,  C.  D.  1907,  127  O.  G.  1.580. 

113.  Where  an  applicant  presents  an  amend- 
ment which  the  examiner  holds  contains  claims 
for  a  diflferent  invention  from  that  already 
prosecuted,  the  amendment  should  be  entered 
and  applicant  required  to  cancel  these  claims. 
Ex  parte  Fast,  C.  D.  1911,  172  O.  G.  552. 

114.  From  the  action  of  the  examiner  re- 
quiring the  cancelation  of  claims  on  the 
ground  that  they  are  for  a  different  invention 
than  that  which  applicant  has  elected  to  prose- 
cute appeal  lies  to  the  examiners-in-chief.    Id. 

115.  Where  an  application  as  filed  disclosed 
several  inventions,  only  some  of  which  were 
claimed,  and  in  response  to  a  requirement  for 
division  the  claims  to  all  but  one  of  such  in- 
ventions were  canceled,  Held,  that  this  action 
constituted  an  election  and  that  thereafter  ap- 
plicant was  entitled  to  prosecute  neither  claims 
to  the  subject-matter  for  which  claims  had 
been  canceled  nor  claims  for  the  subject- 
matter  not  originally  claimed.  Ex  parte  Moor- 
head,  C.  D.  1911,  173  O.  G.  1079. 

IV.  After  Final  Rejection. 

(a)  In  General. 

116-  .\n  additional  claim  presented  after 
final  rejection  should  not  be  admitted  without 
the   showing  of  "good   and  sufficient  reasons 


why  it  was  not  earlier  presented"  required  by 
Rule  68.  Ex  parte  Maynard,  C.  D.  1898,  84 
O.  G.  1433. 

117.  Where  the  examiner  in  his  first  action 
rejected  claim  1  on  a  British  patent  and  claim 
'.'•  on  a  United  States  patent,  and  in  his  sec- 
ond action  gave  reasons  for  refusing  tlic 
claims  which  did  not  appear  in  the  first  ac- 
tion, viz.,  that  there  is  no  invention  in  making 
an  ordinary  diaphragm  with  a  serrated  edge 
and  that  the  combination  recited  in  claim  3 
lacks  invention,  in  view  of  the  British  patent, 
taken  in  connection  with  the  United  States  pat- 
ent, Ih-ld,  that  new  reasons  for  refusing  the 
claim  having  been  given  the  application  was 
not  under  final  rejection,  under  the  rules  and 
practice  of  the  office,  and  the  amendment  pre- 
sented after  the  second  action  on  the  case 
should  be  admitted.  Ex  parte  Valiquet,  C.  D. 
1899,  89  O.  G.  354. 

118.  Where  the  examiner's  position  in  the 
case  was  fully  pointed  out  before  final  rejec- 
tion, and  even  after  such  rejection  the  ex- 
aminer was  willing  to  admit  an  amendment 
for  the  purpose  of  petition  and  appeal,  and 
the  attorneys  instead  of  prosecuting  the  ap- 
plication by  petition  or  appeal  persistently  filed 
amendments  and  arguments  without  any  pros- 
pect of  inducing  the  examiner  to  change  his 
action.  Held,  that  such  practice  as  has  been 
followed  by  the  attorneys  in  this  case  is  not 
fair  to  the  office  or  to  applicants  who  are  in 
good  faith  prosecuting  their  applications.  The 
time  of  an  examiner  should  not  be  thus  wasted 
where  it  could  be  legitimately  given  to  other 
applicants.  E.x  parte  Dravo  and  Miller,  C.  D. 
1900,  91  O.  G.  4fi0. 

119.  Held,  further,  that  while  an  examiner 
in  the  treatment  of  an  application  will  be  re- 
quired to  make  his  actions  complete  and  to 
respond  to  all  the  reasonable  requests  of  at- 
torneys, yet  there  is  a  limit  beyond  which  an 
examiner  should  not  be  asked  to  go.  There 
should  be  an  end  at  some  time  to  the  prosecu- 
tion of  cases  before  the  examiner — a  time 
when  the  attorney  should  petition  or  appeal 
if  he  believes  that  the  examiner  was  wrong 
in  his  action  and  that  the  application  contains 
patentable  subject-matter.     Id. 

120.  Held,  further,  that  in  the  present  case 
the  applicants  have  received  fair  treatment 
and  the  examiner  has  finally  rejected  the  ap- 
plication. The  attorneys  when  this  point  was 
reached  wasted  their  own  time  and  that  of 
the  office  in  their  persistence  in  offering 
amendments  and  arguments  which  they  knew 


36 


AMENDMENT,  IV,  (a). 


would  not  be  favorably  considered.  Such 
practice  on  the  part  of  an  attorney  as  appears 
from  the  record  in  this  case  cannot  be  too 
strongly  condemned.     Id. 

121.  After  fmal  rejection  amendments  were 
entered  for  the  purpose  of  appeal  and  appli- 
cant was  informed  that  there  was  nothing 
patentable  disclosed  by  the  application.  In- 
stead, however,  of  appealing  he  insisted  upon 
his  right  to  further  amend,  and  upon  petition 
to  the  commissioner  to  direct  the  examiner 
to  further  consider  amendments,  Held,  that 
the  application  has  received  all  the  considera- 
tion to  which  it  is  entitled  and  that  if  appli- 
cant believed  the  rejected  claim  to  be  pat- 
entable he  should  have  appealed.  Ex  parte 
Tiffany,  C.  D.  1900,  91  O.  G.  643. 

122.  Where  an  applicant  requested  that  his 
case  be  reopened  after  final  rejection  for  the 
purpose  of  further  amendment,  stating  that  he 
believes  that  upon  the  grounds  upon  which 
he  based  his  request  for  reconsideration  the 
examiner's  position  would  be  overcome,  or  at 
least  new  references  would  be  cited,  and  that 
thereby  he  would  not  be  precluded  from  fur- 
ther action  in  the  case,  that  a  final  rejection 
was  hardly  looked  for  at  such  an  early  stage 
of  the  proceedings  in  the  case,  and  hence  when 
the  final  rejection  was  made  he  took  up  the 
case  for  further  careful  consideration,  where- 
upon it  was  found  that  there  was  a  clear  me- 
chanical difference  between  applicant's  device 
and  the  references.  Held,  that  this  is  not  a 
sufficient  excuse  for  not  presenting  the  pro- 
posed amendment  earlier,  and  that  the  appli- 
cant should  have  considered  the  references 
and  made  some  attempt  to  amend  the  claims 
to  overcome  them  before  final  rejection.  Ex 
parte  Wilier,  C.  D.  1900,  91  O.  G.  1033. 

123.  }lcld,  further,  that  the  reason  advanced 
for  reopening  the  case  is  one  that  might  be 
given  for  reopening  many  cases  in  the  office 
under  final  rejection,  and  if  such  request  were 
granted  cases  could  not  be  properly  disposed 
of,  and  the  work  of  the  office  would  be  thrown 
behind,  to  the  detriment  of  those  applicants 
who  faithfully  comply  with  the  rules  of  the 
office.     Id. 

124.  Where  applicant  urged  that  as  Rule  78 
permits  amendments  affecting  the  merits  of 
the  case  to  be  made  even  after  the  allowance 
of  the  application,  by  a  parity  of  reasoning  the 
same  rule  should  hold  good  in  a  case  which 
has  been  finally  rejected,  if  a  reasonable  show- 
ing be  made.  Held,  that  while  it  is  true  that 
Rule   77   permits   amendments  to   an   applica- 


tion after  allowance,  yet  such  amendments  are 
only  permitted  where  it  is  not  necessary  to  re- 
open the  case  for  further  action  on  the  part 
of  the  office.    Id. 

125.  Where  an  amendment  is  filed  after  a 
final  rejection,  the  same  should  not  be  entered 
unless  accompanied  by  a  duly-verified  state- 
ment satisfactorily  showing  why  said  amend- 
ment was  not  earlier  presented.  Ex  parte 
Landsing,  C.  D.   1901,  96  O.  G.  2063. 

12G.  Where  an  amendment  is  filed  after  a 
final  rejection  canceling  the  original  claims 
and  inserting  in  lieu  thereof  new  claims,  said 
new  claims  differing  in  scope  from  the  orig- 
inal claims  and  not  being  merely  the  original 
claims  presented  in  better  form.  Held,  that  the 
amendment  should  not  be  entered  for  the 
purpose  of  appeal.     Id. 

127.  To  permit  amendments  in  matters  of 
merits  after  a  final  rejection  of  the  claims 
merely  because  there  are  formal  objections  un- 
disposed of  would  defeat  the  very  purpose  of 
the  rule,  which  contemplates  that  matters  of 
merits  will  be  finally  disposed  of  by  the  ex- 
aminer before  questions  of  form  will  be  in- 
sisted upon.  Ex  parte  Severy,  C.  D.  1901,  97 
O.  O.  2743. 

128.  After  a  case  is  under  final  rejection  an 
amendment  inserting  or  substituting  new 
claims  should  not  be  entered  unless  accom- 
panied by  a  duly-verified  statement  setting 
forth  satisfactory  reasons  why  the  amendment 
was  not  earlier  presented  or  unless  the  claims 
presented  differ  from  those  under  final  re- 
jection only  in  the  matter  of  form,  and  it  is 
requested  that  they  be  entered  in  order  that 
the  claims  may  be  in  better  form  for  appeal. 
(Rule  68.)  Ex  parte  Coddington,  C.  D. 
1901,  96  O.  G.  1239. 

129.  When  a  case  is  in  condition  for  ap- 
peal, amendments  canceling  claims  and  sub- 
stituting others  therefor  can  be  admitted  in 
two  cases — first,  when  they  do  not  affect  the 
merits,  and,  second,  when  they  do  affect  the 
merits,  in  which  latter  case  the  additional  re- 
quirement is  applicable  that  they  must  be  ac- 
companied by  a  showing  duly  verified  of  good 
and  sufficient  reasons  why  they  were  not  ear- 
lier presented.  (Rule  68.)  Ex  parte  White, 
C.   D.   1902,  98  O.  G.  1969. 

130.  Where  after  final  rejection  new  claims 
differing  in  substance  from  those  rejected 
were  presented  by  amendment  as  substitutes 
for  the  purpose  of  appeal,  Held,  that  the  ex- 
aminer properly  refused  to  enter  the  amend- 
ment.    Id. 


AMENDMENT,  IV,  (a). 


37 


131.  Where  after  a  final  rejection,  which  is 
regularly  and  properly  given,  the  applicant 
wishes  to  amend  and  alleges  that  he  did  not 
before  properly  understand  the  invention, 
Held,  that  he  has  not  shown  good  and  suffi- 
cient reasons  why  the  amendment  was  not 
sooner  presented  and  that  it  should  be  refused 
admission.  Ex  parte  Schmidt,  C.  D.  1902,  100 
O.  G.  2602. 

132.  A  party  cannot  demand  the  admission 
of  an  additional  claim  after  final  rejection  as 
placing  the  case  in  better  form  for  appeal, 
since  if  it  differs  from  other  claims  it  affects 
the  merits.  Ex  parte  Downing,  C.  D.  1902, 
100  O.  G.  2176. 

133.  Where  after  final  rejection  the  applicant 
presents  by  amendment  an  additional  claim 
which  is  substantially  the  same  as  one  of  those 
rejected.  Held,  that  the  amendment  should 
not  be  entered,  either  with  or  without  the 
showing  referred  to  in  Rule  68,  since  dupli- 
cate claims   are  not  permissible.     Id. 

134.  Where  the  new  claims  sought  to  be 
entered  after  final  rejection  are  not  merely 
those  rejected  in  better  form,  but  differ  as 
to  their  merits.  Held,  that  they  cannot  be  ad- 
mitted under  Rule  68  for  the  purpose  of  ap- 
peal. Ex  parte  Raymond,  C.  D.  1902,  99  O.  G. 
1386. 

135.  Where  after  a  final  rejection  an  amend- 
ment is  presented  accompanied  by  an  affi- 
davit that  the  proposed  claims  were  not  pre- 
sented sooner  because  the  importance  of  the 
features  covered  thereby  had  been  overlooked, 
Held,  that  the  showing  is  insufficient  and  that 
the  amendment  was  properly  refused  admis- 
sion. Ex  parte  Nettles,  C.  D.  1903,  107  O.  G. 
541. 

136.  Where  after  final  rejection  an  allow- 
able claim  is  presented  by  amendment  which 
the  examiner  enters,  Held,  that  the  case  re- 
mains finally  rejected  and  that  the  entry  of 
the  amendment  did  not  reopen  it  for  further 
prosecution.  Ex  parte  Meacham,  C.  D.  1904, 
113  O.  G.  1417. 

137.  Where  an  amendment  was  filed  after 
final  dejection  containing  two  new  claims  and 
the  amendment  was  not  entered  by  the  ex- 
aminer. Held,  that  an  appeal  to  the  examiners- 
in-chief  on  the  claims  under  final  rejection 
should  be  forwarded  to  that  tribunal.  Ex 
parte  Durafort,  C.  D.  1904,  110  O.  G.  2017. 

138.  Final  rejection  of  the  claims  is  intended 
to  close  the  consideration  of  the  case  upon  the 
merits,  and  the  applicant  is  not  entitled  to 
demand  that  it  be  reopened  thereafter  to  con- 


sider amendments  except  upon  a  verified 
showing  of  good  and  sufficient  reasons  why 
the  amendment  was  not  sooner  presented.  Ex 
parte  Novotny,  C.  D.  1904,  108  O.  G.  1327. 

139.  Where  certain  formal  objections  are 
made  and  the  claims  are  finally  rejected.  Held, 
that  the  applicant  may  amend  to  avoid  the 
formal  objections,  but  cannot  make  amend- 
ments presenting  new  claims  or  affecting  the 
merits.  Ex  parte  Paige,  C.  D.  1904,  108  O.  G. 
1:JS7. 

140.  Where  after  final  rejection  additional 
claims  are  presented  for  the  alleged  purpose 
of  placing  the  case  in  better  form  for  appeal, 
but  no  rejected  claims  are  canceled.  Held, 
that  the  new  claims  must  be  regarded  as  dif- 
fering from  the  rejected  claims  in  substance 
and  not  merely  in  form,  and  therefore  the  ex- 
aminer's refusal  to  enter  the  claims  sustained. 
Ex  parte  Wirt,  C.  D.  190.-J,  117  O.  G.  599. 

141.  Claims  differing  in  scope  from  claims 
under  final  rejection  will  not  be  admitted 
under  Rule  68  upon  the  mere  allegation  that 
there  is  another  application  pending,  whose 
date  and  number  are  specified,  containing  such 
claims.  They  can  be  admitted  only  upon  a 
duly  verified  showing.  Ex  parte  Kenney,  C. 
D.  1905,  119  O.  G.  2237. 

142.  The  statement  of  the  attorney  that  the 
subject-matter  of  a  proposed  amendment  filed 
after  final  rejection  was  not  earlier  called 
to  his  attention  by  the  inventor  is  not  a  suf- 
ficient showing  upon  which  to  admit  the 
amendment.  Ex  parte  Schrader,  C.  D.  1906, 
120  O.  G.  2127. 

143.  Where  the  applicant  understood  the  ex- 
aminer's first  action  in  all  essential  particulars 
and  the  next  office  action  merely  restated  the 
original  ground  of  rejection.  Held,  that  a  re- 
quest that  an  amendment  filed  after  final  re- 
jection be  admitted  should  be  denied.  Ex 
parte  Kinney  and  Schultz,  C.  D.  1906,  121  O. 
G.  2323. 

144.  Where  after  a  rejection  by  the  primary 
examiner  an  applicant  requests  a  reconsidera- 
tion and  files  an  argument  fully  presenting 
the  case  upon  the  merits  and  the  examiner  in 
view  thereof  finally  rejects  the  claims,  he  can- 
not submit  new  claims  and  have  them  entered 
and  considered  thereafter  upon  the  allegation 
that  the  letter  asking  for  reconsideration  was 
in  fact  a  request  for  an  explanation  of  the 
examiner's  position.  Ex  parte  Knapp  and 
Cade.  C.  D.  1907,  128  O.  G.  1687. 

145.  An  amendment  touching  the  merits  of 
the  case  will  not  be  admitted  under  the  pro- 


38 


AMENDMENT,  IV,  (b),  V. 


visions  of  Rule  68  unless  accompanied  by  a 
verified  showing  of  good  and  sufficient  rea- 
sons why  it  was  not  earher  presented.  Ex 
parte  Brown  and  Sprink,  C.  D.  1908,  135  O. 
G.  1801. 

146.  Claims  admitted  after  final  rejection 
under  that  part  of  Rule  68  requiring  a  "show- 
ing duly  verified,  of  good  and  sufficient  rea- 
sons why  they  were  not  earlier  presented,"  are 
for  consideration  by  the  primary  examiner 
and  not  for  the  purpose  of  appeal  only.  Ex 
parte  Meyer,  C.  D.  1909,  148  O.  G.  1088. 

147.  When  after  final  rejection  new  claims 
were  presented  which  were  treated  by  the 
tribunals  of  the  patent  office  without  objec- 
tion by  applicant  as  putting  the  rejected  claims 
in  better  form  for  consideration  on  appeal 
applicant  having  waived  his  objection  to  their 
being  so  considered  if  in  fact  there  was  any 
ground  for  it  cannot  be  heard  to  urge  it  on 
appeal  to  the  court  of  appeals  of  the  District 
of  Columbia.  *In  re  Heinz,  C.  D.  1910,  151 
O.  G.  1014. 

148.  An  amendment  presenting  new  claims 
filed  after  final  rejection,  Held,  properly  re- 
fused admission  where  applicant  had  had 
ample  opportunity  to  present  such  claims  and 
the  only  excuse  given  for  failure  to  do  so  was 
that  it  did  not  appear  to  be  desirable  until  he 
was  convinced  that  the  broader  claims  pre- 
sented were  unpatentable  in  view  of  the  ref- 
erences cited.  Ex  parte  Lange,  C.  D.  1911,  163 
O.  G.  727. 

149.  After  a  final  rejection  an  applicant  is 
not  entitled  to  further  prosecute  the  case 
before  the  primary  examiner  in  the  absence 
of  any  showing  under  Rule  68  why  the  pro- 
posed claims  were  not  earlier  presented.  Ex 
parte  Hodge,  C.  D.  1911,  173  O.  G.  1079. 

150.  It  is  the  well-settled  practice  of  the  of- 
fice that  an  amendment  cannot  be  entered  in 
part,  since  for  the  examiner  to  undertake  to 
enter  an  amendment  so  far  as  it  is  responsive 
and  to  refuse  to  enter  the  remainder  thereof 
would  lead  to  endless  confusion.     Id. 

(b)  Permitted. 

151.  Where  an  amendment  is  filed  in  good 
faith  after  second  rejection  and  for  the  pur- 
pose of  securing  what  the  attorney  believes 
to  be  the  inventor's  rights,  an  examiner  may 
be  justified  in  admitting  and  considering  such 
amendment.  Ex  parte  Horstick,  C  D.  1898, 
84  O.  G.  981. 


152.  Where,  under  Rule  68,  a  claim  is  in- 
serted in  lieu  of  finally-rejected  claims  and 
which,  except  as  to  minor  details,  brings  for- 
ward nothing  new  to  be  considered,  as  it  is 
merely  more  specific  than  those  claims.  Held, 
that  the  claim  should  be  inserted  for  the  pur- 
pose of  appeal  under  Rule  68,  on  the  ground 
that  "It  is  in  better  form  for  consideration  on 
appeal"  than  claims  under  final  rejection.  Ex 
parte  Marks,  C.  D.  1904,  111  O.  G.  2492. 

153.  Where  amendments  to  the  description 
which  do  not  touch  the  merits  of  the  appli- 
cation, but  presents  the  invention  more  clear- 
ly, are  presented  after  final  rejection.  Held, 
that  they  may  be  entered  without  reopening 
the  application  for  further  consideration.  Ex 
parte  Loppenhen,  C.  D.  1906,  122  O.  G.  1723. 

154.  Under  the  provisions  of  Rule  68  an 
amendment  touching  the  merits  filed  after 
final  rejection  may  be  admitted  only  upon  a 
verified  showing  of  reasons  why  it  was  not 
earlier  presented ;  but  no  hard  and  fast  rule 
can  be  laid  down  to  define  what  constitutes 
a  satisfactory  showing  in  such  a  case.  Ex 
parte  Schmidt,  C.  D.  1911,  171  O.  G.  482. 

155.  When  an  application  has  been  prose- 
cuted in  good  faith  and  expeditiously,  the  ap- 
plicant should  not  be  denied  permission  to 
amend  after  a  final  rejection  when  it  clearly 
appears  from  the  affidavit  of  responsible 
counsel  that  matters  contained  in  the  amend- 
ment were  not  earlier  presented  because  of 
the  fact  that  the  inventor  had  not  earlier 
pointed  out  to  counsel  features  covered  by 
the  proposed  amendment.     Id. 

V.  After  Appeal. 

156.  Where  after  a  decision  of  the  examin- 
ers-in-chief a  petition  is  made  to  reopen  a 
case  for  the  consideration,  by  the  primary 
examiner,  of  additional  claims,  and  the  only 
reason  advanced  as  to  why  the  proposed 
claims  were  not  presented  before  final  con- 
sideration of  the  case  by  the  primary  exam- 
iner is  that  the  attorney  then  in  charge  of  the 
case  did  not  appreciate  the  necessity  of  pre- 
senting such  claims,  Held,  that  the  failure 
to  present  them  sooner  was  due  merely  to  a 
supposed  error  in  judgment,  and  the  petition 
denied.  Ex  parte  Osborn,  C.  D.  1898,  82  O. 
G.  894. 

157.  The  rule  against  the  admission  of  new 
claims  after  a  case  has  been  closed  before  the 
primary  examiner  is  necessary  to  the  proper 
conduct  of  the  large  amount  of  business  be- 


AMENDMENT,  VI. 


39 


fore  the  patent  office,  and  the  enforcement 
of  the  rule  is  necessary  to  its  existence.  (Ex 
parte  Snow,  C.  D.  1897,  48,  80  O.  G.  1271,  and 
ex  parte  Hunter,  C.  D.  1897,  IGl,  81  O.  G.  504, 
cited.)     Id. 

158.  Where  an  examiner  in  answering  an 
appeal  to  the  examiners-in-chief  cited  an  ad- 
ditional reference  and  also  wrote  a  letter  to 
applicant  notifying  him  of  the  citation  and 
the  practice  under  e.x  parte  Mevey  (C.  D. 
1891,  113,  5G  O.  G.  805)  and  the  apphcant 
elected  to  continue  the  prosecution  of  the 
appeal.  Held,  that  an  amendment  presented 
after  the  date  of  the  examiner's  answer  and 
before  the  decision  of  the  appellate  tribunal 
should  not  be  entered  except  under  the  pro- 
visions of  Rule  142.  Ex  parte  Buck,  C.  D. 
1901,  94  O.  G.  222. 

159.  Held,  further,  that  while  Rule  68  pro- 
vides that  an  applicant  may  amend  as  often 
as  the  examiner  presents  new  references  or 
reasons  for  rejection,  yet  another  part  of  the 
rule  provides  that  no  amendment  can  be  made 
in  appealed  cases  between  the  filing  of  the 
examiner's  statement  and  the  decision  of  the 
appellate  tribunal,  and,  treating  the  rule  as 
an  entirety,  as  it  should  be,  the  amendment 
should  not  be  entered  except  under  Rule  142. 
Id. 

160.  Where  in  a  decision  upon  appeal  the 
examiners-in-chief  call  attention  to  imperfec- 
tions in  the  drawing  and  specification.  Held, 
that  the  applicant  will  be  permitted  to  correct 
those  specific  errors  before  further  appeal, 
but  will  not  be  permitted  to  file  substitute 
specification  and  drawings,  which  would  ne- 
cessitate a  reopening  of  the  case.  Ex  parte 
Beck,  C.  D.  1901,  97  O.  G.  2746. 

161.  Where  after  certain  claims  have  been 
allowed  by  the  examiners-in-chief  the  appli- 
cant desires  to  amend  them  and  the  examiner 
reports  that  the  amendment  would  necessitate 
a  re-examination  of  the  case.  Held,  that  the 
examiner's  report  will  be  accepted  as  correct 
and  the  amendnient  will  not  be  permitted. 
Ex  parte  Borton,  C.  D.  1903,  104  O.  G.  851. 

162.  After  appeal  to  the  examiners-in-chief 
relating  to  one  species  of  the  invention  the 
applicant  is  not  entitled  to  shift  his  ground 
and  claim  another  species.  Ex  parte  Reck- 
linghausen and  Potter,  C.  D.  1904,  113  O.  G. 
114G. 

163.  A  party  cannot  shift  his  ground  and 
present  new  claims  after  the  merits  of  the 
case  have  been  finally  disposed  of  even  where 
the  new  claims  are  presented  for  the  purpose 


of   interference.     The  new   claims   should   be 
presented  in  a  new  application.    Id. 

164.  An  applicant  has  no  right  to  amend 
after  decision  on  appeal  except  under  unu- 
sual circumstances  and  where  a  proper  show- 
ing is  made.  Even  then  petition  must  be 
made  to  the  commissioner  to  reopen  the  case. 
Ex  parte  Auer,  C.  D.  1905,  116  O.  G.  593. 

165.  A  statement  in  a  decision  of  the  ex- 
aminers-in-chief that  certain  differences  exist 
between  applicant's  device  and  the  references 
which  do  not  appear  in  the  appealed  claims 
does  not  amount  to  a  recommendation  under 
Rule  139  and  furnishes  no  ground  for  the 
entry  of  an  amendment  containing  new  claims. 
Ex  parte  Smart,  C.  D.  1909,  145  O.  G.  256. 

166.  The  practice  of  submitting  new  claims 
for  the  original  consideration  of  the  commis- 
sioner on  appeal  not  approved.  Ex  parte 
Sears,  C.  D.  1909,  148  O.  G.  279. 

167.  A  case  will  not  be  reopened  for  amend- 
ment after  a  decision  by  the  examiners-in- 
chief  except  for  the  consideration  of  matter 
not  previously  adjudicated,  sufficient  cause 
being  shown.  (Rule  142.)  E.x  parte  Atwood, 
C.  D.  1911,  163  O.  G.  1183. 

168.  Where  during  the  prosecution  of  an 
application  certain  claims  were  canceled  the 
fact  that  the  examiners-in-chief  reversed  the 
action  of  the  primary  examiner  on  narrower 
claims  affords  no  ground  for  permitting  the 
entry  of  claims  substantially  the  same  in 
scope  as  the  claims  previously  canceled.  Ex 
parte  EUis,  C.  D.  1911,  171  O.  G.  217. 

VI.  After  Allowance. 

169.  Where  a  claim  was  offered  in  an  al- 
lowed application  which  the  examiner  stated 
to  be  patentable  over  the  art,  but  the  admis- 
sion of  which  he  refused  to  recommend  under 
Rule  78,  Held,  that  this  is  clearly  a  case  where 
the  amendment  should  be  permitted,  for  Rule 
78  was  amended  to  meet  just  such  cases.  Ex 
parte  O'Connor,  C.  D.  1899,  89  O.  G.  1141. 

170.  Held,  further,  that  had  the  examiner 
recommended  that  the  amendment  be  admit- 
ted without  withdrawing  the  case  from  issue, 
justice  would  have  been  done  to  the  applicant, 
his  attorney  would  have  been  saved  the  labor 
of  preparing  a  brief,  while  the  examiner  and 
the  clerical  force  of  the  office  would  have  been 
spared  much  unnecessary  labor.     Id. 

171.  Where  an  examiner  reported  against 
the  admission  of  proposed  claims  for  the  rea- 
son that  claims  1  and  2  are  in  substance  the 


40 


AMENDMENT,  VII. 


same  as  other  claims  which  have  been  rejected 
and  canceled,  Held,  that  this  case  does  not 
fall  within  that  line  of  cases  where  a  pro- 
.  posed  amendment  may  be  entered  without 
withdrawing  the  application  from  issue.  Ex 
parte  Woodward,  C.  D.  1900,  91  O.  G.  1801. 

172.  If  after  an  application  has  been  al- 
lowed it  be  permitted  to  be  withdrawn  on  such 
a  showing  as  made  in  this  case,  it  would  be 
impossible  for  the  office  to  conduct  the  ex- 
amination of  applications  to  a  finality  without 
great  delay  to  the  work  of  the  oflSce  as  a 
whole.     Id. 

173.  If  applicant  desires  to  further  prose- 
cute his  case,  his  remedy  is  to  permit  the  ap- 
plication to  forfeit  and  then  renew  it  or  file 
a  new  application  as  a  continuation  of  the 
one  in  issue.    Id. 

174.  After  a  case  is  allowed  an  amendment 
presenting  allowable  claims  may  be  entered 
without  withdrawing  the  case  from  issue ; 
but  amendments  which  render  it  necessary  to 
reopen  the  case  for  further  action  by  the  of- 
fice cannot  be  permitted.  Ex  parte  Pierce, 
C.  D.  1901,  97  O.  G.  2307. 

175.  Where  claims  are  sought  to  be  in- 
serted by  amendment  under  the  provision  of 
Rule  73  in  an  allowed  application,  Held,  that 
it  is  not  necessary  for  the  examiner  to  state 
fully  and  in  detail  his  reasons  for  reaching 
the  conclusion  that  the  claims  are  not  patent- 
able, as  is  necessary  in  the  ordinary  examina- 
tion of  a  case.  Ex  parte  Stone,  C.  D.  1902, 
101  O.  G.  2080. 

176.  Rule  78  does  not  provide  for  an  indi- 
rect prosecution  of  an  allowed  application,  as 
the  applicant  cannot  as  a  matter  of  right 
amend  a  case  after  it  is  allowed.  The  ex- 
aminer has  no  jurisdiction  over  the  case,  and 
his  report  upon  the  proposed  amendment  is 
not  an  action  in  the  case,  but  is  merely  in  the 
nature  of  advice  to  the  commissioner  upon 
which  he  can  base  his  action  in  approving  or 
disapproving  the  entry  of  the  amendment.     Id. 

177.  Where  an  amendment  to  a  case  was 
filed  in  the  office  before  the  case  was  allowed, 
but  reached  the  examiner  afterward.  Held, 
that  the  allowance  of  the  case  was  irregular, 
that  it  will  be  withdrawn  and  the  amendment 
entered.  Ex  parte  Law,  C.  D.  1904,  111  O.  G. 
io:i9. 

178.  A  petition  for  the  entry  of  an  amend- 
ment presented  under  Rule  78  after  the  al- 
lowance of  the  application  will  be  denied 
where  the  amendment  includes  claims  which 
the  examiner  in  his  report  upon  the  petition 


states  are  not  patentable.     Ex  parte  Fleming, 
C.  D.  1907,  126  O.  G.  2590. 

179.  The  entry  of  claims  under  Rule  78 
is  not  a  matter  of  right,  but  a  privilege  allow- 
ed applicants  where  claims  are  found  allow- 
able by  the  examiner  upon  such  consideration 
of  the  case  as  he  may  deem  proper.  The  ex- 
aminer will  not  be  directed  to  consider  the 
question  of  patentability  of  claims  presented 
after  his  report  upon  petition.     Id. 

180.  It  is  the  well-settled  practice  that 
where  amendments  are  presented  under  Rule 
78  containing  claims  which  the  examiner  rec- 
ommends are  patentable  such  amendments  will 
be  entered,  but  that  amendments  presenting 
claims  which  the  primary  examiner  holds  are 
not  patentable  will  not  be  entered.  It  is  not 
necessary  for  the  examiner  to  give  in  detail 
his  reasons  for  holding  that  the  claims  are  un- 
patentable, and  the  rule  does  not  provide  for 
an  indirect  prosecution  of  the  application.  Ex 
parte  Orndoff,  C.  D.  1909,  140  O.  G.  1001. 

181.  The  question  of  admitting  amendments 
presented  under  the  provisions  of  Rule  78 
rests  largely  in  the  discretion  of  the  examiner, 
and  his  recommendations  as  to  such  amend- 
ments will  not  be  overruled  except  under  un- 
usual circumstances.  Ex  parte  Holz,  C.  D. 
1910,  i-,4  O.  G.  1411. 

182.  Where  the  examiner  reports  that  cer- 
tain claims  contained  in  an  amendment  pre- 
sented under  Rule  78  are  not  patentable,  such 
amendment  will  not  be  entered.  Ex  parte 
Langhaar,  C.  D.  1910,  l.'iO  O.  G.  747. 

VII.  Upon   Recommendation  of  Ex.\miners- 
in-Chief  or  Commissioner. 

183.  Where  the  examiners-in-chief  annex 
to  their  decision  a  recommendation  that  cer- 
tain claims  be  rejected  and  the  examiner  so 
rejects  the  claims.  Held,  that  the  case  is 
thereby  reopened  and  the  applicant  has  a  right 
to  file  amendments  seeking  to  overcome  that 
rejection.  Ex  parte  Burrowes,  C.  D.  1904, 
110  O.  G.  .599. 

184.  The  recommendation  of  a  certain  claim 
by  the  examiners-in-chief  under  Rule  139  (a) 
does  not  act  to  reopen  the  case  for  the  ad- 
mission of  any  claim  other  than  the  one  rec- 
ommended. Ex  parte  Myers,  C.  D.  1905,  119 
O.  G.  9G2. 

185.  Where  claims  which  were  recommend- 
ed by  the  examiners-in-chief  are  rejected  by 
the  primary  examiner  on  new  references,  the 


ANTICIPATION. 


41 


applicant  is  not  entitled  to  amend  the  same  or 
substitute  new  claims  therefor.  Ex  parte 
Myers,  C.  D.  1906,  12:^  O.  G.  l6G:i. 

ANTICIPATION. 

(See  Patents;  Patf.nt.^bility.) 

1.  In  General. 

II.  Patents  and  Printed  Publications. 

III.  Prior  Art. 

IV.  Prior  Use. 

V.  Desicn  P.\tents. 
VI.  Drawings. 

I.  In  General. 

!•  Where  the  patentee  claims  supports  for 
his  belt  which  are  not  parallel,  but  are  placed 
at  an  angle,  without  specifying  any  particular 
angle.  Held,  that  anticipation  is  shown  by  use 
of  supports  at  any  angle,  d  Johnston  v.  Wood- 
bury, C.  D.  1901,  97  O.  G.  402. 

2.  The  necessity  for  refusing  a  patent  to  an 
applicant  is  not  limited  to  cases  where  a  prior 
inventor  makes  claim  before  the  office  to  the 
invention,  but  exists  whenever  that  prior  in- 
vention and  disclosure  in  this  country  are 
satisfactorily  established  by  any  means.  -Ex 
parte  Grosselin,  C.  D.  1901,  97  6.  G.  2977. 

II.  Patents  and  Printed  Publications. 

3.  A  claim  for  a  compound  bar  for  making 
cutting-tools,  consisting  of  an  inner  bar  of 
harder  metal  and  an  inclosed  bar  of  softer 
metal  pressed  on  the  same,  etc.,  contains  noth- 
ing that  is  patentably  new  in  view  of  a  patent 
which  shows  a  bar  of  hard  steel  surrounded 
or  partly  surrounded  by  a  bar  of  softer  steel 
and  another  patent  which  shows  a  bar  for 
cutting-blade  made  by  partly  surrounding  the 
hard  steel  by  iron.  *Bedford  et  al.  v.  Duell, 
Commissioner  of  Patents,  C.  D.  1899,  87  O. 
G.  1011, 

4.  A  method  for  forging  metal  articles  cir- 
cular in  cross-section,  such  as  car-axles,  etc., 
which  forges  the  hot  metal  and  spreads  or 
crowds  away  the  surplus  metal  and  compacts 
the  outer  surface  of  the  article  forged,  Held, 
not  anticipated  by  a  machine  for  making 
leaden  bullets  and  shot  by  rolling  or  forging 
a  piece  of  lead  between  circular  dies  the  edges 
of  which  are  sharpened  to  cut  away  surplus 
metal,  d  Simonds  Rolling-Machine  Company 
v.  Hathorn  Manufacturing  company  et  al., 
C.  D.  1899,  88  O.  G.  20G6. 


5.  Where  a  patent  showing  in  the  drawing 
but  not  describing  or  claiming  the  invention 
was  granted  to  another  three  days  after  the 
appellants'  case  was  filed  on  an  application 
filed  two  years  before  that  time.  Held,  that  the 
appellants'  claims  were  properly  rejected. 
*Millet  and  Reed  v.  Duell,  Commissioner  of 
Patents,  C.  D.  1901,  96  O.  G.  1241. 

6.  A  patent  granted  after  the  appellants' 
filing  date,  but  upon  an  application  filed  be- 
fore, is  evidence  of  the  state  of  the  art  at 
the  time  as  shown  by  the  drawings  and  speci- 
fication of  the  application,  and  it  is  a  state  of 
the  art  and  not  the  existence  of  a  patent  which 
determines  a  party's  right  to  a  patent.     *Id. 

7.  A  patent  is  no  less  an  anticipation  be- 
cause it  does  not  claim  the  invention,  since 
the  failure  to  claim  it  simply  implies  either 
that  he  abandoned  it  to  the  public  or  that  he 
regarded  it  as  already  well  known  to  the  art. 
*Id. 

8.  The  law  is  not  concerned  with  the  iden- 
tity of  the  inventor,  but  merely  with  the  fact 
of  prior  invention,  and  therefore  in  the  case 
of  a  publication  mere  ignorance  of  the  name 
of  the  originator  of  the  matter  described  is 
no  reason  for  granting  a  patent  to  one  subse- 
quent. Ex  parte  Grosselin,  C.  D.  1901,  97  O. 
G.  2977. 

9.  A  full  disclosure  in  a  foreign  patent,  a 
printed  publication,  or  a  United  States  patent 
not  claiming  the  invention  is  conclusive  proof 
that  the  invention  was  known  and  in  the  full 
possession  of  the  public  in  this  country  at  the 
date  of  publication,  and  there  is  nothing  left 
for  which  to  reward  a  person  who  subse- 
quently introduces  the  invention  into  this 
country.     Id. 

10.  Claim  1  of  Patent  No.  .501,.'i:!7,  granted 
to  .'\mos  Perkins  on  July  18,  1893,  for  a  meth- 
od of  repairing  asphalt  pavements.  Held,  in- 
valid because  of  anticipation  by  a  French  pat- 
ent to  Paul  Crochet  and  certain  publications. 
♦♦United  States  Repair  and  Guaranty  Com- 
pany V.  Assyrian  Asphalt  Company,  C.  D. 
1902,  98   O.  G.   582. 

11.  Where  the  specification  of  a  patent 
cited  as  an  anticipation  does  not  state  of  what 
material  the  article  is  composed,  it  cannot 
ordinarily  be  assumed  to  be  of  any  particular 
material.  Ex  parte  Walters,  C.  D.  1907,  130 
O.  G.  148.^. 

12.  Held,  that  a  method  of  covering  playing- 
balls  consisting  of  knitting  separately  a  wrap- 
per leaving  a  slit  therein,  inserting  a  deflated 
rubber  ball  through  said  slit,  closing  the  slit 


42 


ANTICIPATION,  III,  IV. 


by  meshes  of  the  same  material  as  that 
forming  the  cover,  and  finally  inflating  the 
ball  is  anticipated  by  certain  patents  showing 
the  idea  of  covering  inflated  rubber  balls  with 
a  crocheted  or  knitted  cover  and  another  pat- 
ent which  contains  the  idea  of  inserting  a  de- 
flated ball  in  a  cover,  inflating  the  ball,  and 
then  closing  the  aperture.  *In  re  Droop,  C.  D. 
1908,  13.1  O.  G.  517. 

13.  Claims  for  a  bilged  barrel-body  formed 
of  a  wound  sheet  of  paper-pulp,  Held,  unpat- 
entable in  view  of  the  prior  art.  *In  re  Deck- 
er, C.  D.  911,  1G3  O.  G.  999. 

14.  Where  an  article  is  fully  described  in 
a  patent  for  a  machine  designed  to  make  such 
article.  Held,  that  claims  for  the  article  were 
properly  rejected,  whether  the  machine  dis- 
closed in  the  patent  was  operative  or  not. 
*Id. 

15.  Where  claims  are  drawn  broadly  to 
means  for  collecting  and  folding  sheets  in 
a  certain  manner.  Held,  that  these  claims  were 
properly  rejected  in  view  of  a  prior  patent 
which  discloses  diagrammatically  means  adapt- 
ed to  perform  the  functions  set  forth  in  the 
claims.  E.x  parte  Cottrell,  C.  D.  1911,  1G9  O. 
G.  203. 

III.  Prior  Art. 

16.  The  similitude  in  the  invention  relied 
on  as  matter  of  anticipation  with  the  inven- 
tion for  which  a  patent  is  sought  need  not  be 
exact  in  form  or  structure;  but  if  the  in- 
formation contained  therein  is  full  enough 
and  sufficiently  precise  to  enable  any  person 
skilled  in  the  art  to  which  it  relates  to  per- 
form the  process  or  make  the  thing  covered 
by  the  claim  of  invention  sought  to  be  pat- 
ented it  will  be  sufficient  to  establish  the  fact 
of  anticipation  and  want  of  novelty  in  the  al- 
leged invention.  *Bedford  et  al.  v.  Duell, 
Commissioner  of  Patents,  C.  D.  1899,  87  O. 
G.  1611. 

17.  Claims  for  cutting  and  folding  machines 
for  printing-presses.  Held,  properly  rejected 
in  view  of  the  prior  art.  *In  re  Cottrell,  C. 
D.  1911,  1C9  O.  G.  702. 

18.  The  Ashley  patent.  No.  829,752,  for  an 
inkstand  which  is  made  of  glass,  having  a 
square  or  angular  base  and  a  substantially 
flat  top,  with  a  circular  reservoir  therein,  the 
glass  being  turned  in  to  form  a  dome-shaped 
cover  to  the  reservoir,  leaving  an  opening  in 
the  center.  Held,  void  for  lack  of  invention  in 
view  of  the  prior  art.  d  Ashley  v.  Samuel  C. 
Tatum  Co.,  C.  D.  1911,  172  O.  G.  262. 


IV.  Prior  Use. 

19.  The  defense  of  prior  use  should  be  sup- 
ported by  evidence  beyond  a  reasonable  doubt, 
and  the  unsupported  statement  of  a  single 
witness  that  a  machine  embodying  the  inven- 
tion was  constructed  and  put  in  operation  be- 
fore the  application  is  insufficient  when  un- 
accompanied by  any  drawings  or  exhibits 
thereof,  c  Mast,  Foos  &  Co.  v.  Dempster  Mill 
Mfg.  Co.,  C.  D.  1898,  82  O.  G.  338. 

20.  In  estimating  the  amount  of  invention 
in  a  patented  device  the  court  is  bound  to 
assume  that  the  history  of  prior  patents  and 
machines  having  a  bearing  on  the  subject  was 
known  to  the  patentee,  though  in  fact  he  may 
have  been  ignorant  thereof  and  actually  exer- 
cised inventive  faculty,  d  Frederick  R.  Stearns 
&  Co.  V.  Russell,  C.  D.  1898,  84  O.  G.  1434. 

21.  Proof  that  six  pairs  of  cuflf-button  links 
like  those  covered  by  a  patent  were  made  by 
another  prior  to  the  date  of  the  alleged  in- 
vention is  sufficient  to  invalidate  the  patent 
though  they  never  went  into  general  use. 
c  Flomerfelt  v.  Newitter,  C.  D.  1898,  85  O.  G. 
4.58. 

22.  An  infringer  cannot  defeat  Letters  Pat- 
ent of  the  United  States  to  an  original  inven- 
tor in  a  foreign  country  by  proof  that  before 
the  date  of  a  prior  foreign  patent  to  the  same 
inventor,  but  not  before  the  date  of  the  ap- 
plication for  such  patent  and  less  than  two 
years  before  the  date  of  the  application  for 
a  United  tates  patent,  the  invention  was  used 
in  this  country  by  a  person  who  did  not  in- 
vent it.  d  Welsbach  Light  Company  v.  Amer- 
ican Incandescent  Lamp  Company  and  Ber- 
linicke,  C.  D.  1900,  90  O.  G.  960. 

23.  .^s  against  an  infringer  a  patentee  in  a 
United  States  patent  for  an  invention  pre- 
viously made  by  him  and  patented  in  a  for- 
eign country  may,  to  avoid  alleged  use  in  this 
country  by  an  infringer  before  the  date  of  the 
foreign  patent,  show  the  date  of  the  applica- 
tion for  the  foreign  patent  for  the  purpose  of 
showing  the  actual  date  of  his  invention  in  a 
foreign  country,     d  Id. 

24.  Where  a  prior  patent  shows  a  construc- 
tion which  could  be  made  to  operate  as  the 
appellant's  invention,  although  there  is  nothing 
to  indicate  that  the  patentee  contemplated  such 
operation,  but  it  appears  from  the  evidence 
that  parties  using  the  patented  invention  ad- 
justed it  to  secure  the  result  of  the  appellant's 
invention,  Held,  that  the  appellant  cannot  be 


ANTICIPATION  V,  VI— APPEAL,  I,  II,   (a). 


43 


regarded  as  the  first  inventor,     rf  Johnston  v. 
Woodbury,  C.  D.  1901,  97  O.  G.  403. 

25.  While  the  parties  using  the  prior  de- 
vices may  not  have  placed  the  supports  of 
their  belt-frame  at  the  precise  angle  used  by 
the  appellant,  and  while  they  may  not  have 
contemplated  or  specifically  desired  to  obtain 
an  oscillatory  movement  of  the  belt  by  tip- 
ping it  to  the  right  or  to  the  left,  they  still 
obtained  such  tipping,  and  the  result  thereof 
and  what  they  did  must  be  regarded  as  an 
anticipation  of  this  invention,     d  Id. 

V.  Design  Patents. 

26.  A  design  patent  and  a  mechanical  pat- 
ent are  the  subjects  of  two  distinct  monopo- 
lies, and  the  grant  of  one  does  not  preclude 
the  grant  of  the  other.  A  design  patent  is 
therefore  not  a  statutory  bar  to  the  grant  of 
a  mechanical  patent  covering  the  structure  of 
a  device  the  shape  or  configuration  of  which 
is  the  subject  of  the  design  patent.  (Ex  parte 
Palmer,  C.  D.  1882,  5,  21  O.  G.  1111,  cited  and 
Miller  v.  Eagle  Mfg.  Co.,  C.  D.  1894,  147,  66 
O.  G.  845,  distinguished.)  Ex  parte  Jones,  C. 
D.  1898,  84  O.  G.  1281. 

27.  Ex  parte  Jones  (ante,  l.ir,,  84  O.  G. 
1281)  does  not  broadly  decide  that  under  cer- 
tain conditions  a  prior  patent  is  not  a  perti- 
nent reference  against  an  application  for  a 
mechanical  structure.  Ex  parte  McQueen,  C. 
D.  1898,  85  O.  G.  609. 

28.  Whether  or  not  the  design  patent  cited 
against  a  mechanical  application  is  a  pertinent 
reference  is  a  question  that  goes  to  the  merit<i 
and  therefore  must  be  first  determined  on  ap- 
peal by  the  examiners-in-chief.    Id. 

VI.  Drawings. 

29.  Where  it  is  claimed  that  an  application 
filed  by  one  Locke,  to  which  Boch  had  access 
in  the  patent  office,  constitutes  an  anticipa- 
tion of  the  invention,  and  it  appears  that  such 
application  said  nothing  of  the  use  of  an  extra 
amount  of  glaze  or  the  results  now  contem- 
plated, but  merely  showed  the  glaze  by  a 
heavy  black  line  between  the  parts,  Held,  not 
a  disclosure  of  this  invention,  c  R.  Thomas 
&  Sons  Company  v.  Electric  Porcelain  and 
Manufacturing  Company  ct  al.,  C.  D.  1901, 
97  O.  G.  1838. 

30.  Disclosure  in  a  drawing  alone  if  suf- 
ficiently plain  and  clear  may  be  sufficient  to 
show  an  anticipation  of  an  invention.  *Millet 
&  Reed  v.  Duell,  Com.  of  Patents,  C.  D.  1901, 
96  O.  G.  1241. 


31.  Where  the  appellant  claims  a  steam- 
gage  having  a  tapering  end,  so  that  it  may  be 
secured  in  place  without  soldering,  and  the 
reference  shows  a  similar  gage,  but  contains 
no  statement  that  solder  is  not  used,  Held, 
that  the  patent  is  an  anticipation  and  that 
there  is  no  reason  for  assuming  that  the  pat- 
entee intended  to  use  solder  when  it  is  entirely 
unnecessary.    *Id. 


APPEAL. 

(See  Interference;  Appeal.) 

I.  In  General. 
II.  From  Primary  Examiner. 

(a)  Petition  to  Commissioner. 

(b)  Appeal  to  Examiners-in-Chief . 

(c)  Appeal      or     Petition  —  Which 

Proper. 

III.  From  Commissioner  to  Court  of  Ap- 

peals OF  THE  District  of  Columbia. 

IV.  From    Commissioner  to   Secretary  of 

THE  Interior. 
V.  To  United  States  Supreme  Court. 
VI.  Limit  for. 

VI I.  New  Evidence  Presented. 
VIII.  New  Grounds  for  Rejection,  Remand- 
ing TO  Primary  Examiner,  Etc. 
IX.  Piecemeal. 
X.  Premature. 

I.  In  General. 

1.  Although  neither  the  rules  of  the  court 
of  appeals  of  the  District  of  Columbia  nor  of 
the  patent  office  mention  amendments  to  the 
reasons  of  appeal,  when  such  amendment  is 
made  in  due  time  to  correct  an  assignment  of 
error  that  may  not  be  sufficiently  specific  or 
some  inadvertence  in  its  preparation  and  no 
possible  injury  could  be  done  the  opposing 
party  there  appears  to  be  no  reason  why  it 
should  not  be  permitted.  *Horine  v.  Wende, 
C.  D.  1907,  128  O.  G.  2858. 

2.  The  objection  to  the  form  of  an  action 
embodied,  after  verdict,  in  a  motion  for  a 
new  trial  comes  too  late  to  be  available  in 
an  appellate  court.  **.\merican  Tobacco  Com- 
pany V.  Werckmeister,  C.  D.  1908,  133  O.  G. 
1433. 

II.  From  Primary  Examiner. 
(a)  Petition  to  Commissioner. 

3.  A  petition  is  not  properly  brought  under 
Rule  213  where  a  remedy  is  provided  in  the 


44 


APPEAL,  II,  (b),  (c). 


rules    which    precede    said    rule.       Ex    parte 
Waters,  C.  D.  1901,  97  O.  G.  2744. 

4.  A  petition  that  the  examiner  be  instruct- 
ed to  pass  to  issue  a  case  the  claims  of  which 
are  under  rejection  upon  references  is  not 
properly  brought  and  will  be  denied.    Id. 

5.  A  petition  asking  for  no  specific  relief, 
but  merely  that  the  E.xaminer's  actions  be 
reviewed  to  determine  whether  or  not  they 
have  been  of  an  obstructive  character,  Held, 
in  the  nature  of  a  complaint  and  not  proper 
subject-matter  for  petition.     Ex  parte  Lewis, 

C.  D.  1904,  108  O.  G.  5.-)9. 

6.  Remedy  by  petition  applies  only  to  review 
a  particular  action  or  refusal  to  act  where  an 
issue  has  been  reached  between  the  applicant 
and  the  examiner  after  a  full  discussion.     Id. 

7.  A  petition  and  brief  filed  in  a  case  should 
not  include  irrelevant  matter  relating  to  the 
conduct  of  some  officer  or  employee  of  the 
department.  Charges  against  employees 
should  be  presented  separately.  Duryea  and 
White  V.  Rice,  C.  D.  1903,  114  O.  G.  761. 

8.  The  filing  of  petitions  requesting  that  an 
application  be  transferred  from  one  division 
to  another,  which  are  in  the  nature  of  com- 
plaints,   condemned.      Ex   parte    Maynard,    C. 

D.  1908,   137  O.   G.   1940. 

9.  The  impropriety  of  filing  a  petition  from 
the  action  of  the  examiner  and  at  the  same 
time  filing  a  complaint  against  the  examiner 
based  upon  the  same  state  of  facts  is  obvious, 
and  such  a  practice  cannot  be  too  severely 
condemned.  Ex  parte  Eggan,  C.  D.  1911,  172 
O.  G.  1091. 

(b)  Appeal    to    Examiners-in-Chief. 

10.  Where  only  two  members  of  the  board 
of  examiners-in-chief  sat  in  a  hearing  and 
their  opinion  was  divided  as  to  whether  the 
decision  of  the  examiner  of  interferences 
awarding  priority  was  correct.  Held,  that  but 
one  judgment  could  be  entered  by  the  ex- 
aminers-in-chief, and  that  a  judgment  of  af- 
firmance. (Kelly  V.  Miller.  09  MS.  Dec.  139.) 
Adams  v.  Murphy,  C.  D.  1900,  91  O.  G.  2207. 

II-  Although  it  has  long  been  the  custom 
of  the  examiners-in-chief  in  cases  in  which 
two  members  only  are  present  at  the  hearing 
and  those  two  come  to  an  opposite  conclusion 
for  the  third  member  to  consider  the  record 
and  briefs  and  express  the  deciding  opinion, 
Held,  that  the  opinion  of  the  third  member 
of  the  board  rendered  without  giving  the 
parties   an   opportunity   for  rehearing,   if   ad- 


verse to  the  decision  on  which  appeal  was 
taken,  should  have  no  effect  to  change  the 
judgment  of  affirmance  necessarily  entered 
by  reason  of  a  divided  opinion.     Id. 

12.  Where  an  apjieal  is  filed  regular  in  form, 
it  is  the  duty  of  the  examiner  to  answer  the 
appeal  by  furnishing  the  examiners-in-chief 
the  statement  provided  for  in  Rule  135. 
**United  States,  ex  rel.  Steinmetz  v.  Allen, 
Commissioner  of  Patents,  C.  D.  1904,  109  O. 
G.  549. 

13.  Where  in  his  answer  to  an  appeal,  the 
examiner  referred  to  a  prior  decision  of  the 
examiners-in-chief  in  the  case  of  another  ap- 
plicant, Held,  that  such  reference  was  improp- 
er, as  this  case  was  not  open  to  applicant's  in- 
spection. Ex  parte  Morley,  C.  D.  1902,  144, 
99  O.  G.  668.  Ex  parte  Morrison,  C.  D.  1910, 
1.57  O.  G.  1243. 

(c)  Appeal  or  Petition — Which  Proper. 

14.  Although  the  examiner  holds  that  a  pe- 
tition is  not  the  applicant's  proper  remedy, 
he  should,  in  addition  to  raising  the  question 
of  jurisdiction,  set  forth  in  his  answer  the 
reasons  for  his  action,  so  that  if  the  commis- 
sioner reached  a  different  conclusion  on  the 
question  of  jurisdiction  he  would  have  the 
benefit  of  the  examiner's  views  in  passing  on 
the    question    presented.       (Ex    parte    Swan, 

C.  D.  1891,  44,  54  O.  G.  1561.)  Ex  parte  Rus- 
sel,  C.  D.  1898,  84  O.  G.  1871. 

15.  Where  petition  was  taken  from  an  ac- 
tion of  the  examiner  on  the  ground  that  a 
single  reference  had  not  been  cited  showing 
in  combination  all  of  the  features  covered  by 
the  claims,  but  several  references  were  cited 
said  to  show  substantially  the  several  features, 
and  the  claim  was  rejected  on  the  ground  that 
no  invention  was  involved  in  bringing  those 
features  together  in  one  device,  Held,  that  this 
is  a  question  of  merits  which  is  appealable  to 
the  examiners-in-chief  and  cannot  properly 
be  brought  up  on  petition.  Ex  parte  Perkins, 
C  D.  1899,  88  O.  G.  548. 

16.  Where  claims  covering  combinations  be- 
tween a  specific  form  of  vending  apparatus 
and  a  coin-controlled  apparatus  are  rejected 
on  the  ground  that  the  specific  form  of  vend- 
ing apparatus  does  not  affect  the  action  of  the 
coin-controlled   apparatus    (ex  parte  Casler,  C. 

D.  1900,  .5,  90  O.  G.  446),  Held,  that  said  ac- 
tion relates  to  the  merits,  and  an  appeal  there- 
from lies  in  the  first  instance  to  the  examin- 
ers-in-chief, and  a  petition  from  an  action  re- 


APPEAL,  III. 


45 


jecting  the  claims  on  the  ground  that  there 
is  no  such  combination  claimed  should  be  dis- 
missed. Ex  parte  Webber,  C.  D.  1902,  98  O. 
G.  2362. 

17.  Where  the  examiner  has  finally  rejected 
the  claims  on  the  ground  that  they  are  not 
patentable,  Field,  that  his  action  will  not  be  re- 
viewed upon  petition,  but  only  upon  appeal  to 
the  examiners-in-chief.     Ex  parte  Eickelberg, 

C.  D.   1902,  100  O.  G.  2773. 

18.  The  actions  of  the  examiner  in  citing  a 
certain  patent  in  rejecting  the  claims  and  in 
holding  that  the  invention  is  abandoned  will 
not  be  reviewed  upon  petition,  since  they  re- 
late to  the  merits  and  are  appealable  to  the 
examiners-in-chief.      Ex    parte    Parkhurst,    C. 

D.  1902,  100  O.  G.  3012. 

19.  The  ruling  by  the  examiner  that  certain 
descriptive  matter  in  the  claim  does  not  prop- 
erly apply  to  the  device  disclosed  is  a  ruling 
that  the  applicant  is  not  entitled  to  make  the 
claim  and  relates  to  the  merits.     Id. 

20.  Where  an  examiner  finally  rejects  a 
claim  on  the  ground  that  the  showing  made 
under  the  provisions  of  Rule  73  is  not  suf- 
ficient to  establish  the  fact  of  prior  inventor- 
ship, Held,  that  a  review  of  this  decision 
should  be  made  by  the  examiners-in-chief  on 
appeal.  Petition  to  commissioner  dismissed. 
Ex  parte  Nordstrom,  C.  D.  1905,  115  O.  G. 
1327. 

21.  Where  the  examiner  rejects  a  claim  as 
not  patentable  in  view  of  the  allowance  to  the 
applicant  of  another  claim.  Held,  that  the  rem- 
edy is  by  appeal  to  the  examiners-in-chief 
and  not  by  petition.  Ex  parte  Besant,  C.  D. 
190.-.,  116  O.  G.  2531. 

22.  The  question  of  abandonment  of  an  ap- 
plication for  failure  to  prosecute  is  one  which 
is  reviewable  by  the  commissioner  on  petition 
under  Rule  145  and  is  not  appealable  to  the 
examiners-in-chief.  Abandonment  of  an  ap- 
plication must  be  distinguished  from  abandon- 
ment of  invention.  Ex  parte  Springer,  C.  D. 
1906,   120  O.  G.  2754. 

23.  Where  the  examiner  has  objected  to  cer- 
tain passages  in  the  specification  as  being  in- 
accurate, erroneous,  and  misleading,  and  holds 
that  this  ground  relates  to  a  question  of  form, 
not  appealable  to  the  examiners-in-chief,  but 
it  appears  that  the  claim  will  not  read  upon 
the  description  if  amended  in  accordance  with 
the  examiner's  views.  Held,  that  the  objection 
raised  by  the  examiner  applies  with  equal 
force  to  the  description  and  the  claim  and 
that  the  objection  therefore  goes  to  the  merits 


and  may  properly  be  considered  on  appeal  to 
the  examiners-in-chief.  Ex  parte  Brasicr,  C. 
D.    1906,  125   O.   G.  2364. 

24.  Where  an  applicant  asked  for  further 
explanation  of  the  examiner's  reasons  for  re- 
jection, stating  that  he  did  not  feel  that  he 
had  obtained  from  the  examiner  "all  his  rea- 
sons or  any  good  reasons  for  the  rejection," 
and  the  examiner  stated  that  he  had  no  other 
reasons,  and  it  appeared  that  the  reasons  al- 
ready given  were  stated  clearly  and  sufficient- 
ly. Held,  that  the  question  whether  "good  rea- 
sons for  rejection"  had  been  given  should  be 
determined  in  the  first  instance  on  appeal  to 
the  examiners-in-chief.  Ex  parte  Delavoye, 
C.  D.  1906,  124  O.  G.  626. 

25.  It  is  self-evident  that  an  examiner  should 
follow  the  decisions  of  the  higher  tribunals 
whether  he  agrees  with  them  or  not ;  but 
where  the  examiner  holds  that  a  decision  is 
not  applicable  to  a  given  case  the  proper  man- 
ner in  which  to  have  his  decision  reviewed 
is  by  appeal  to  the  examiners-in-chief  in  the 
first  instance  and  not  by  a  petition  to  the 
commissioner.  Ex  parte  Konold,  C.  D.  1708, 
133  O.  G.  2189. 

26.  Whether  claims  arc  drawn  to  incom- 
plete and  inoperative  combinations  and  wheth- 
er the  references  are  pertinent  are  questions 
relating  to  the  merits  and  are  reviewable  in 
the  first  instance  by  the  examiners-in-chief. 
Ex  parte  Leon,  C.  D.  1911,  164  O.  G.  250. 

III.  From    Commissioner   to    Court  of   Ap- 
peals OF  THE  District  of  Columbia. 

27.  The  act  of  congress  approved  February 
9,  1S93,  which  gave  the  court  of  appeals  of  the 
District  of  Columbia  the  power  to  review  the 
decisions  of  the  commissioner  of  patents,  is 
such  an  act  as  congress  was  authorized  to  pass 
under  the  constitution,  and  in  the  matter  of 
such  appeal  no  encroachments  of  the  judicial 
department  of  the  government  on  the  domain 
of  the  executive  department  are  found  to 
justify  the  courts  in  holding  that  the  act  in 
question  is  unconstitutional.  **Unitcd  States, 
ex  rel.  Bernardin  v.  Duell,  Commissioner  of 
Patents,   C.   D.   1899,  86  O.  G.  995. 

28.  The  principles  applicable  to  the  pro- 
ceedings in  the  patent  office  are  so  nearly  akin 
to  judicial  proceedings  as  to  be  most  prop- 
erly designated  as  quasi-judicial,  and  it  is 
only  by  regarding  these  proceedings  as  such 
that  the  validity  of  the  legislation  which  au- 
thorizes appeals  to  the  court  of  appeals  from 


46 


APPEAL,  IV. 


the  decision  of  tiie  commissioner  of  patents 
can  be  sustained.  *Barratt  v.  Duell,  Commis- 
sioner of  Patents,  C.  D.  1899,  87  O.  G.  1075. 

29.  The  court  will  not  entertain  a  reason  of 
appeal  founded  upon  a  motion  for  rehearing 
in  the  patent  office.  *Greenwood  v.  Dover, 
C.  D.  1904,  109  O.  G.  2172. 

30.  The  court  will  not  consider  affidavits 
filed  either  in  the  court  or  the  patent  office 
relating  to  changes  that  may  have  occurred 
in  drawings,  models,  experimental  machines, 
and  like  exhibits  after  they  are  introduced  in 
evidence.    *Id. 

31.  "The  commissioner  of  patents  in  passing 
upon  applications  or  deciding  controversies 
between  rival  applicants  for  patent  of  the 
same  invention,  exercises  power  that  is  essen- 
tially judicial.  For  that  reason  congress  has 
the  power  to  provide  for  a  review  of  his  de- 
cisions by  appeal  to  the  courts."  *Moore  v. 
United  States,  ex  rel.  Lindmark,  C.  D.  1909, 
149  O.  G.  310. 

32.  The  jurisdiction  of  the  court  of  appeals 
of  the  District  of  Columbia  to  entertain  ap- 
peals from  the  decisions  of  the  commissioner 
of  patents  in  proceedings  relating  to  patents 
is  limited  to  two  classes  of  cases — (1)  where 
the  claims  of  an  application  for  a  patent  or 
the  reissue  of  a  patent  after  having  been  twice 
rejected  have  been  finally  rejected  on  appeal 
to  the  commissioner  in  due  course  of  proce- 
dure; (2)  where  on  appeal  to  the  commis- 
sioner in  an  interference  proceeding  there  has 
been  a  final  decision  on  priority  in  favor  of 
one  of  the  parties  thereto.  (Rev.  Stat.,  sees. 
4909,  4910,  4911;  Westinghouse  v.  Duncan,  C. 
D.  1894,  170,  6G  O.  G.  1009,  2  App.  D.  C.  131, 
132;  Allen  v.  Lowry,  C.  D.  1905,  643,  116  O. 
G.  2253,  26  App.  D.  C.  8,  17,  26;  Union  Dis- 
tilling Co.  V.  Schneider,  C.  D.  1907,  613,  129 
O.  G.  2503,  29  App.  D.  C.  1.)  In  re  Fallagar, 
C.   D.   1909,  138  O.  G.  259. 

33.  Where  appeal  is  taken  to  the  court  of 
appeals  of  the  District  of  Columbia  from  the 
decision  of  the  commissioner,  that  court  has 
no  jurisdiction  to  review  the  decision  of  the 
examiners-in-chief  allowing  certain  claims. 
*In  re  Luten,  C.  D.  1909,  143  O.  G.  1110. 

34.  The  Act  of  Congress  of  June  25,  1910, 
allowing  the  prosecution  or  defense  of  suits 
or  actions  in  the  courts  of  the  United  States 
and  appeals  to  the  circuit  court  of  appeals 
and  to  the  Supreme  Court  of  the  United 
States  ill  forma  paut^eris  upon  certain  condi- 
tions therein  prescribed  is  not  applicable  to 
appeals  from  the  decisions  of  the  commission- 


er of  patents  to  the  court  of  appeals  of  the 
District  of  Columbia,  since  such  an  appeal  is 
not  in  a  suit  or  action  and  the  patent  office  is 
not  a  court  of  the  United  States.  *In  re  Meta 
Maltulath,  Administratrix  of  Hugo  Mattu- 
lalb,  Dcc'd.,  C.  D.  1911,  173  O.  G.  1082. 

IV.  From  Commissioner  to  Secretary  of  the 

Interior. 

35.  The  decision  of  the  commissioner  of 
patents  in  placing  the  burden  of  proof  in  an 
interference  case  is  not  the  act  of  an  admin- 
istrative officer  and  purely  ministerial  in  its 
nature,  but  is  the  act  of  a  judicial  officer,  and 
therefore  the  Secretary  of  the  Interior  is 
without  jurisdiction  or  authority  over  the 
matter   presented   to  him  by   appeal.     fPoole 

V.  Avery,  C.  D.  1899,  87  O.  G.  357. 

36.  An  appeal  to  the  Secretary  of  the  In- 
terior from  the  decision  of  the  commissioner 
of  Patents  refusing  to  indorse  a  certificate 
of  correction  upon  a  patent  because  of  an  al- 
leged mistake  by  the  patent  office  dismissed 
for  the  reason  that  the  decision  was  a  judicial 
determination  by  the  commissioner,  fin  re 
Maconochie  Solderless  Tinning  Company,  C. 
D.  1902.  99  O.  G.  1173. 

37.  The  question  whether  a  certificate  of 
correction  shall  be  indorsed  upon  a  reissue 
patent  imposes  the  duty  of  deciding  in  the 
first  place  whether  the  reissue  was  improperly 
granted  and  if  so  in  what  the  error  consists. 
These  are  judicial  questions  not  subject  to 
superintendence  and  direction  by  the  Secretary 
of  the  Interior,    fid. 

38.  It  is  a  familiar  rule  that  the  head  of 
the  department  will  not  interfere  with  the  of- 
ficers in  charge  of  its  bureaus  in  their  admin- 
istration of  rules  of  practice  prescribed  for 
the  orderly  transaction  of  its  business  unless 
an  abuse  of  discretion  by  such  officers  is 
shown,  and  this  is  especially  true  of  the  pat- 
ent office,  where  the  statutes  prescribe  other 
means  for  protecting  the  rights  of  parties. 
Davis  v.  Garrett,  C.  D.  1904,  112  O.  G.  1211. 

39.  Upon  appeal  to  the  Secretary  of  the  In- 
terior from  an  action  by  the  commissioner  of 
patents  where  no  provision  of  law  or  rule  of 
practice  has  been  violated  the  statement  of  the 
commissioner  of  patents  that  the  case  is  not 
an  exceptional  one  should  be  accepted  as  final, 
fin  re  Wenzelmann  and  Overholt,  C.  D.  1906, 
123  O.  G.  995. 

40.  Where  an  appeal  was  taken  to  the  Sec- 
retary of  the   Interior   from  the   decision  of 


APPEAL,  V,  VI,  VII. 


47 


the  commissioner  of  patents  refusing  to  set 
aside  the  action  of  the  examiner  of  inter- 
ferences extending  the  time  for  final  hearing 
in  an  interference  where  the  printed  copies 
of  the  junior  party's  testimony  had  been 
filed  less  than  forty  days  before  the  date  of 
hearing  originally  set,  Held,  that  "it  might 
well  be  held  upon  the  uniform  decision  of  the 
court  and  this  department  that  this  appeal 
does  not  lie."  (Butterworth  v.  Hoe,  C.  D. 
1884,  429,  29  O.  G.  615,  113  U.  S.  50;  Knight 
V.  Bagnall  v.  Curtis  v.  Morgan,  C.  D.  1896, 
10!),  76  O.  G.  1115,  13  Op.  Asst.  Atty.-Gen. 
18.'!;  and  the  decision  of  Assistant  Attorney- 
General  Van  Devanter  in  Poole  v.  Avery,  C. 
D.  isno,  255,  87  O.  G.  357,  14  Op.  Asst.  Atty.- 
Gen.  177.)  tDunkley  v.  Beekhuis,  C.  D.  1910, 
158  O.  G.  886. 

V.  To  United  States  Supreme  Court. 

41.  No  writ  of  error  or  appeal  to  the  Su- 
preme Court  will  be  allowed  from  the  decision 
of  the  court  of  appeals  of  the  District  of 
Columbia  on  an  appeal  from  the  patent  of- 
fice. *Rousseau  v.  Brown,  C.  D.  1903,  104 
O.  G.  1122. 

42.  The  statutes  relating  to  appeals  from 
the  patent  office  do  not  provide  for  the  entry 
of  final  judgments,  and  the  right  of  appeal 
to  the  Supreme  Court  exists  only  where  final 
judgments  are  entered.    *Id. 

43.  A  decision  of  the  court  of  appeals  of 
the  District  of  Columbia  on  an  appeal  from 
the  commissioner  of  patents  is  not  "final" 
within  the  meaning  of  section  8  of  the  act  of 
February  9,  1893  (27  Stat.  434,  436,  c.  74), 
and  therefore  is  not  appealable  to  the  Supreme 
Court  of  the  United  States.  **Frasch  v. 
Moore,  C.  D.  1908,  137  O.  G.  230. 

44.  The  ruling  in  Frasch  v.  Moore 
(C.  D.  1908,  609,  137  O.  G.  230,  211 
U.  S.  1),  followed  to  the  effect  that  deci- 
sions of  the  court  of  appeals  of  the  District 
of  Columbia  on  appeals  from  the  commis- 
sioner of  patents  are  not  appealable  to  the 
Supreme  Court  of  the  United  States.  **John- 
son  V.  Mueser,  C.  D.  1909,  145  O.  G.  767. 

VI.  Limit  For. 

45.  Held,  further,  that  the  appeal  cannot  be 
maintained,  as  it  was  not  taken  from  the  orig- 
inal decision  of  the  commissioner  of  Febru- 
ary 28,  1891,  refusing  the  reissue  of  the  pat- 
ent, either  to  the  Supreme  Court  of  the  Dis- 
trict of  Columbia  or  to  the  court  of  appeals 


of  the  District  of  Columbia,  within  the  limits 
prescribed  by  the  rule  of  the  court  of  appeals 
after  the  rule  was  adopted.  *Messenger  v. 
The  Commissioner  of  Patents,  C.  D.  1898,  83 
O.  G.  1995. 

46.  Where  the  decision  of  the  commissioner 
of  patents  appealed  from  to  the  court  of  ap- 
peals of  the  District  of  Columbia  was  dated 
December  10,  1898,  but  entry  was  not  made 
on  the  file-wrapper  until  December  12,  1898, 
when  the  notice  of  the  decision  was  sent  to 
appellant,  and  appeal  was  taken  to  the  court 
on  January  20,  1899,  Held,  that  the  appeal 
was  taken  too  late  under  Rule  XX  of  the  court, 
which  requires  an  appeal  to  be  taken  within 
forty  days  from  the  date  of  the  decision  of 
the  commissioner,  and  not  afterward.  ♦Bur- 
ton V.  Bentley,  C.  D.  1899,  87  O.  G.  3326. 

47.  The  rule  limiting  the  time  of  appeal 
from  the  decision  of  the  commissioner  to  the 
court  has  no  reference  to  the  notice  of  the 
decision  given  to  appellant.  It  is  from  the 
date  of  the  decision  that  the  time  for  taking 
the  appeal  must  be  reckoned,  and  not  from 
the  time  of  sending  notice  of  the  decision  to 
the  party  against  whom  it  is  made.    *Id. 

48.  The  terms  of  the  rule  must  be  allowed 
their  ordinary  meaning  and  import,  and  they 
plainly  limit  the  commencement  of  the  period 
of  forty  days  within  which  an  appeal  can  be 
taken  from  the  date  of  the  decision  appealed 
from,  excluding  the  day  of  the  date.  (Bemis 
V.  Leonard,  116  Mass.  502,  and  Sheets  v. 
Shcldcn,  2  Wall.  189,  cited.)     *Id. 

49.  Where  it  is  not  pretended  that  appellant 
has  been  surprised  or  in  any  manner  preju- 
diced by  computing  the  time  of  taking  the 
appeal,  as  he  has  had  ample  time  within  which 
to  appeal,  and  as  he  has  thought  proper  to 
delay  the  appeal  until  after  the  time  for  taking 
it  had  elapsed,  Held,  that  he  has  no  one  to 
blame  but  himself,  and  the  appeal  must  be 
dismissed.    *Id. 

VII.  New  Evidence  Presented. 

50.  The  practice  of  attempting  to  make  a 
showing  before  appellate  tribunals  of  addi- 
tional facts  not  before  the  tribunal  from  whom 
the  appeal  is  taken  condemned.  McHarg  v. 
Schmidt  and  Mayland,  C.  D.  1903,  105  O.  G. 
263. 

51.  No  evidence  should  be  considered  on 
appeal  which  was  not  presented  for  considera- 
tion to  the  tribunal  from  whose  decision  the 
appeal  is  taken.    Id. 


48 


APPEAL.  VIII. 


VIII.  New    Ground    for    Rejection,    Re- 
manding TO  Primary  Examiner,  Etc. 

52.  The  rulings  on  questions  of  mere  prac- 
tice in  the  patent  office  will  not  be  reviewed 
in  this  court  unless  it  appears  that  there  has 
been  an  abuse  in  the  exercise  of  discretion  and 
that  substantial  rights  have  been  thereby  af- 
fected or  denied.  The  practice  of  refusal  by 
the  commissioner  to  remand  a  case  to  the  pri- 
mary examiner  is  settled  by  the  decisions  of 
the  patent  office.  *Marshutz  v.  Commissioner 
of  Patents,  C.  D.  1898,  85  O.  G.  778. 

53.  Where  the  only  question  before  the  cx- 
aminers-in-chicf  was  that  of  aggregation, 
Held,  that  under  the  rule  their  decision  should 
have  been  confined  to  that  question,  and  that 
if  in  their  opinion  the  claims  appealed  to  them 
were  not  allowable,  in  view  of  the  prior  pat- 
ent, they  should  have  called  attention  to  this 
matter,  with  the  proper  recommendation  an- 
nexed to  their  decision.  Ex  parte  Russell,  C. 
D.  1900,  90  O.  G.  750. 

54.  While  it  is  true  that  this  office  is  not 
a  court,  yet  their  are  certain  rules  promul- 
gated for  the  conduct  of  proceedings  in  the 
office,  and  the  fewer  the  departures  from  a 
positive  rule  of  procedure  the  less  chance 
there  is  of  confusion  in  the  practice  and  of 
cause  for  complaint  by  parties  practicing  be- 
fore it.  If  such  a  rule  be  wrong,  it  should 
be  amended  by  the  proper  authorities  and  not 
ignored.     Id. 

55.  Where  the  only  ground  on  which  the 
primary  examiner  refused  the  claims  was  that 
of  aggregation,  and  this  was  the  only  ground 
on  which  appeal  or  petition  was  taken,  and 
was  the  only  point  discussed  by  appellant  when 
the  case  was  carried  from  the  primary  ex- 
aminer; but  the  appellate  tribunals  held  that 
the  claims  did  not  define  a  combination,  and, 
again,  that  they  w-ere  not  for  a  patentable 
combination,  on  appeal  to  the  commissioner 
from  the  examiners-in-chief.  Held,  that  it  is 
better  not  to  pass  upon  the  patentability  of 
the  appealed  claims,  and  the  decisions  hereto- 
fore made  on  the  claims  are  set  aside  and  the 
case  remanded  to  the  primary  examiner  to 
consider  the  claims  again,  so  that  the  case 
may  proceed  in  accordance  with  the  rules. 
Id. 

56.  Where  an  applicant  appealed  a  claim 
to  the  examiners-in-chief  for  a  process  and 
they  affirmed  the  action  of  the  examiner  in  re- 
jecting the  claim,  but  recommended  the  allow- 
ance of  a  claim  for  an  implement.  Held,  that 


they  exceeded  their  jurisdiction  in  making 
such  recommendation.  Ex  parte  Aberli,  C.  D. 
1900,  91  O.  G.  2371. 

57.  The  rule,  139  (o,)  which  provides  that 
should  the  examincrs-in-chief  discover  any 
apparent  ground  not  involved  in  the  appeal  for 
granting  or  refusing  letters  patent  in  the  form 
claimed  they  may  annex  to  their  decision  a 
statement  to  that  effect,  with  such  recommen- 
dation as  they  make  deem  proper,  was  not  in- 
tended to  permit  such  recommendation  to  go 
as  far  as  saying  that  after  an  applicant  has 
prosecuted  claims  for  one  class  of  inventions 
he  should  be  permitted  to  shift  his  ground  and 
introduce  claims  for  another  class  of  inven- 
tions.    Id. 

58.  Where  the  cxamincrs-in-chicf  believe 
that  an  applicant  may  make  a  claim  for  a  dif- 
ferent statutory  class  than  that  appealed  to 
them,  claims  based  on  such  suggestion  should 
be  presented  in  a  separate  application.     Id. 

59.  The  practice  of  an  examiner  in  his  first 
action  suggesting  to  an  applicant  that  the 
claims  are  in  the  wrong  form  is  not  objec- 
tionable, but  this  is  not  the  case  here.    Id. 

60.  Rulings  and  recommendations  made  by 
the  examiners-in-chief  on  matters  not  strictly 
and  regularly  before  them  for  decision  should 
be  very  persuasive  upon  the  examiner  and 
should  be  followed  where  any  doubt  exists  in 
his  mind;  but  they  are  not  absolutely  binding 
upon  him  to  such  an  extent  that  he  must  fel- 
low them  without  exercising  his  discretii", 
as  in  the  case  of  the  matter  directly  before 
them  for  decision.  (Painter  v.  Hall,  C.  D. 
1897,  43,  80  O.  G.  1124.)  Ex  parte  Christen- 
sen,  C.  D.  1900,  92  O.  G.  1619. 

61.  A  patent  cited  as  a  reference  is  merely  a 
piece  of  evidence,  and  statements  made  by  the 
examiners-in-chief  in  regard  to  it  in  a  deci- 
sion do  not  make  the  construction  to  be  placed 
upon  it  res  adjudieata,  and  it  is  not  believed 
that  it  is  to  the  interest  of  good  practice  for 
the  examiners  to  feel  themselves  bound  to 
follow  such  statements  without  exercising  dis- 
cretion in  all  cases  that  thereafter  arise  in- 
volving in  any  way  the  question  what  that 
patent  shows.     Id. 

62.  Where  on  appeal  to  the  examiners-in- 
chief  they  stated  that  the  device  shown  in  a 
reference  cited  operated  in  a  certain  way. 
Held,  that  the  examiner  is  not  bound  by  that 
interpretation  of  the  reference  in  another  case 
presenting  different  claims  where  he  is  hon- 
estly of  the  opinion  that  the  statement  was 
made  under  a  misapprehension  and  would  not 


APPEAL,  VIII. 


49 


be  adhered  to  if  the  matter  again  came  before 
them.     Id. 

63.  In  the  case  of  ex  parte  Aberli  (C.  D. 
1900,  9.5,  91  O.  G.  2371)  the  invention  was 
claimed  as  a  method.  There  was  never  any 
question  but  that  the  method  was  a  patentable 
method  if  the  state  of  the  art  so  warranted. 
In  such  a  case  it  would  be  manifestly  improper 
to  change  from  the  prosecution  of  one  statu- 
tory invention  to  another  in  the  same  applica- 
tion either  before  or  after  appeal,  and  there- 
fore no  recommendation  should  be  made  by 
the  examiners-in-chief.  It  would  serve  no 
useful  purpose  to  do  so.  In  the  present  case 
it  was  from  the  beginning,  as  shown  by  the 
record,  the  opinion  of  the  examiner  and  also 
the  opinion  of  the  examiners-in-chief  on  ap- 
peal that  the  claims  presented  were  wrong  in 
form,  that  they  did  not  cover  the  invention, 
in  that  the  invention  in  fact  belonged  to  a 
different  statutory  class  of  invention  from 
the  class  indicated  by  the  claims  on  their  face. 
In  cases  such  as  the  one  here  presented  a 
change  in  the  form  of  a  claim  may  be  per- 
mitted by  the  examiner  when  the  case  is  be- 
fore him,  or  a  suggestion  to  that  effect  may  be 
made  by  the  examiners-in-chief  under  the 
provisions  of  Rule  139  (o)  in  order  that  an 
applicant  may  be  allowed  to  properly  claim 
the  invention  when  the  claim  as  first  present- 
ed because  of  its  form  does  not  in  fact  cover 
the  invention  sought  to  be  patented.  Ex  parte 
Trcvettc,  C.  D.  1901,  97  O.  G.  1173. 

64.  As  it  is  proper  practice  for  an  exam- 
iner to  suggest  to  an  applicant  that  his  claims 
are  wrong  in  form  and  do  not  properly  cover 
the  invention,  it  follows  that  it  would  be 
proper  for  the  examiners-in-chief  to  make  a 
suggestion  to  that  effect  when  on  the  consid- 
eration of  claims  on  appeal  they  become  con- 
vinced that  the  applicant  has  made  an  inven- 
tion, but  has  claimed  it  in  a  wrong  form,  and 
that  it  should  be  claimed  in  another  form. 
(Rule  139  [a].)  This  fact  should  be  distinct- 
ly stated  by  the  examiners-in-chief  in  their 
decision  when  making  a  suggestion  as  to  the 
form  of  the  claims  which  in  their  opinion 
present  patentable  subject-matter.    Id. 

65.  This  suggestion  is  subject  to  the  same 
respect  on  the  part  of  the  applicant  and  the 
examiner  as  other  suggestions  made  by  the 
examiners-in-chief  under  the  provisions  of 
Rule  139  (a).  (Ex  parte  Dysart,  C.  D.  1886, 
4,  34  O.  G.  1390;  ex  parte  Pearson,  C.  D.  1887, 
36,  40  O.  G.  244.)     Id. 

4 


66.  Where  in  a  decision  of  the  examiners- 
in-chief  affirming  the  rejection  of  the  claims 
by  the  primary  examiner  a  statement  occurs 
in  the  body  of  said  decision  pointing  out  a 
difference  between  the  construction  of  the  de- 
vice claimed  and  the  construction  of  the  de- 
vice shown  in  the  reference  and  no  opinion  is 
expressed  by  the  examiners-in-chief  that  the 
claims  if  limited  to  this  difference  of  con- 
struction would  be  allowable,  Held,  that  said 
reference  in  the  decision  to  the  differences  of 
construction  unaccompanied  by  a  recommen- 
dation is  not  such  an  action  as  is  provided 
for  in  Rule  139  (a)  and  that  the  application 
is  without  the  jurisdiction  of  the  examiner 
and  his  action  in  refusing  to  enter  an  amend- 
ment containing  limited  claims  was  correct. 
Ex  parte  Leblanc,  C.  D.  1902,  98  O.  G.  225. 

67.  If  the  examiner  discovers  new  reasons 
for  rejection  after  appeal  has  been  taken,  he 
should  direct  the  attention  to  it  of  both  the 
appellant  and  the  examiners-in-chief.  The 
appellant  may  then  elect  to  proceed  with  the 
appeal,  or  to  withdraw  it.  (Ex  parte  Mevey, 
C.  D.  1891,  115,  56  O.  G.  805.)  Ex  parte  Dolan, 
C.  D.   1902,  99  O.  G.  2321. 

68.  Where  after  appeal  to  the  commissioner 
the  case  is  remanded  to  the  examiner  to  con- 
sider new  references  and  the  claims  are 
amended  in  view  of  those  references,  but  are 
rejected,  Held,  that  the  applicants'  remedy 
is  by  appeal  to  the  examiners-in-chief  and 
not  by  petition  to  the  commissioner.  Ex  parte 
Warman  and  Winter,  C.  D.  1904,  109  O.  G. 
2442. 

69.  Where  an  examiner  refuses  to  forward 
an  appeal  after  final  rejection,  urging  that 
there  are  new  reasons  for  rejection.  Held,  that 
the  appeal  should  be  forwarded  and  the  at- 
tention of  both  the  applicant  and  examiners- 
in-chief  directed  to  such  new  grounds  of  re- 
jection. Ex  parte  Teller,  C.  D.  1904,  113  O. 
G.  548. 

70.  After  the  attention  of  the  applicant  has 
been  directed  to  such  new  reasons  of  rejec- 
tion he  may  then  elect  to  continue  the  prose- 
cution of  the  appeal  or  to  withdraw  the  ap- 
peal and  be  heard  by  the  primary  examiner. 
Id. 

71.  Where  an  appeal  has  been  taken  to  the 
examiners-in-chief  and  the  examiner  discov- 
ers a  new  reason  for  rejection,  the  proper 
practice  for  the  examiner  to  follow  is  to  di- 
rect the  attention  to  it  of  both  the  applicant 
and  the  examiners-in-chief.  The  applicant 
may  thereupon  continue  to  prosecute  the  ap- 


so 


APPEAL,  VIII. 


plication  as  though  a  new  reference  had  been 
cited  before  the  appeal  had  been  taken,  or  he 
may  continue  the  prosecution  of  the  appeal. 
Ex  parte  Williams,  C.  D.  1905,  116  O.  G.  298. 

72.  Where  a  reference  was  discovered  by 
the  office  subsequent  to  a  hearing  by  the  com- 
missioner on  an  ex  parte  appeal  from  a  deci- 
sion of  the  examiners-in-chief  affirming  a  re- 
jection by  the  primary  examiner,  decision  on 
the  appeal  was  suspended  for  thirty  days  and 
applicant  was  notified  that  he  might  amend 
or  take  other  action  in  view  of  the  citation 
within  the  time  stated,  that  a  failure  to  amend 
within  the  time  would  amount  to  a  waiver 
of  the  right  to  amend,  and  that  upon  failure 
to  act  a  decision  would  be  rendered  upon 
consideration  of  the  old  and  the  new  refer- 
ences. He  was  further  notified  that  if  he 
did  not  desire  to  amend  a  rehearing  would 
be  granted  for  argument  upon  the  new  ref- 
erence upon  request  therefor.  Ex  parte  For- 
tuny,  C.  D.  1907,  138  O.  G.  886. 

73.  The  recommendation  of  the  examiners- 
in-chief  under  Rule  139  that  in  their  opinion 
claims  are  not  patentable  in  binding  upon  the 
primary  examiner,  and  he  should  enter  a  /to 
forma  rejection  of  such  claims  upon  the 
grounds  stated  by  the  examiners-in-chief.  If 
the  examiner  is  of  the  opinion  that  the  claims 
should  be  rejected  for  any  other  reasons  they 
should  also  be  stated  in  his  letter  of  rejection. 
Ex  parte  Shaw,  C.  D.  1907,  129  O.  G.  2857. 

74.  Where  an  examiner  in  his  statement  on 
appeal  raises  a  new  ground  for  rejection  for 
the  first  time  and  offers  applicant  an  oppor- 
tunity to  withdraw  his  appeal  in  view  of  that 
fact,  which  applicant  declines  to  do,  it  is  too 
late  to  raise  an  objection  on  appeal  to  th» 
court  of  appeals  that  he  was  deprived  of  the 
opportunity  to  amend  his  claims  after  the 
citation  of  such  reference.  *In  re  Blackmore, 
C.  D.  1909,  140  O.  G.  1209. 

75.  Where  the  examiners-in-chief  stated 
that  a  claim  was  patentable  over  the  refer- 
ences cited  against  it,  but  recommended  that 
ii  be  rejected  upon  another  reference,  and  the 
examiner  rejected  the  claim  on  this  reference. 
Held,  that  while  this  action  reopened  the  case 
such  reopening  was  merely  as  to  the  subject- 
matter  of  the  rejected  claim.  Ex  parte  Die- 
terich,  C.  D.  1909,  142  O.  G.  568. 

76.  Where  on  appeal  from  the  rejection  of 
certain  claims  the  examiners-in-chief  hold 
that  the  references  cited  are  insufficient  to  an- 
ticipate the  claims,  but  call  attention  to   cer- 


tain other  references  and  suggest  that  the  ex- 
aminer reject  the  claims  thereon  and  the  ex- 
aminer does  so  reject  the  claims,  Held,  that 
appeal  from  this  action  lies  to  the  examiners- 
in-chief  in  the  first  instance.  Ex  parte  Mot- 
singer.  C.  D.  1909,  143  O.  G.  1110. 

77.  Where  the  examincrs-in-chicf  affirm  the 
action  of  the  primary  examiner  as  to  certain 
of  the  appealed  claims,  but  reverse  his  action 
as  to  others  and  include  in  their  decision  a 
recommendation  that  the  latter  claims  be  re- 
jected. Held,  that  an  appeal  from  the  deci- 
sion of  the  examiners-in-chief  so  far  as  it 
affirmed  the  action  of  the  primary  examiner 
will  not  be  considered  until  the  patentability 
of  the  other  claims  is  determined  or  they  are 
brought  up  on  appeal.  Ex  parte  Noyes,  C.  D. 
1910,  158  O.  G.  227. 

78.  Where  the  examiners-in-chief  recom- 
mend, under  Rule  139,  that  in  their  opinion 
certain  claims  are  not  patentable,  such  recom- 
mendation is  binding  upon  the  primary  ex- 
aminer, and  he  should  enter  a  rejection  in  ac- 
cordance therewith.  (Ex  parte  Shaw,  C.  D. 
1907,  222,  129  O.  G.  2857.)  Ex  parte  White, 
C.  D.  1910,  157  O.  G.  1243. 

79.  Where  claims  which  were  recommended 
by  the  examiners-in-chief  are  rejected  by  the 
primary  examiner  on  new  references,  the  ap- 
plicant is  entitled  to  amend  the  same  or  sub- 
stitute new  claims  therefor,  provided  they  are 
directed  to  the  same  invention  as  that  cov- 
ered by  the  rejected  claims.  Ex  parte  Lind- 
sey,  C.  D.   1910,  156  O.  G.  1057. 

80.  Where  in  a  decision  affirming  the  action 
of  the  primary  examiner  the  examiners-in- 
chief  refer  to  a  new  reference  as  showing 
certain  features  of  the  claims  not  disclosed 
in  the  references  of  record,  Held,  that  the 
applicant  is  entitled  to  further  prosecution 
of  the  case  before  the  primary  examiner.  Ex 
parte  Wade,  C.  D.  1910,  158  O.  G.  704. 

81.  Where  the  examiners-in-chief  reversed 
the  action  of  the  primary  examiner  holding 
that  three  claims  were  unpatentable,  but  sug- 
gested that  these  claims  were  not  patentably 
different  and  that  but  one  of  them  should  be 
allowed,  Held,  that  the  examiner  properly  in- 
formed applicant  that  only  one  of  these  claims 
could  be  allowed.  Ex  parte  Bremaker  and 
Eggers,  C.  D.  1910,  150  O.  G.  269. 

82.  Where  in  his  answer  to  an  appeal  the 
examiner  after  giving  his  reasons  for  his 
rejection  refers  to  an  argument  of  applicant 
and  states  that  even  if  the  claim  contained  the 


APPEAL,  IX,  X. 


51 


limitation  referred  to  therein  it  would  not  be 
patentable  in  view  of  a  certain  patent  of 
record,  Held,  that  this  does  not  constitute  the 
citation  of  a  new  reference  against  the  claim. 
Ex  parte  Scott,  C.  D.  1911,  166  O.  G.  983. 

83.  Where  the  examiners-in-chief  recom- 
mended that  certain  claims  be  rejected  upon 
new  grounds  stated  by  them.  Held,  that  the 
action  of  the  examiner  in  rejecting  the  claims 
upon  the  return  of  the  case  to  him  for  the  rea- 
sons stated  in  the  decision  of  the  examiners- 
in-chief  was  clearly  a  proper  one,  and  since 
it  was  a  new  ground  of  rejection  it  reopened 
the  case  for  further  prosecution  as  to  the 
subject-matter  of  rejected  claims.  Ex  parte 
Luten,  C.  D.  1911,  170  O.  G.  482. 

IX.  Piecemeal. 

84.  Construing  all  of  the  rules  together,  a 
party  is  not  entitled  to  take  an  appeal  to  the 
cxaminers-in-chief  merely  because  some  of 
his  claims  have  been  twice  rejected  for  the 
same  reasons,  but  only  after  all  of  the  claims 
have  been  finally  acted  upon  by  the  examiner. 
Ex  parte  Brown,  C.  D.  1902,  98  O.  G.  1705. 

85.  It  piecemeal  appeals  to  the  examiners- 
in-chief  were  permitted,  the  greatest  delay 
and  confusion  would  result,  and  it  would  be 
practically  impossible  to  close  the  considera- 
tion of  cases  before  the  oflSce.  It  is  the  pur- 
pose of  the  rules  to  expedite  the  determina- 
tion of  cases.     Id. 

86.  Where  several  claiins  in  a  case  are 
under  final  rejection  and  the  case  is  in  condi- 
tion for  appeal  and  the  applicant  files  his 
appeal  on  a  part  only  of  the  rejected  claims, 
the  appeal  should  not  be  forwarded,  since 
applicant  should  appeal  on  all  the  claims  or 
cancel  those  not  appealed  in  order  that  the 
office  may  understand  clearly  just  what  his 
attitude  is  on  all  of  the  rejected  claims.  Ex 
parte  Benjamin,  C.  D.  1903,  103  O.  G.  1680. 

87.  Section  4909,  Revised  Statutes,  although 
general  in  its  terms  gives  the  right  of  appeal 
only  where  the  claims  or  some  of  them  have 
been  considered  and  twice  rejected  upon  their 
merits  as  not  being  patentable  for  some  of 
the  causes  designated  by  the  statutes.  *United 
States,  ex  rel.  Steinmetz  v.  .\llen.  Commission- 
er of  Patents,  C.  D.  190:!,  104  O.  G.  853. 

88.  By  the  general  terms  of  the  statute  it 
was  not  intended  by  congress  to  give  the 
right  of  appeal  in  cases  of  mere  preliminary 
or  interlocutory  orders.    *Id. 


X.  Premature. 

89.  Petition  asking  that  the  examiner  be 
directed  to  allow  an  application  without  fur- 
ther delay,  or  else  reject  the  claims  on  the 
prior  state  of  the  art  or  on  some  statutory 
ground,  and  that  he  be  advised  that  certain 
amendments  required  by  him  be  not  insisted 
on  dismissed,  it  appearing  that  the  question 
involved  is  one  of  new  matter,  and  it  further 
appearing  that  as  the  examiner  has  neither 
twice  acted  nor  twice  refused  to  act,  the  pe- 
tition is  premature.  Ex  parte  Schuize,  C.  D. 
1898,  84  O.  G.  981. 

90.  Proper  practice  requires  that  reasons 
for  the  withdrawal  of  an  examiner's  objec- 
tions should  be  fully  presented  to  the  ex- 
aminer before  petition  to  the  commissioner 
is  taken.  Ex  parte  Maynard,  C.  D.  1898,  84 
O.  G.  1433. 

91.  A  petition  is  premature  if  brought  after 
a  single  action.  A  petition  should  not  be 
brought  until  the  case  has  been  twice  acted 
upon  with  reference  to  the  point  involved  in 
the  petition.  Ex  parte  Haug,  C.  D.  1901,  97 
O.  G.  192. 

92.  A  petition  should  not  be  brought  until 
the  case  has  been  twice  acted  upon  with  ref- 
erence to  the  point  involved  in  the  petition. 
(Rule  145.)  (Ex  parte  Haug,  C.  D.  1901, 
153.  97  O.  G.  192.)  Ex  parte  Shone,  C.  D. 
1902,  99  O.  G.  863. 

93.  A  petition  taken  to  the  commissioner 
from  the  first  action  of  an  examiner,  held,  to 
be  premature  and  is  dismissed.     Id. 

94.  Petitions  taken  without  a  request  for 
reconsideration  accompanied  by  a  statement 
of  reasons  why  the  objection  should  be  with- 
drawn which  will  inform  the  examiner  of  the 
applicant's  position  place  much  unnecessary 
labor  on  the  commissioner  and  cause  delay. 
Id. 

95.  Where  an  appeal  was  taken  to  the  ex- 
aminers-in-chief on  a  claim  which  the  record 
shows  has  not  been  rejected  by  the  primary 
examiner  such  appeal  was  premature,  and  the 
examiner  was  right  in  refusing  to  forward  it 
to  the  examiners-in-chief.  Ex  parte  Scott, 
C.  D.  1903,  102  O.  G.  820. 

96.  The  practice  of  bringing  questions  up 
on  petition  which  have  not  been  carefully 
considered  by  the  primary  examiner  and  the 
applicant  with  the  purpose  of  disposing  of 
the  question  without  the  necessity  of  a  peti- 
tion cannot  be  too  strongly  condemned.  Ex 
parte  St.  Amand,  C.  D.  1903,  103  O.  G.  661. 


■  53 


APPLICATION  FOR  PATENT,  I. 


97.  It  is  just  as  essential  that  the  applicant 
apprise  the  examiner  of  his  views  on  the 
question  as  it  is  that  he  make  his  position 
clear  to  the  commissioner  when  he  brings  the 
matter  up  on  petition ;  otherwise  the  exam- 
iner, not  knowing  the  position  which  the  ap- 
plicant may  take  in  his  argument  on  the  peti- 
tion, could  not  be  expected  in  his  answer  to 
the  petition  to  meet  questions  which  may  be 
urged  by  applicant  for  the  first  time  in  this 
argument.    Id. 

98.  Where  a  party  to  an  interference  files 
a  petition  that  the  primary  examiner  be  in- 
structed as  to  his  jurisdiction  to  add  counts  to 
the  interference  issue  and  the  examiner  has 
neither  acted  nor  refused  to  act  upon  any 
request  relating  to  the  subject.  Held,  that  the 
petition  will  be  denied,  since  it  is  premature 
and  relates  to  a  moot  question.  Hicks  v.  Cos- 
tcllo,  C.  D.  1903,  103  O.  G.  1163. 

99.  The  practice  of  filing  petitions  before  a 
clear  and  definite  issue  has  been  reached  be- 
tween the  applicant  and  the  examiner  and  be- 
fore proper  efforts  have  been  made  to  reach 
an  agreement  cannot  be  too  strongly  con- 
demned. Ex  parte  Colton,  C.  D.  1903,  104  O. 
G.  1119. 

100.  The  commissioner  should  not  be  called 
upon  to  instruct  the  examiner  as  to  the  action 
he  should  take  in  a  matter  which  has  not  been 
presented  to  the  examiner  for  decision.    Id. 

101.  Petition  should  not  be  taken  from  an 
examiner's  action  until  the  matter  has  been 
presented  to  him  for  reconsideration,  as  re- 
quired in  Rule  145.  Ex  parte  Lendl,  C.  D. 
190,5,  115  O.  G.  2r,o. 

102.  A  petition  that  an  amendment  be  en- 
tered dismissed  as  premature  where  the  ques- 
tion of  the  entry  had  not  been  considered  by 
the  primary  examiner.  Ex  parte  Fritsch,  C. 
D.  1911,  173  O.  G.  869. 


APPLICATION  FOR  PATENT. 

I.  Date  01'. 
II.  Rir.HT  TO  Inspect,  Etc. 

III.  Joint  and  Sole. 

IV.  By  Employe  of  Patent  Office. 

V.  Transfer  of  Papers  or  Drawinos. 
VI.  I  ji  PROPER   .\lter.\tion   and   Substitu- 
tion OF  Papers. 
VII.  Allowance  of. 
VIII.  Informal  or  Incomplete. 
IX.  Inks  Required  for  Papers. 
X.  Title  of  Invention. 
XL  Statutory  Prerequisites. 


Xll.  Double  Patenting. 

XIII.  Mistake  in  Form. 

XIV.  Striking  from  Files. 

XV.  Features  Shown  but  not  Claimed. 
XVI.  Second    Application — Same    Subject 

Matter. 
X\'II.  Delay  in  Filing  Parts. 

I.  Date  of. 

1.  The  several  parts  of  an  application  for 
a  patent  were  filed  in  the  patent  office  on 
October  20,  1897;  but  the  petition,  specifica- 
tion, and  oath  were  informal  in  that  the  resi- 
dence of  the  applicant  was  not  stated,  as  re- 
quired by  the  rules.  These  papers  were  re- 
turned as  informal,  and  on  October  26,  1897, 
complete  and  formal  papers  were  filed  and 
the  application  given  the  latter  date  as  the 
date  of  filing.  On  petition  to  change  the  date 
of  filing  from  October  26,  1897,  to  October 
20,  1897,  Held,  that  the  application  was  not 
filed  legally  complete  until  October  26,  1897, 
and  the  petition  denied.  Ex  parte  Brand,  C. 
D.  1898,  82  O.  G.  893. 

2.  Where  an  applicant  contends  that  the 
application  was  complete  and  ready  for  ex- 
amination in  accordance  with  the  rules  and 
statutes,  although  the  residence  was  not  given, 
and  urges  that  the  residence  is  not  essential 
to  the  progress  of  the  application  through  the 
office  and  could  be  supplied  by  the  attorney 
at  any  time  before  the  payment  of  the  final 
fee,  Held,  that  these  contentions  cannot  be 
granted.  Rule  30  specifies  what  papers  or 
things  constitute  a  complete  application,  and 
other  rules  define  the  requisite  of  said  papers, 
one  of  these  being  the  residence  of  applicant. 
An  application  cannot  be  given  a  date  as  a 
complete  application  for  examination  until 
the  residence  is  given.    Id. 

3.  Applicant  filed  a  drawing  and  the  first 
fee  of  an  application  on  December  31,  1897. 
At  the  same  time  he  filed  an  unsigned  paper 
describing  and  claiming  the  device  shown  by 
the  drawing.  On  January  3,  1898,  he  filed  a 
petition,  specification  and  claims,  and  an  oath 
properly  signed,  executed,  and  witnessed.  The 
application  was  given  a  filing  date  as  a  com- 
plete application,  January  3,  1898.  Held,  that 
the  paper  filed  December  31,  1897,  cannot  be 
treated  as  a  specification,  and  a  petition  to 
change  the  date  of  filing  the  application  from 
January  3,  1898,  to  December  31,  1897,  de- 
nied. Ex  parte  Hallberg,  C.  D.  1898,  83  O.  G. 
1208. 


APPLICATION  FOR  PATENT,  I. 


53 


4.  The  Rules  of  Practice  and  the  statutes 
require  that  the  specification  shall  be  signed 
by  the  applicant,  and  a  complete  application 
must  comprise,  in  addition  to  the  drawing  and 
fee,  a  petition,  specification,  and  oath,  and  an 
application  will  not  be  considered  as  complete 
until  all  its  parts  have  been  filed  in  this  of- 
fice.   Id. 

5.  Where  the  application  is  drawn  to  cover 
a  process  and  discloses  the  invention  suffi- 
ciently to  permit  of  examination  on  the  merits, 
although  no  drawing  is  furnished,  Held,  that 
it  must  be  given  the  time  of  filing  as  the 
date  of  application,  although  a  drawing  is  sub- 
sequently found  to  be  desirable  and  is  re- 
quired not  to  show  the  invention,  but  as  show- 
ing some  means  for  carrying  it  into  practice. 
Ex  parte  Russell,  C.  D.  1S98,  84  O.  G.  2021. 

6-  This  case  is  different  from  that  consid- 
ered in  Palmer  and  Thompson  v.  Bailey  (ante, 
66,  83  O.  G.  12U7),  since  in  that  case  without 
a  drawing  the  invention  could  not  have  been 
understood  or  examined  upon  its  merits.  That 
decision  is  to  be  read  as  all  decisions  of  the 
commissioner  or  the  courts  are  to  be  read 
with  reference  to  the  case  in  which  the  deci- 
sion was  rendered.    Id. 

7.  Where  application  papers  were  received 
on  January  17,  1898,  but  the  drawing  was  re- 
turned because  not  properly  signed,  and  on 
January  26,  1898,  the  drawing  was  again  re- 
ceived properly  signed,  and  the  case  was  then 
given  January  26,  1898,  as  the  date  of  com- 
plete filing,  a  petition  to  change  the  date  to 
January  17,  1898,  when  the  papers  were  first 
filed,  denied.  Ex  parte  Arndt,  C.  D.  1900, 
9,-i  O.  G.  7.';i. 

8.  Section  4889  of  the  Revised  Statutes  pro- 
vides that  an  applicant  must  furnish  a  draw- 
ing signed  by  the  inventor  or  by  his  attorney 
in  fact.  Unless  a  drawing  is  so  signed  it  can- 
not be  received  by  the  office  and  made  a  part 
of  the  application,  and,  under  the  rules  and 
the  well-established  practice  of  the  office,  until 
all  the  parts  of  an  application  are  received  the 
application  cannot  be  given  a  serial  number 
and  date  of  filing  as  a  complete  application. 
Id. 

9-  Where  an  application  for  a  process  was 
filed  December  11,  1901,  complete  as  to  all 
of  its  parts  except  the  drawing  and  it  ap- 
peared that  a  drawing  was  not  necessary  for 
a  full  discourse  of  the  invention.  Held,  that 
the  application  should  be  given  a  filing  date 
as  of  December  11,  1901.  Ex  parte  Ludington, 
C.   D.   1902,  100  O.  G.  236. 


10.  Where  the  papers  of  an  application  are 
filed  in  this  office  and  the  fee  is  subsequently 
paid  to  a  subtreasurer  and  a  certificate  of 
deposit  is  received,  which  certificate  is  mailed 
to  this  office  without  unreasonable  delay.  Held, 
that  the  application  must  be  regarded  as  com- 
plete when  the  fee  was  paid  and  not  when  the 
certificate  was  received  at  the  patent  office. 
Ex  parte  Connell,  C.  D.  1903,  107  O.  G.  2235. 

11-  Where  an  application  is  filed  complete 
and  thereafter  a  supplemental  oath  is  required 
and  furnished.  Held,  that  the  application  must 
retain  its  original  filing  date  and  will  not  be 
given  the  date  of  the  supplemental  oath.  Ex 
parte  Brough,  C.  D.  1904,  108  O.  G.  564. 

12.  Where  only  one  sheet  of  drawings,  in- 
cluding one  figure,  is  filed  with  the  applica- 
tion and  the  specification  describes  four  fig- 
ures, and  this  discrepancy  is  not  discovered 
until  the  case  is  examined  upon  its  merits. 
Held,  that  the  application  must  be  regarded 
as  incomplete  until  the  date  when  the  addi- 
tional drawings  are  furnished.  Ex  parte  Eh- 
rcndriech,  C.  D.  1904,  109  O.  G.  275. 

13.  The  period  of  one  year  after  filing  ap- 
plications in  other  countries  which  is  allowed 
by  statute  for  filing  applications  in  this  coun- 
try would  seem  to  be  sufficient  for  the  prep- 
aration and  deposit  of  an  application  here  in 
the  form  required  by  the  rules.  Held,  that 
where  parties  fail  to  meet  the  plain  require- 
ments of  the  rules  in  the  ample  time  allowed 
that  the  office,  had  it  the  power  to  do  so, 
should  not  relax  the  requirements  of  estab- 
lished practice  in  order  to  save  the  parties 
from  the  consequences  of  their  delay.  Ex 
parte  Sassin,  C.  D.  1906,  122  O.  G.  2064. 

14.  Where  the  preparation,  execution,  and 
filing  of  an  application  by  an  attorney  were 
authorized  by  a  power  filed  with  the  original 
papers  and  subsequently  to  the  filing  of  the 
original  papers  new  papers  were  filed  dupli- 
cating the  original  papers,  except  that  they 
were  executed  by  the  inventor,  and  the  case 
was  thereupon  given  number  and  date  as  a 
complete  application,  Held,  that  a  request  that 
the  earlier  date  be  given  as  the  filing  date  of 
the  application  in  order  to  avoid  the  bar  of 
a  foreign  patent  cannot  be  granted.     Id. 

15.  Where  the  oath  accompanying  an  ap- 
plication is  defective  in  that  it  does  not  con- 
tain the  required  averments  as  to  patents  and 
printed  publications  and  as  to  the  filing  of 
foreign  applications,  but  the  application  was 
received  and  acted  upon  by  the  examiner  and 
an    interference    was   declared   thereon   with- 


54 


APPLICATION  FOR  PATENT,  II. 


out  raising  any  objection  to  the  oath,  the  ap- 
plication should  not  be  declared  incomplete 
pending  the  filing  of  a  proper  oath,  and  the 
interference  should  not  for  this  reason  be 
dissolved.  There  is  nothing  in  the  statutes 
or  the  rules  requiring  defects  in  an  oath  to 
be  corrected  before  the  application  is  accepted 
as  a  complete  application,  and  under  special 
circumstances  such  defects  may  be  cured  with- 
out changing  the  filing  date.  Dukesmith  v. 
Corrington  v.  Turner,  C.  D.  1906,  135  O.  G. 
34S. 

16.  Where  all  papers  necessary  for  a  com- 
plete application  are  filed  on  October  30,  1902, 
but  the  drawings  were  signed  by  substitute 
attorneys  who  had  not  full  power,  and  on 
November  28,  1902,  full  power  is  given  to  such 
attorneys,  upon  whose  request  the  date  of 
the  application  is  changed  to  November  28, 
1902,  Held,  that  the  application  is  entitled  to 
the  date  of  October  30,  1902,  as  a  construc- 
tive reduction  to  practice,  the  informality 
being  one  which  could  be  cured,  and  was  in 
fact  cured,  by  subsequent  ratification  by  the 
persons  delegating  the  power.  Marconi  v. 
Shoemaker,  C.  D.  1907,  131  O.  G.  1939. 

17.  Where  by  reason  of  a  foreign  patent  it 
was  necessary  that  the  applicant  file  his  ap- 
plication in  the  United  States  patent  office 
not  later  than  March  15,  1908,  and  application 
papers  were  deposited  in  the  mail  at  Paterson, 
N.  J.,  on  Friday,  March  13,  1908,  at  five 
o'clock,  but  did  not  reach  the  patent  office  until 
Monday,  March  16,  Held,  that  the  commis- 
sioner is  without  authority  to  give  the  appli- 
cation the  date  of  March  14,  1908,  as  request- 
ed.    Ex  parte  Meier,  C.  D.  1908,  136  O.  G.  657. 

18.  Where  it  was  necessary  for  applicant 
to  file  his  application  in  this  country  not  later 
than  January  23,  1909,  and  the  application 
papers  were  posted  abroad  on  January  11, 
1909,  but  the  steamer  carrying  said  mail,  which 
should  have  reached  New  York  on  January 
21,  1909,  was  delayed  and  did  not  arrive  until 
January  25,  1909,  with  the  result  that  the 
application  was  not  filed  in  the  patent  office 
until  January  28,  1909,  Held,  that  the  commis- 
sioner is  without  authority  to  give  the  appli- 
cation the  filing  date  of  January  23,  1909.  Ex 
parte  Kauermann,  C.  D.  1910,  157  O.  G.  207. 

II.  Right  to  Inspect,  Etc. 

19.  Where  a  patentee  has  in  the  papers  of 
his  application  referred  to  a  prior  application 
filed    by   him   and   the   petitioner    asking    for 


copies  of  that  prior  application  for  use  in  a 
suit  shows  that  the  record  therein  is  pertinent. 
Held,  that  he  has  a  prima  facie  right  to  obtain 
copies,  and  if  the  patentee  fails  to  show  good 
reasons  why  he  has  no  such  right  the  copies 
will  be  furnished.  In  re  Reed  Manufacturing 
Company,  C.  D.  1900,  92  O.  G.  2001. 

20.  A  party  is  not  entitled  to  copies  of  ap- 
plications filed  in  this  office  merely  because 
he  considers  that  they  would  be  useful  to  him, 
since  under  Rule  15  applications  are  preserved 
in  secrecy.  Ex  parte  Warner,  C.  D.  1901, 
90  O.  G.  1238. 

21.  When  an  application  is  referred  to  in 
a  subsequently-granted  patent,  it  is  prima 
facie  evidence  that  the  patentee  relies  upon 
the  pending  application  for  certain  purposes, 
and  access  to  the  same  will  ordinarily  be 
granted  to  a  party  upon  making  a  proper 
showing  of  interest.  Ex  parte  Dayton  Fan 
and  Motor  Company,  C.  D.  1901,  97  O.  G.  552. 

22.  Where  access  is  desired  to  a  pending  ap- 
plication which  has  been  referred  to  in  a  pat- 
ent and  a  petition  is  made  to  that  effect,  Held, 
that  a  verified  showing  should  accompany  the 
petition  clearly  setting  forth  the  facts  relied 
upon  to  show  interest  in  the  application  to 
which  access  is  desired.  Notice  of  the  filing 
of  the  petition  should  also  be  served  by  the 
petitioner  upon  the  party  holding  title  to  the 
invention  disclosed  in  the  pending  application, 
so  that  an  opportunity  may  be  given  for  a 
hearing  iuter  partes.     Id. 

23.  Where  a  party  asks  for  a  copy  of  an 
application  for  use  in  court  and  as  authority 
for  the  request  alleges  that  the  applicant  tes- 
tified in  the  case  that  such  an  applicatiou  was 
on  file.  Held,  that  the  request  should  identify 
the  application.  In  re  Macwilliam,  C.  D.  1902, 
100  O.  G.  2774. 

24.  Copies  of  pending  or  abandoned  appli- 
cations referred  to  in  patents  will  not  be  fur- 
nished to  strangers  to  the  record  upon  mere 
request,  but  only  for  good  reasons  shown  and 
after  notice  to  the  applicant.  In  re  Dyer,  C. 
D.  1903,  106  O.  G.  1508. 

25.  A  party  is  entitled  to  see  the  whole  rec- 
ord upon  which  a  patent  was  issued,  including 
pending  or  abandoned  applications  referred  to 
therein,  if  it  is  necessary  to  preserve  his 
rights;  but  he  will  not  be  permitted  to  see 
those  applications  except  upon  a  showing  that 
it  is  necessary.     Id. 

26.  The  right  of  inventors  to  keep  the  sub- 
ject-matter of  their  applications  secret  should 
be  safeguarded  in  so  far  as  possible,  and  in- 


APPLICATION  FOR  PATENT,  II. 


35 


formation  should  not  be  given  to  strangers  to 
the  record  except  for  good  cause.    Id. 

27.  After  an  inventor  has  assigned  his  en- 
tire interest  in  his  invention  and  the  assignee 
has  asserted  his  right  to  prosecute  the  appli- 
cation, copies  of  the  application  will  not  be 
furnished  to  parties  having  no  interest  in  the 
invention  at  the  mere  request  of  the  inventor. 
In  re  Duncan  &  Duncan,  C.  D.  1904,  109  O.  G. 
80.i. 

28.  The  rule  that  applications  will  be  pre- 
served in  secrecy  is  intended  primarily  for 
the  benefit  of  the  owner  of  the  invention,  and 
his  rights  will  be  safeguarded  by  the  office  in 
so  far  as  possible.    Id. 

29.  The  inventor  or  his  agent  will  be  per- 
mitted to  see  his  application  after  assign- 
ment upon  the  consent  of  the  assignee  or  upon 
showing  good  reason  for  wishing  to  see  it, 
such  as  to  enable  him  to  prepare  foreign  ap- 
plications or  to  draw  proper  lines  of  divi- 
sion between  it  and  some  other  application. 
Id. 

30.  Where  a  party  has  brought  suit  on  a 
patent  for  infringement  and  testifies  in  re- 
gard to  another  application  for  patent  rela- 
ting to  the  same  invention  and  the  judge  try- 
ing the  case  certifies  that  a  copy  of  the  ap- 
plication would  be  admitted  in  evidence,  Held, 
that  a  petition  for  a  copy  by  the  defendant 
will  be  granted.  In  re  Deitsch,  C.  D.  1904, 
109  O.  G.  1885. 

31.  A  stranger  to  the  record  cannot  obtain 
a  copy  of  an  application  merely  because  he 
wishes  to  use  it  as  evidence  in  the  courts  of 
this  country,  and  much  less  in  the  courts  of 
foreign  countries.  It  must  be  shown  not 
merely  why  he  wishes  the  copy,  but  why  he 
is  entitled  to  obtain  it.  In  re  Taupenot,  C.  D. 
1904,  113  O.  G.  1418. 

32.  The  following  facts  are  not  in  them- 
selves sufficient  to  entitle  defendant  in  an  in- 
fringement suit  to  have  access  to  a  pending 
application  of  the  plaintiff  therein:  first,  that 
testimony  was  taken  by  plaintiff  to  prove  in- 
fringement of  his  patent  by  devices  shown  in 
the  patent  of  another,  the  application  for 
which  was  involved  in  interference  with  and 
prevailed  over  application  to  which  access  is 
requested ;  second,  that  the  application  to 
which  access  is  requested  also  discloses  the 
invention  upon  which  suit  is  being  maintained ; 
and,  third,  that  defendant  has  introduced  the 
record  of  said  interference  into  evidence  as 
part  of  his  defense  in  the  suit.  In  re  Brown, 
C.  D.  1905,  115  O.  G.  248. 


33.  Where  access  to  the  pending  applica- 
tion of  another  was  requested  for  use  in  a 
suit,  but  the  applicant  opposed  such  access, 
had  not  waived  the  rule  of  secrecy  by  assert- 
ing his  application  in  the  suit  or  elsewhere, 
and  the  judge  trying  the  suit  had  not  certified 
that  the  application  would  probably  be  ma- 
terial and  relevant  evidence,  Held,  that  the 
request  would  be  denied.     Id. 

34.  Held,  that  the  records  specified  in  sec- 
tion 892,  copies  of  which  may  be  furnished  by 
this  office  on  an  application  therefor  and  on 
payment  of  the  fee  required  by  law,  are  not 
the  pending  applications  for  patents,  as  such 
applications  are  not  public  records,  but  are 
held  in  secrecy.  In  re  Davis  &  Roesch  Tem- 
perature Controlling  Company,  C.  D.  1905,  114 
O.  G.  1549. 

35.  While  an  application  for  a  patent  is 
filed  in  this  office  with  the  understanding  and 
belief  that  its  contents  shall  be  kept  secret. 
Held,  that  conditions  may  arise  to  justify  the 
removal  of  the  bar  of  secrecy  from  persons 
making  a  showing  of  interest.    Id. 

36.  Held,  that  as  a  general  rule  this  office 
will  require  an  order  or  certificate  from  a 
court  of  competent  jurisdiction  that  the  copies 
of  pending  applications  are  desired  as  evi- 
dence before  furnishing  such  copies  to  parties 
requesting  the  same.     Id. 

37.  Where  a  request  for  copies  of  pending 
applications  is  made  and  the  request  is  accom- 
panied by  an  order  of  a  court  to  the  effect 
that  such  copies  are  desired  for  evidence. 
Held,  that  such  order  will  be  respected  and 
the  petition  granted  if  upon  an  examination 
of  the  records  it  is  found  that  the  court  was 
not  deceived  as  to  the  facts  which  induced  it 
to  issue  the  order.    Id. 

38.  Where  a  party  applies  for  a  certified 
copy  of  another  party's  application  and  the 
only  showing  is  that  the  copy  might  be  of 
benefit  or  advantage  to  him  in  a  suit  brought 
by  him  against  the  applicant  for  infringement. 
Held,  that  the  copy  will  not  be  furnished.  In 
re  Heard,  C.  D.  1905,  114  O.  G.  2381. 

39.  Exceptions  to  the  rule  that  applications 
are  preserved  in  secret  are  made  where  the 
application  is  referred  to  in  a  patent  granted 
to  the  same  party  and  where  a  judge  certifies 
that  a  copy  is  necessary  for  use  in  a  cause 
pending  in  his  court ;  but  no  exception  is  made 
in  favor  of  a  party  who  was  once  involved  in 
interference  with  the  applicant.     Id. 

40.  A  copy  of  a  pending  or  abandoned  ap- 
plication will  not  be  furnished  to  a  party  hav- 


SB 


APPLICATION,  III. 


ing  no  interest  merely  because  he  was  once 
involved  in  an  interference  with  that  appli- 
cation. In  re  Mygatt,  C.  D.  1905,  115  O. 
G.  1066. 

41.  A  party  cannot  obtain  a  copy  of  a  pend- 
ing or  abandoned  application  merely  because 
he  thinks  it  would  be  of  assistance  to  him  in 
a  suit  which  he  has  brought  against  the  appli- 
cant for  infringement.     Id. 

42.  Where  a  patent  is  granted  containing 
the  statement  that  it  is  a  continuation  in  part 
of  a  prior  application,  access  to  such  prior 
application  will  not  be  granted  to  strangers 
without  a  proper  showing  of  interest  and 
without  giving  the  applicant  an  opportunity 
to  oppose  such  action,  particularly  where  such 
prior  application  is  still  pending,  and  it  ap- 
pears that  its  subject-matter  is  not  identical 
with  that  of  the  patent.  Ex  parte  Wixford, 
C.  D.  1906,  120  O.  G.  1166. 

43.  Held,  that  where  an  assignee  of  the  en- 
tire interest  requests  that  the  inventor  be  ex- 
cluded from  access  to  the  application  the  re- 
quest should  be  complied  with,  even  though 
the  assignee  states  no  reason  for  his  request, 
and  that  the  inventor  will  be  granted  access 
to  the  application  only  on  the  presentation  of 
reasons  satisfactory  to  the  commissioner.  Ex 
parte  MacLaughlin  (C.  D.  1891,  68,  55  O.  G. 
8G4),  overruled  to  the  extent  indicated.  In  re 
The  Kellogg  Switchboard  &  Supply  Com- 
pany, C.  D.  1906,  123  O.  G.  2310. 

44.  A  corporation  which  held  an  exclusive 
license  to  make  and  use  an  article  disclosed 
in  certain  applications  went  into  bankruptcy, 
and  the  trustee  in  bankruptcy  included  this 
license  in  the  assets  of  the  company.  Held, 
that  the  purchaser  of  said  assets  at  the  trus- 
tee's sale  did  not  acquire  such  a  title  to  the 
license  as  will  entitle  him  to  be  permitted  to 
inspect  these  applications.  In  re  Bayle,  Jr., 
C.  D.  1908,  133  O.  G.  762. 

45.  A  petition  for  a  copy  of  an  application 
for  registration  of  a  trade-mark  for  use  in 
a  suit  between  the  applicant  and  petitioner 
will  be  denied  when  not  accompanied  by  a 
certificate  of  the  judge  before  whom  the  suit 
is  pending.  In  re  John  C.  Dawd  &  Company, 
C.  D.  1908,  134  O.  G.  1297. 

46.  Access  will  not  be  granted  to  a  pending 
application  referred  to  in  a  patent  purporting 
to  be  a  division  of  such  application  merely 
upon  an  affidavit  by  an  attorney  that 
suit  has  been  brought  on  such  patent  against 
one  of  petitioner's  customers,  that  petitioner 
is  desirous  of  defending  such  suit,  and  that 


access  to  the  prior  application  is  deemed  nec- 
essary in  order  that  a  proper  defense  may  be 
made.  The  practice  requires  that  access  to 
pending  applications  will  be  refused  except 
to  parties  showing  proper  interest  therein, 
and  the  mere  allegation  of  an  attorney  that 
the  company  for  which  he  is  counsel  desires 
to  defend  a  suit  brought  on  a  patent  divided 
out  of  such  application  is  not  a  sufficient  show- 
ing of  interest.  In  re  Miami  Cycle  &  Mfg. 
Company,  C.  D.  1908,  136  O.  G.  1067. 

47.  Where  a  party  holds  an  unquestioned 
equitable  interest  in  an  application,  he  may 
be  given  access  to  the  same.  In  re  Standard 
Adding  Machine  Company,  C.  D.  1910,  IGO 
O.  G.  257. 

48.  A  contract  between  H.  and  petitioner 
whereby  H.  agreed  to  assign  "all  inventions, 
patents,  and  improvements  which  he  may  in- 
vent or  make  or  take  out  or  acquire"  pertain- 
ing to  a  certain  class  of  machines,  Held,  not  to 
entitle  petitioner  to  access  to  certain  applica- 
tions in  which  H.  at  one  time  owned  a  half 
interest,  but  which  were  subsequently  assigned 
to  a  third  party.    Id. 

49.  A  petition  for  access  to  a  pending  ap- 
plication based  on  the  allegation  that  knowl- 
edge of  such  application  will  be  of  assistance 
to  petitioner  in  a  suit  brought  against  him  by 
the  assignee  of  such  application  will  be  de- 
nied in  the  absence  of  a  certificate  from  the 
judge  before  whom  such  suit  is  pending  that 
the  application  would  be  relevant  and  mate- 
rial.   Id. 

III.  Joint  and  Sole. 

50.  Where  each  of  two  joint  inventors  file 
a  petition,  specification,  and  oath  separately 
signed  and  executed  by  him,  the  specifications 
being  duplicates  and  the  papers  reciting  the 
fact  that  the  parties  are  joint  inventors,  Held, 
that  they  constitute  a  valid  application  under 
the  law  and  that  it  is  not  necessary  to  file  a 
new  petition,  specification,  and  oath  signed 
by  both  parties.  Ex  parte  Wellman  and  Well- 
man,  C.  D.  1899,  88  O.  G.  2065. 

51.  Where  duplicate  specifications  have  been 
filed  by  joint  inventors,  the  attorney  for  the 
applicants  should  for  the  convenience  of  the 
office  substitute  by  amendment  a  single  copy 
of  the  specification  for  the  two  on  file,  so  as 
to  prevent  confusion  in  the  entry  of  amend- 
ments and  the  printing  of  the  patent.    Id. 

52.  Where  the  petition  and  specification  of 
an  application  as  filed  are  signed  by  two  par- 


APPLICATION,  IV,  V. 


57 


ties,  the  specification  indicating  that  they  are 
joint  inventors  and  the  petition  stating  that 
one  of  them  is  an  assignee,  and  the  oath  is 
assigned  by  only  one  of  the  parties  and  states 
that  he  is  the  sole  inventor.  Held,  that  there 
is  such  inconsistency  in  the  statements  as  to 
who  is  the  inventor  that  the  matter  cannot 
be  corrected  by  amendment,  but  only  by  a  new 
application.  Ex  parte  Henze,  C.  D.  1900,  90 
O.  G.  2-,07. 

53.  Where  an  application  is  filed  alleging 
that  one  party  is  the  sole  inventor  and  asking 
that  a  patent  be  granted  to  him.  Held,  that  it 
cannot  be  changed  to  a  joint  application  in- 
cluding another  party  merely  because  that 
other  party  signed  the  papers.  Ex  parte  Gor- 
don, C.  D.  1904,  108  O.  G.  50 1. 

54.  Where  one  of  two  joint  inventors  seeks 
to  cause  the  abandonment  of  their  application 
by  preventing  amendment  thereof,  claiming 
that  he  is  a  sole  inventor,  and  also  files  a 
written  abandonment  of  the  application.  Held, 
that  permission  will  be  given  to  the  coinventor 
to  prosecute  the  application  through  an  at- 
torney of  his  own  selection.  Ex  parte  Barrett 
and  Alter,  C.  D.  1907,  127  O.  G.  847. 

55.  Where  the  attorneys  for  joint  applicants 
are  prevented  from  amending  the  application 
by  one  of  the  joint  inventors,  who  in  order 
to  cause  the  case  to  become  abandoned  also 
refuses  to  permit  them  to  give  an  associate 
power  of  attorney  to  an  attorney  of  the  other 
joint  applicant's  selection.  Held,  that  an  at- 
torney appointed  by  the  coinventor  will  be 
permitted  to  prosecute  the  application.     Id. 

56.  Where  one  coapplicant  does  not  join 
in  the  written  abandonment  of  an  application, 
it  can  be  given  no  effect.    Id. 

57.  "It  seems  to  be  well  settled  that  one  of 
two  joint  applicants  cannot  appoint  an  attor- 
ney without  the  concurrence  of  the  coappli- 
cant, except  upon  a  showing  of  inability  to 
obtain  such  concurrence  (citing  ex  parte  Ben- 
jamin and  Bailey,  C.  D.  1892,  85,  59  O.  G.  298; 
ex  parte  Barrett  and  Alter,  C.  D.  1907,  76,  127 
O.  G.  847.)"  Ex  parte  De  Forest  and  Hor- 
ton,  C.  D.  1909,  141  O.  G.  566. 

58.  A  power  of  attorney  given  by  one  of 
two  joint  applicants,  with  the  concurrence  of 
an  alleged  assignee,  cannot  be  recognized  in 
the  absence  of  evidence  of  the  assignment. 
Id. 

IV.  By  Employe  of  P.\ti-nt  OrncE. 

59.  Where  an  inventor  on  May  27,  1895, 
while   an   employe   of   the   patent    office,   tiled 


application  papers  without  the  filing  fee,  and 
on  June  3,  1896,  after  his  resignation,  de- 
posited such  filing  fee,  but  the  application  on 
August  6,  1897,  was  stricken  from  the  files 
as  having  been  filed  contrary  to  the  statutes, 
and  a  complete  formal  application  was  filed 
September  10,  1897,  Held,  that  the  inventor 
was  not  diligent  in  constructively  reducing  his 
invention  to  practice  and  that  he  was  not  en- 
titled to  a  patent  in  view  of  the  grant  of  a 
patent  to  another  on  February  9,  1897,  on  an 
application  filed  March  10,  1896.  Ex  parte 
McElroy,  C.  D.   1909,  140  O.   G.   1207. 

V.  Transfer  of  Papers  or  Drawings. 

60.  Where  the  specification  and  drawing  of 
an  application  relate  to  the  same  subject,  but 
it  is  found  upon  complete  examination  of  the 
merits  that  they  do  not  correspond  in  all  par- 
ticulars and  the  applicant  then  says  that  the 
specification  was  intended  for  another  appli- 
cation and  was  filed  in  this  case  by  mistake 
and  asks  that  the  drawing  and  fee  be  trans- 
ferred to  a  new  application.  Held,  that  the 
request  will  be  denied.  Ex  parte  Lawson,  C. 
D.  1902,  101  O.  G.  1833. 

61.  Where  all  of  the  papers  and  the  fee 
filed  in  a  case  are  those  of  an  original  appli- 
cation, Held  that  it  cannot  be  transformed 
into  a  divisional  reissue  application  by  filing 
a  substitute  oath  and  additional  fee,  although 
the  intent  was  that  it  should  be  a  reissue  ap- 
plication. Ex  parte  Priest,  C.  D.  1903,  103 
O.  G.  428. 

62.  The  record  of  each  application  must  be 
complete  within  itself,  and  the  parts  of  an  ap- 
plication regularly  filed  cannot  be  used  as 
parts  of  a  later  and  different  application.    Id. 

63.  Where  an  amendment  is  entitled  in  one 
application,  is  entered  therein,  and  is  replied 
to  in  a  subsequent  office  action,  it  cannot  be 
transferred  to  another  application,  although  it 
is  apparent  from  its  subject-matter  that  it  was 
really  intended  for  the  latter  application. 
I'pon  the  presentation  of  such  amendment  in 
tlie  case  for  which  it  was  originally  intended 
the  facts  disclosed  by  the  record  will  be  con- 
sidered on  the  question  of  abandonment.  Ex 
parte  Haultain  and  Stovel,  C.  D.  1905,  119 
O.  G.  049. 

64.  The  drawings  in  an  abandoned  applica- 
tion cannot  be  withdrawn  and  used  in  a  new 
application,  even  where  photographic  copies 
are  filed.     The  original  records  must  be  pre- 


58 


APPLICATION,  VI. 


served.     Ex  parte  Farnham,   C.   D.   1905,  114 
O.  G.  2090. 

65.  A  request  that  Rule  173  be  changed  to 
permit  transfer  generally  of  drawings  from 
one  application  to  another  cannot  be  granted, 
as  it  is  necessary  to  preserve  the  various  parts 
of  complete  applications  as  records  of  the 
case  in  which  they  are  originally  filed.  Ex 
parte  Reeve  and  Noyes,  C.  D.  1906,  122  O. 
G.  2063. 

VI.  Improper  Alteration   and  Substitution 
OP  Papers. 

G6.  Where  at  final  hearing  upon  the  ques- 
tion of  priority  the  suggestion  is  made  that 
the  junior  party's  application  was  altered 
after  being  sworn  to.  Held,  that  this  is  an  ex 
parte  matter  relating  to  procedure  and  not  af- 
fecting the  merits  of  the  case.  Snider  v.  Bun- 
nell, C.  D.  1902,  101  O.  G.  2,')72. 

67.  The  mere  inking  in  of  a  drawing  after 
the  application  is  sworn  to  is  not  such  an 
alteration  in  the  application  as  would  warrant 
striking  it  from  the  files.  Hopkins  v.  Scott, 
C.  D.   1903,  105  O.  G.  1263. 

68.  Where  motion  was  made  that  an  appli- 
cation be  stricken  from  the  files  of  the  patent 
otfice  because  contrary  to  Rules  30  and  31  of 
the  Rules  of  Practice  of  that  office  and 
changes  had  been  made  in  the  application 
papers  after  the  execution  of  the  oath,  but 
there  is  no  evidence  in  the  case  tending  to 
show  that  the  changes  were  made  without  the 
knowledge  and  approval  of  the  applicant,  and 
it  is  alleged,  on  the  contrary,  that  the  changes 
were  made  at  his  direction,  and  there  is  no 
proof  that  the  applicant  did  not  make  an 
oath  as  to  inventorship  at  the  time  he  executed 
the  corrected  papers,  and  where  since  the  fil- 
ing of  his  application  the  applicant  has  made 
other  oaths  to  the  effect  that  he  is  the  in- 
ventor of  the  subject-matter  disclosed  in  his 
application,  and  it  appears  that  the  motion, 
if  sustained,  would  result  in  removing  the 
applicant  from  the  field  of  claimants  to  the 
invention,  as  public  use  has  intervened  as  a 
bar  to  the  filing  of  a  new  application,  Held, 
that  the  objection  is  purely  technical  and 
should  not  be  sustained.  *Davis  v.  Garrett, 
C.  D.  1906,  123  O.  G.  1991. 

69.  Held,  that  the  question  of  striking  an 
application  from  the  files  of  the  patent  office 
rests  largely  within  the  discretion  of  the  com- 
missioner of  patents,  and  his  rulings  will  not 
be  disturbed,  save  when  that  discretion  has 
been  palpably  abused.     Id. 


70.  The  commissioner  has  the  power,  either 
in  an  ex  parte  or  an  interference  case,  to 
inquire  and  determine  whether  an  application 
has  been  altered  or  substituted  without  au- 
thority. Whether  such  alteration  shall  have 
been  made  by  the  attorney  of  the  applicant 
with  the  latter's  connivance  or  consent  is  im- 
material. The  efficacy  of  the  application  would 
be  destroyed  by  such  alteration.  Moore  Com- 
missioner of  Patents  v.  Heany  &  The  Heany 
Co.,  C.  D.  1909,  149  O.  G.  831. 

71.  The  power  of  the  commissioner  to  de- 
clare as  a  result  of  investigation  that  an  ap- 
plication has  been  destroyed  by  the  reason  of 
alteration  is  not  affected  by  the  fact  that  in  a 
criminal  prosecution  against  the  applicant,  his 
attorney,  and  another  for  conspiracy  in  the 
matter  of  such  alterations  the  applicant  was 
acquitted.  The  question  adjudicated  in  the 
criminal  proceedings  was  not  whether  the  ap- 
plication had  been  altered,  but  whether  the 
applicant  was  a  guilty  party  thereto.  The  fact 
of  alteration  is  not  res  adjudicato.     *Id. 

72.  Where  an  application  was  materially  al- 
tered after  being  signed  and  sworn  to.  Held, 
that  it  is  not  a  properly  allowable  application 
and  oannot  be  given  the  effect  of  a  construc- 
tive reduction  to  practice  of  the  invention  dis- 
closed therein.  *Lindstram  v.  Ames,  C.  D. 
1911,  168  O.  G.  250. 

73.  "Counsel  for  appellant  ask  us  to  erase 
the  new  matter  and  restore  the  application  to 
the  condition  in  which  appellant  executed  it. 
But  that  is  not  within  the  province  of  this 
court.  Our  duty  is  to  pass  upon  an  applica- 
tion as  actually  filed,  and  not  to  reconstruct 
or  revise  it  to  suit  the  exigencies  of  a  partic- 
ular case.  If  the  latter  course  were  adopted 
in  this  instance,  it  would  establish  a  danger- 
ous practice  under  which  we  would  be  called 
upon  continually  to  change  and  correct  defec- 
tive applications.    *Id. 

74.  When  the  testimony  showed  that  L.,  the 
senior  party,  who  was  the  second  to  conceive 
the  invention,  did  not  actually  reduce  it  to 
practice  until  after  A.  filed  his  application 
and  that  his  application  was  materially  al- 
tered after  being  signed  and  sworn  to,  Held, 
that  the  filing  of  L.'s  application  did  not  con- 
stitute a  constructive  reduction  to  practice  of 
the  invention  and  that  priority  was  properly 
awarded  to  A.  (Snider  v.  Bunnell,  101  O.  G. 
2572 ;  Davis  v.  Garrett,  123  O.  G.  1991,  28  App. 
D.  C.  9,  distinguished.)     *Id. 

75.  The  refusal  of  the  commissioner  or  of 
the  court  of  appeals  of  the  District  of  Colum- 


APPLICATION,  VII. 


59 


bia  to  grant  patents  is  always  based  upon  tlie 
fact  that  in  the  opinion  of  these  tribunals  the 
patents,  if  granted,  would  be  invalid.  All  the 
reasons  relied  upon  by  the  commissioner  or 
the  court  in  their  decisions  refusing  to  grant 
patents  to  applicants,  either  in  ex  parte  or  in- 
terference cases,  may  be  pleaded  in  court 
against  the  validity  of  patents.  In  the  matter 
of  the  charges  made  by  Examiner  A.  F.  Kin- 
nan  on  February  8,  1909,  of  the  charges  con- 
tained in  the  petition  of  Hans  Kuzel,  Just  and 
Hanaman,  and  Werner  von  Bolton,  Filed 
April  3,  1909,  in  interference  No.  27,074,  and 
of  the  charges  contained  in  the  amended  pe- 
tition of  Hans  Kuzel,  filed  in  interference  No. 
27,073,  on  June  9,  1910,  C.  D.  1911,  171  O.  G. 
983. 

76.  The  jurisdiction  of  the  commissioner 
to  investigate  the  question  whether  certain 
applications  for  patent  were  fraudulently 
changed  and  modified  is  acquired  by  virtue 
of  the  general  supervisory  authority  of  the 
commissioner  of  patents  over  affairs  in  the 
patent  office,  its  records  and  papers,  and  which 
empowers  him  to  grant  valid  patents  upon 
legally-effective  applications  therefor  or  else 
to  refuse  to  grant  patents  upon  applications 
therefor  which  are  shown  to  have  no  founda- 
tion in  law  and  which  patents,  if  granted, 
would,  in  his  opinion,  be  null  and  void.     Id. 

77.  H  the  commissioner  should  find  from 
evidence  duly  taken  in  accordance  with  the 
law  that  an  application  or  applications  are 
so  permeated  with  fraud  as  to  justify  the 
opinion  that  any  patent  or  patents  granted  on 
those  applications,  whether  amended  or  not, 
would  be  annulled  or  set  aside  by  a  court  of 
equity  on  petition  of  the  United  States 
through  the  Attorney-General,  on  the  ground 
that  the  patent  was  obtained  through  fraud, 
then  it  would  be  the  duty  of  the  commissioner, 
under  the  law,  to  refuse,  upon  that  ground,  to 
grant  such  a  patent.    Id. 

78.  The  refusal  to  grant  a  patent  on  the 
ground  that  fraud  was  committed  by  the  ap- 
plicant in  the  application  for  such  patent  is 
not  a  punishment  for  committing  the  fraud. 
Id. 

79.  Where  in  a  criminal  proceeding  against 
an  applicant,  his  attorney,  and  another  for 
conspiracy  in  the  matter  of  the  alteration  of 
certain  applications  the  applicant  was  acquit- 
ted, Held,  that  the  question  of  the  complicity 
of  the  applicant  in  such  alteration  is  not  res 
ad  judicata  in  a  proceeding  to  determine  wheth- 
er valid  patents  can  be  issued  on  such  applica- 
tions.   Id. 


80.  The  evidence  considered  and  held,  to 
establish  that  H.  was  not  only  party  to  the 
frauds  concerning  certain  of  his  applications 
but  an  active  participant  therein  and  that  the 
whole  proceeding  involving  these  applications 
is  so  premeated  with  falsehood  and  fraud  on 
his  part  that  no  valid  patent  can  be  granted 
on  any  of  these  applications.    Id. 

81.  For  an  inventor  to  be  entitled  to  the 
legal  effect  of  the  filing  of  an  allowable  appli- 
cation in  the  patent  office  he  must  proceed  in 
the  manner  contemplated  by  law.  To  know- 
ingly remove  and  destroy  an  original  written 
description  once  filed  in  the  patent  office  de- 
prives that  application  of  whatever  legal  ef- 
fect the  application  papers  once  filed  in  ac- 
cordance with  the  provisions  of  section  4888 
of  the  Revised  Statutes  may  have  had  so  far 
as  a  constructive  reduction  to  practice  is  con- 
cerned.    Id. 

82.  The  restoration  of  an  application  to  its 
original  condition  where  it  has  been  mutilated 
and  changed  by  fraudulent  and  deceptive  in- 
tention on  the  part  of  the  applicant  cannot  be 
permitted.     Id. 

83.  Where  the  entire  original  specification 
of  H.'s  application  was  removed,  except  two 
claims  and  a  part  of  a  third,  Held,  that  a 
claim  alone  disconnected  from  its  specifica- 
tion is  a  most  uncertain  thing  and  cannot  con- 
stitute a  just  criterion  for  a  specification  or 
written  description  and  cannot,  therefore,  be 
rightly  used  as  a  foundation  upon  which  a 
specification  can  be  erected,  even  if  it  had 
been  established  that  the  removal  of  the 
original  specification  had  been  made  without 
H.'s  knowledge  and  consent  or  if  the  question 
of  his  complicity  was  res  adjudicata  by  rea- 
son of  the  decision  in  the  criminal  case.     Id. 

84.  Where  with  the  connivance  of  an  ap- 
plicant his  application  was  fraudulently  al- 
tered and  thereafter  an  application  was  filed 
containing  the  matter  fraudulently  placed  in 
the  prior  application  and  containing  a  state- 
ment that  it  was  a  division  of  such  prior  ap- 
plication. Held,  that  the  alleged  divisional  ap- 
plication is  so  permeated  with  fraud  that  it 
cannot  be  amended  by  omitting  therefrom  the 
reference  to  the  prior  application  and  that  no 
valid  patent  could  be  granted  thereon.     Id. 

VII.  Allowance  of. 

85.  Where  a  showing  is  made  that  the  no- 
tice of  allowance   of  an   application   was  not 

received,  but  it  was  not  alleged  that  no  no- 


60 


APPLICATION,  VIII. 


tice  was  mailed,  and  the  records  indicate  that 
it  was  mailed,  Held,  that  this  office  has  no 
jurisdiction  to  extend  the  time  for  payment 
of  the  final  fee  directly  or  indirectly,  and  a 
request  that  a  new  notice  of  allowance  be 
sent  cannot  be  granted.  Ex  parte  Glafke, 
C.  D.  190G,  122  O.  G.  351. 

VIII.  Informai,  or  Incomplete. 

86.  Where  an  application  is  informal  by 
reason  of  inconsistency  in  the  statements  as 
to  who  is  the  inventor.  Held,  that  it  should 
not  have  been  forwarded  to  the  examiner  by 
the  application  clerk,  and  ordered  that  it  be 
stricken  from  the  examiner's  files  and  returned 
to  the  application  room.  The  fee  paid,  in  such 
case  may  be  transferred  to  a  new  case,  if  one 
be  filed.  Ex  parte  Henze,  C.  D.  1900,  90  O. 
G.  2507. 

87.  An  application  the  papers  of  which  have 
not  been  attached  together  by  a  ribbon  with 
its  ends  brought  together  under  the  seal  af- 
fixed by  the  United  States  Consul,  the  officer 
before  whom  the  oath  was  taken,  as  pro- 
vided for  by  Rule  47,  cannot  be  placed  on  file. 
In  re  Hosking,  C.  D.  1900,  91  O.  G.  1615. 

88.  Rule  47  supplements  the  requirement 
that  a  United  States  official  before  whom  an 
oath  is  taken  in  a  foreign  country  shall  at- 
tach the  papers  of  an  application  together  by 
a  ribbon  and  affix  his  seal  over  the  ends  there- 
of, and  by  this  rule  it  is  required  that  no- 
taries in  foreign  countries,  as  well  as  such 
officers,  shall  attach  the  papers  together  in 
that  manner.     Id. 

89.  The  rule  was  promulgated  months  be- 
fore it  went  into  effect,  and  applicant's  state- 
ment that  he  had  no  knowledge  of  the  amend- 
ment to  the  rule  is  no  excuse  for  non-com- 
pliance therewith.     Id. 

90.  Where  application  papers  are  filed  in 
this  office,  the  oath  of  which  was  executed 
before  a  foreign  notary,  and  the  papers  have 
not  been  attached  together  by  a  ribbon  passing 
through  thein  with  its  ends  brought  together 
under  the  seal  of  a  notary,  in  accordance 
with  Rule  47  of  the  Rules  of  Practice  of  this 
office,  Held  that  these  papers  should  not  be 
received  in  the  office  as  an  application.  In  re 
Bagot  and  Dishart,  C.  D.  1900,  91  O.  G.  1802. 

91.  Rule  47  was  made  after  due  deliberation 
in  order  to  prevent  an  abuse  that  had  arisen 
in  the  office,  some  attorneys  removing  the 
sheets  of  the  application  after  it  had  been 
executed    before    a    notary    and    substituting 


others  in  place  thereof,  and  it  was  made  to 
be  obeyed  and  not  to  be  waived  in  cases  where 
it  has  not  been  followed.     Id. 

92.  Since  the  grant  of  a  patent  follows  a 
course  of  statutory  procedure  resulting  in  the 
creation  of  a  monopoly  in  derogation  of  the 
common  law  rights  of  the  public,  Held,  that 
strict  conformity  to  the  terms  of  the  statute 
is  necessary  and  that  any  failure  to  comply 
with  these  conditions  would  render  the  patent 
granted  fatally  defective.    Ex  parte  Nicholson, 

C.  D.  1901,  9G  O.  G.  1033. 

93.  Where  a  petition,  an  oath,  and  a  spec- 
ification are  filed  in  the  office  as  parts  of  a 
complete  application  and  the  petition,  the  oath, 
and  the  specification  are  secured  together, 
both  the  petition  and  the  oath  referring  to  the 
"annexed  specification,"  and  it  subsequently 
appears  that  by  mistake  a  wrong  specification 
had  been  filed,  Held,  that  in  order  to  complete 
the  filing  of  the  application  not  only  a  new 
specification  but  a  new  petition  and  a  new  oath 
should  be  filed,  inasmuch  as  the  petition  and 
oath  first  filed  do  not  refer  to  the  invention 
sought  to  be  patented.  Ex  parte  Page,  C.  D. 
1901,  97  O.   G.   551. 

94.  The  rule  requiring  applicant's  residence 
to  be  stated  in  the  petition,  specification,  and 
oath  is  a  salutary  one  and  one  to  be  enforced; 
yet  the  omission  of  this  statement  is  not  such 
a  vital  defect  as  warrants  a  refusal  to  accept 
as  complete  an  application  otherwise  without 
error.     The  decision   in   ex   parte   Brand    (C. 

D.  1898,  12,  82  O.  G.  893  overruled.)  Ex 
parte  Becker,  C.  D.  1901,  97  O.  G.  1597. 

95.  Where  papers  are  filed  as  an  applica- 
tion for  patent  and  they  are  not  regarded  as 
constituting  a  complete  and  formal  applica- 
tion. Held,  that  they  should  not  be  returned 
to  the  applicant,  but  should  be  entered  as  an 
incomplete  application  and  the  applicant  noti- 
fied of  the  defects  or  informalities.  In  re 
Marie,  Princess  of  Ysenburg,  C.  D.  1904,  108 
O.  G.  2145. 

9G.  An  application  claiming  a  process  will 
be  entered  complete  even  where  no  drawing 
is  filed,  and  the  examiner  will  call  for  a 
drawing  when  he  examines  the  case  if  he  finds 
one  necessary.  Ex  parte  Schmidmer,  C.  D. 
1905,  115  O.  G.  249. 

97.  Where  the  office  receives  from  a  party 
a  sketch,  together  with  fifteen  dollars,  and  a 
letter  asking  that  he  be  forwarded  blank 
forms  for  the  preparation  of  an  application. 
Held,  that  the  letter,  sketch,  and  fifteen  dol- 
lars should  not  have  been  regarded  as  an  in- 


APPLICATION,  IX-XII. 


ei 


complete  application,  but  that  the  money 
should  have  been  entered  to  the  applicant's 
credit  unapplied  to  any  case.  In  re  Elberson, 
C.  D.  lOOfi,  121  O.  G.  33S. 

98.  Where  the  specification  refers  to  a 
"Figure  1"  of  the  drawing  and  no  figure  of 
that  number  appears  on  the  sheets  filed.  Held, 
that  the  application  clerk  properly  refused  to 
give  the  papers  a  filing  date  as  a  complete  ap- 
plication. Ex  parte  Michaelis,  C.  D.  1906,  121 
O.  G.   1349. 

99.  Where  a  filing  date  is  refused  by  the 
office  on  accoimt  of  the  omission  of  certain 
figures  from  the  drawings  and  said  figures, 
in  the  applicant's  opinion,  do  not  involve  sub- 
stantial additions  to  or  departures  from  the 
disclosure  in  the  papers  originally  filed,  the 
proper  practice  is  to  file  a  petition  for  the 
earlier  date,  accompanied  by  the  omitted  fig- 
ures.    Id. 

100.  When  in  the  revision  of  the  applica- 
tion in  the  Issue  and  Gazette  division  sup- 
posed formal  objections  are  discovered,  the 
examiner's  attention  should  be  called  thereto; 
but  the  examiner's  decision,  indorsed  upon 
the  reference  slip,  that  a  supposed  objection 
is  not  in  fact  one  or  that  correction  is  not 
necessary  should  settle  the  matter  for  this 
office.  Ex  parte  Faulkner,  C.  D.  1907,  138  O. 
G.  886. 

IX.  Inks  Required  for  Papers. 

101.  Papers  written  in  ink  which  does  not 
stand  the  tests  used  by  the  executive  depart- 
ments to  determine  the  permanency  of  inks 
should  be  refused  admission  as  part  of  the 
permanent  records  of  the  patent  office.  Ex 
Parte  Blaubach,  C.  D.  1898,  84  O.  G.  1732. 

102.  Where  application  papers  are  returned 
because  not  written  in  permanent  ink  and 
copies  are  subsequently  filed.  Held,  that  the 
application  cannot  be  given  the  date  when  the 
original  papers  were  filed.  A  record  date 
should  not  be  dependent  upon  evidence  not 
contained  in  the  record  itself.  Ex  parte  Web- 
ster, C.  D.  1902,  101  O.  G.  2.J70. 

103.  Amendments  filed  in  the  patent  office 
must  be  written  in  ink  which  will  stand  the 
tests  as  to  permanency  set  forth  in  ex  parte 
Blaubach  (C.  D.  1898,  193,  84  O.  G.  1732.) 
Ex  parte  Burns,  C.  D.  1902,  101  O.  G.  661. 

X.  Title  of  Invention. 

104.  An  applicant  should  be  permitted  to  re- 
tain a  title  which  he  believes  to  be  peculiarly 


fitting  or  desirable,  unless  such  title  is,  in  fact, 
inaccurate  or  improper  for  some  other  sub- 
stantial reason.  Ex  parte  Wiland,  C.  D.  1910, 
1.52  O.  G.  957. 

105.  Under  the  ruling  in  ex  parte  Becker 
(04  O.  G.  559),  an  applicant  should  be  allow- 
ed within  reasonable  limits  to  name  the  title 
of  the  invention.  Ex  parte  Mackintosh,  C. 
D.  1911,  163  O.  G.  783. 

106.  Where  the  claims  were  directed  to 
the  bearings  and  mode  of  connecting  the  driv- 
ing device  of  a  centrifugal  machine.  Held,  that 
the  title  "Centrifugal  machines"  did  not  cor- 
rectly indicate  the  nature  and  design  of  the 
invention,  as  required  by  section  4884,  Re- 
vised Statutes.    Id. 

XI.  Statutory  Prerequisites. 

107.  Where  the  papers  filed  do  not  conform 
to  the  statutory  prerequisites  of  an  applica- 
tion, Held,  that  they  were  properly  refused 
entry  as  an  application.  In  re  Crane,  C.  D. 
1903,  106  O.  G.  999. 

XII.  Double  Patenting. 

108.  Where  a  patentee,  in  order  to  secure 
minor  improvements  and  limited  combinations, 
is  compelled  to  describe  his  broad  invention 
in  an  application  which  became  a  patent  prior 
to  the  patent  in  suit,  the  latter  patent  being 
delayed  in  the  patent  office  by  interference 
proceedings.  Held,  that  the  latter  patent  is  not 
invalid  under  the  doctrine  of  Miller  v.  Eagle 
Co.  (C.  D.  1894,  147,  66  O.  G.  845,  151  U.  S. 
186.)  cAllington  &  Curtis  Manufacturing 
Company  et  al.  v.  Glor  et  al.,  C.  D.  1898,  82  O. 
G.  189. 

109.  Claims  2  and  4  of  Letters  Patent  No. 
495,  443,  for  a  traveling  contract  for  electric 
railways,  granted  April  11,  1893,  to  the  admin- 
istrators of  Charles  A.  Van  Dcpoele,  con- 
strued and  held,  to  be  void,  as  they  are  for 
the  same  invention  which  has  been  previously 
patented  to  the  same  inventor  in  Letters  Pat- 
ent No.  434,  695.  d  Thomson-Houston  Elec- 
tric Company  v.  Union  Railway  Company  et 
al.,  C.  I).  1898,  83  O.  G.  597. 

110.  It  is  proper  under  certain  circum- 
stances to  reject  the  claims  in  an  application 
on  an  allowed  application  filed  by  the  same 
party,  and  in  case  of  such  rejection  the  ap- 
plicant's remedy  is  by  an  appeal  to  the  ex- 
aminers-in-chief and  not  by  petition.  Ex 
parte  Osborne,  C.  D.  1900,  93  O.  G.  1797. 


6S 


APPLICATION,  XIII. 


111.  It  being  settled  that  it  is  proper  in 
some  cases  to  reject  claims  on  an  applicant's 
allowed  case,  the  question  whether  the  facts 
of  the  particular  case  justify  it  relates  to  the 
merits  and  is  properly  appealable  to  the  cx- 
aminers-in-chief  and  should  not  be  passed 
upon  by  the  commissioner  on  petition.  Ex 
parte  Davidson,  C.  D.  1900,  93  O.  G.  191. 

112.  Where  an  application  covering  a  cer- 
tain device  is  pending  when  another  applica- 
tion is  filed  by  the  same  party  covering  im- 
provements on  it  and  six  months  after  a  pat- 
ent issues  on  the  first  application  broad  claims 
which  could  have  been  made  therein  and  dif- 
fer only  in  scope  from  those  actually  made  are 
inserted  in  the  second  application,  Held,  that 
the  claims  cannot  be  properly  allowed,  since 
to  allow  them  would  be,  in  effect,  to  grant 
a  reissue  with  broader  claims  and  at  the  same 
time  extend  the  term  of  the  patent.  Jones  v. 
Larter,  C.  D.  1900,  92  O.  G.  383. 

113.  It  has  been  held,  that  where  broad 
claims  are  made  in  the  case  first  filed  and 
while  that  case  is  held  up  in  the  oflice  through 
no  fault  of  the  applicant  a  patent  on  specific 
improvements  is  granted,  a  patent  subsequent- 
ly granted  on  the  first  case  is  valid ;  but  the 
decisions  to  that  effect  do  not  apply  and  were 
not  intended  to  apply  to  a  case  where  the 
broad  claims  were  not  only  made  in  the  sec- 
ond application  filed,  but  made  therein  long 
after  the  patent  had  issued  on  the  first  appli- 
cation.    Id. 

114.  Where  the  examiner  is  of  the  opinion 
that  the  claims  which  are  presented  in  an  ap- 
plication are  not  patentable  over  the  issue  of 
an  interference  in  which  another  application 
filed  by  the  same  applicant  is  involved.  Held. 
that  the  examiner  was  right  in  suspending 
action  on  the  ex  parte  application  until  a  final 
decision  on  the  question  of  priority  shall 
have  been  rendered  in  the  interference.  Ex 
parte  Robinson,  C.  D.  1902,  101  O.  G.  2079. 

115.  Where  there  is  no  proper  line  of  divi- 
sion between  claims  in  an  application  and 
claims  in  a  patent  to  the  same  inventor,  Held, 
that  the  claims  would  be  void  in  another  pat- 
ent and  should  therefore  be  rejected  on  the 
ground  that  they  cover  an  indivisible  inven- 
tion from  that  already  patented  to  the  same 
inventor.  Ex  parte  Carpenter,  110  O.  G. 
2233. 

116.  The  law  does  not  favor  the  multipli- 
cation of  applications  and  of  patents  for  de- 
vices closely  related  to  each  other  when  they 


can  properly  be  included  in  one  application 
and  in  one  patent.  *Norden  v.  Spaulding,  C. 
D.  1905,  114  O.  G.  1428. 

117.  Where  application  is  made  for  a  patent 
upon  an  alleged  method  after  a  patent  has 
been  granted  upon  the  apparatus  and  it  ap- 
pears that  the  substitution  of  the  word 
"means"  for  the  word  "method"  at  two  places 
would  not  change  the  sense  and  would  make 
the  disclosure  in  the  application  the  same  as 
that  in  the  patent.  Held,  that  to  grant  the  al- 
leged method  claims  would  result  in  two  pat- 
ents for  substantially  the  same  thing.  ♦In  re 
Crevcling,  C.  D.  1905,  117  O.  G.  1167. 

118.  Where  appellants  have  a  copending  ap- 
plication which  discloses  the  same  process  as 
the  application  containing  the  appealed  claims 
and  they  are  so  related  that  the  claims  of 
either  application  could  be  made  in  the  other 
and  there  is  no  proper  line  of  division  be- 
tween them,  and,  moreover,  the  steps  of  the 
complete  process  of  the  appealed  claims  not 
claimed  in  the  copending  application  arc 
claimed  in  a  second  copending  application  of 
appellants  and  the  claims  of  the  copending 
applications  from  the  issues  of  certain  inter- 
ferences. Held,  that  the  issues  of  these  inter- 
ferences constitute  a  proper  ground  upon 
which  to  reject  the  appealed  claims.  Ex  parte 
Wickers  and  Furlong,  C.  D.  1906,  124  O.  G. 
90.-). 

119.  Where  certain  limitations  affecting  the 
scope  of  the  claims  appealed  are  not  found  in 
the  interference  issues  upon  which  the  claims 
w'cre  rejected,  but  these  differences  are  not 
considered  patentable  distinctions,  Held,  that 
the  claims  were  properly  rejected.     Id. 

120.  Where  an  application  is  filed  the  spec- 
ification and  claims  of  which  the  examiner 
holds  to  be  substantially  the  same  as  those 
of  a  prior  application  of  the  same  party  the 
claims  of  which  have  been  declared  unpatent- 
able by  the  commissioner  and  the  courts.  Held, 
that  the  application  should  be  examined  and 
the  claims  rejected  on  the  ground  that  the 
question  of  their  patentability  is  res  adjudi- 
cala.  Ex  parte  Millett  and  Reed,  C.  D.  1907, 
128  O.  G.  2836. 

XIII.  Mistake  in  Form. 

121.  This  office  has  no  authority  to  refuse 
to  consider  any  formal  application  and  re- 
quire the  applicant  to  substitute  therefore  an 
application    for   a   mechanical   patent   or    any 


APPLICATION,  XIV-XVII. 


63 


other  patent  than  that  which  he  wishes.     Ex 
parte  Adams,  C.  D.  1898,  84  O.  G.  311. 

122.  Where  an  informal  application  is  re- 
ceived which  is  accompanied  by  a  fee  of 
$15  and  a  distinct  request  that  the  patent,  if 
issued,  be  for  seven  years,  even  though  the 
applicant  subsequently  filed  an  amended  peti- 
tion and  an  oath  such  as  are  used  in  mechan- 
ical applications,  blank  forms  for  which  were 
sent  him  by  the  application  clerk  in  order  to 
complete  the  tiling  of  the  case.  Held,  that  it 
was  a  mistake  to  enter  the  same  as  a  mechan- 
ical application.  Ex  parte  Hartje,  C.  D.  1901, 
95  O.  G.  2485. 

123.  Where  the  evident  intent  was  that  the 
patent,  if  issued,  should  be  for  a  design  and 
where  the  applicant  does  not  seek  to  change 
his  ground,  but  stands  by  his  original  request 
for  a  design  patent  for  seven  years,  Held, 
that  a  substitute  specification  and  claim  clearly 
setting  forth  a  design  should  be  entered  and 
the  application  should  be  transferred  to  the 
jurisdiction  of  the  examiner  of  designs.    Id. 

124.  Where  an  applicant  in  presenting  his 
own  case  requested  in  his  petition  the  grant 
of  a  design  patent  upon  a  letter  scale,  but  his 
specification,  claim,  and  oath  were  of  the 
form  prescribed  for  mechanical  application, 
and  it  appears  from  the  actions  by  the  appli- 
cant in  the  case  that  it  was  his  intention  to 
obtain  protection  for  an  article  of  manufac- 
ture. Held,  that  he  should  be  permitted  to 
amend  the  case  to  accord  with  the  form  pre- 
scribed for  mechanical  applications.  Ex  parte 
Saunders,  Jr.,  C.  D.  1907,  131  O.  G.  1164. 

XIV.  Striking  From  Files. 

125.  Where  an  application  as  filed  appears 
to  have  been  changed  after  being  executed 
and  the  applicant  makes  no  showing  in  reply 
to  an  order  to  show  cause  why  it  should  not 
be  stricken  from  the  files.  Held,  that  it  will 
be  stricken  from  the  files  under  the  provisions 
of  Rule  31.  Ex  parte  Kuppcr,  C.  D.  1898, 
82  O.  G.  186. 

126.  Where  an  inventor  assigns  an  inven- 
tion and  subsequently  alleges  that  the  appli- 
cation papers  were  executed  in  blank  and 
petitions  that  the  application  be  stricken  from 
the  files.  Held,  that  because  of  the  assignment 
he  is  estopped  from  denying  the  validity  of 
the  executed  papers,  especially  when  the  appli- 
cation has  been  on  file  nearly  a  year.  Ex 
parte  Shaver,  C.  D.  1907.  131  O.  G.  2422. 


XV.  Features    Shown   but   not   Claimed. 

127.  A  patentee  is  entitled  to  a  beneficial 
use  of  a  feature  of  his  device  if  it  actually 
exists,  although  he  did  not  specifically  claim 
it,  and  it  may  constitute  an  anticipation  of  a 
later  patent,  rf  Forest  City  Foundry  &  Mfg. 
Co.  V.  Barnard,  C.  D.  1910,  157  O.  G.  756. 

XVI.  Second   Application — Same   Subject 

Matter. 

128.  The  doctrine  of  res  adjudicala  applies 
to  decisions  of  this  office,  and  upon  a  second 
application  for  the  same  subject-matter  the 
examiner  may  refuse  to  reconsider  the  ques- 
tion whether  the  claims  are  patentable  over 
the  prior  art  and  may  reject  them  on  the  prior 
adjudication.  Ex  parte  Kenney,  C.  D.  1905, 
lis  O.  0.  2253. 

129.  This  office  cannot  refuse  to  consider 
an  application  on  the  ground  that  it  is  the 
same  as  one  previously  adjudicated,  but  must 
either  allow  or  reject  it.    Id. 

130.  Where  an  applicant  after  having  been 
refused  a  patent  by  the  commissioner  on  ap- 
peal presented  a  new  application  containing 
claims  differing  from  those  of  the  earlier  ap- 
plication in  the  phraseology  rather  than  in 
meaning,  Held,  that  such  differences  or  any 
changes  merely  broadening  claims  that  have 
been  once  determined  do  not  affect  the  con- 
clusiveness of  the  former  adjudication  and 
that  the  subject-matter  was  res  adjudicala. 
*In  re  Edison,  C.  D.  1908,  133  O.  G.  1190. 

XVII.  Delay  in  Filing  Parts. 

131.  A  petition,  specification,  and  an  oath 
executed  by  an  inventor  on  October  26,  1899, 
before  the  United  States  Consul-General  at 
Paris,  cannot  be  substituted  for  the  petition, 
specification,  and  oath  executed  by  the  attor- 
ney in  fact  of  applicant,  which  latter  papers 
were  deposited  in  the  patent  office  on  October 
27,  1899,  for  the  purpose  of  giving  the  date 
of  October  27,  1899,  to  the  application,  so 
that  the  applicant  will  not  forfeit  his  rights 
to  obtain  a  valid  patent  under  section  4887, 
Revised  Statutes,  by  reason  of  a  prior  for- 
eign patent,  as  the  power  to  make  such  sub- 
stitution is  not  vested  in  the  commissioner  of 
patents.  In  re  Tropenas,  C.  D.  1900,  90  O. 
G.  749. 

132.  The  application  executed  by  applicant 
before  the  United  States  Consul-General  on 
October  26,  1899,  can  be  of  no  assistance  in 


64 


ASSIGNEES,  I. 


giving  applicant  a  date  of  filing  earlier  than 
the  actual  date  of  the  receipt  of  the  applica- 
tion papers  in  the  patent  office.  There  is  but 
one  place  in  which  an  application  for  a  United 
States  patent  can  be  tiled,  and  that  is  the 
United  States  patent  office.  The  papers  exe- 
cuted by  the  attorney  can  not  be  treated  as 
forming  any  part  of  a  valid  application.     Id. 

133.  A  patent  issued  upon  such  substitute 
papers  as  presented  .in  this  case  would  be  in- 
valid, for  the  reason  that  the  application  for 
the  patent  must  have  been  made  by  the  in- 
ventor not  later  than  October  28,  1899;  but 
no  application  was  made  by  him  until  No- 
vember 11,  1890.     Id. 

134.  Where  the  application  was  filed  six 
months  after  the  execution  of  the  oath.  Held, 
that  a  new  oath  should  be  furnished.  Ex  parte 
Moehn,  C.  D.  1003,  106  O.  G.  09j. 

ASSIGNEES. 

(See  Interference;  Assignors.) 

I.  Rights  of  in  Application. 
II.  Issuance  of  Patent  to. 

I.  Rights  of  in  Application. 

1.  A  petition  asking  that  one  of  two  joint 
owners  be  permitted  to  prosecute  the  appli- 
cation without  the  consent  of  the  other  will 
not  be  granted  without  serving  a  copy  of  the 
petition  upon  that  other  owner  and  giving  him 
an  opportunity  to  oppose  it.  Ex  parte  Badg- 
Icy,  C.  D.  1902,  100  O.  G.  2604. 

2.  Where  the  attorneys  appointed  by  the 
inventor  protest  against  the  revocation  of 
their  power  by  him  on  the  ground  that  they 
represent  an  assignee  and  the  only  evidence 
presented  that  there  has  been  an  assignment 
consists  of  ex  parte  affidavits,  Held,  that  the 
protest  will  be  dismissed.  Ex  parte  Collins, 
C.  D.  1902,  100  O.  G.  2601. 

3.  Where  the  applicant  appoints  attorneys 
in  the  case.  Held,  that  he  may  revoke  their 
power  even  after  an  assignment  of  the  inven- 
tion.    Id. 

4.  Whatever  a  party  may  do  personally  he 
may  do  by  his  agent,  unless  prohibited  by 
statute  or  unless  the  act  is  of  so  peculiarly  a 
personal  character  as  to  necessarily  preclude 
its  delegation.  Ex  parte  Agee,  C.  D.  1902, 
101  O.  G.  1609. 

5.  An  assignee  of  a  half  interest  cannot 
prosecute  the  application  to  the  exclusion  of 
the  inventor ;  but,  on  the  contrary,  the  in- 
ventor can  prosecute  it  to  the  exclusion  of 


every  one  save  the  assignee  of  the  entire  in- 
terest. Ex  parte  Sandstrom,  C.  D.  1904,  113 
O.  G.  850. 

6.  An  assignee  of  a  part  interest  may  be 
represented  by  an  attorney,  who  may  inspect 
and  obtain  information  as  to  the  case,  but 
who  cannot  take  action  in  it.    Id. 

7.  Held,  that  an  assignee  of  an  equitable 
interest  in  an  invention  has  the  right  to  inspect 
the  file  and  obtain  copies  of  the  same.  Ex 
parte  Hertford,  C.  D.  1904.  113  O.  G.  851. 

8.  Since  the  assignee  of  an  equitable  in- 
terest in  an  invention  has  the  right  to  inspect 
the  files  and  obtain  copies.  Held,  that  the  as- 
signee has  the  right  to  delegate  these  powers 
to  an  attorney  of  its  own  selection.     Id. 

9.  Where  an  inventor  assigns  his  interest 
in  an  invention  and  requests  that  the  patent 
shall  issue  to  the  assignee.  Held,  that  the  in- 
ventor should  not  be  recognized  to  prosecute 
the  application  to  the  exclusion  of  the  assig- 
nee. Sparkes  v.  Small,  C.  D.  1904,  113  O.  G. 
1970. 

10.  Where  the  right  to  prosecute  an  appli- 
cation by  an  assignee  has  been  recognized  by 
the  office.  Held,  that  that  right  should  not  be 
denied  it  merely  because  the  inventor  subse- 
quently executed  another  assignment.     Id. 

11.  When  an  assignee  of  an  equitable  inter- 
est in  an  invention  files  a  power  of  attorney, 
the  power  of  attorney  should  be  entered  in 
the  file  and  recorded  on  the  back  thereof,  as 
a  permission  to  inspect,  and  should  not  be  re- 
garded as  the  appointment  of  an  associate  at- 
torney. Ex  parte  Hertford,  C.  D.  1904,  113 
O.  G.  851. 

12.  Where  each  of  two  applications  filed  by 
the  same  inventor  contains  some  claims  for 
the  same  subject-matter  and  both  applications 
and  the  inventions  disclosed  therein  are  as- 
signed, respectively,  to  different  assignees, 
Held,  that  the  application  which  was  first  as- 
signed should  be  passed  to  ':sue  and  the 
claims  in  the  other  application  should  be  only 
such  as  cannot  be  properly  made  in  the  first. 
In  re  McCormick,  C.  D.  190.5,  116  O.  G.  1183. 

13.  Where  an  inventor  files  two  applications 
containing  some  claims  for  the  same  subject- 
matter  and  assigns  both  applications  to  differ- 
ent assignees,  and  so  far  as  the  records  of 
this  office  show  the  entire  application  and  in- 
vention were  assigned,  and  as  a  part  of  the 
claims  in  an  application  cannot  be  assigned, 
Held,  that  this  office  cannot  undertake  to 
settle  the  equitable  rights  of  the  parties,  but 
must  leave  that  to  the  courts.    The  office  must 


ASSIGNEES,  II. 


6) 


follow  the  record  in  so  far  as  it  shows  legal 
title.    Id. 

14.  Where  an  interference  exists  between 
an  applicant  for  registration  and  the  registrant 
of  a  trade-mark  and  on  the  records  of  the  of- 
fice another  party  appears  as  the  assignee  of 
the  registrant,  but  said  assignee  has  made  no 
application  for  registration.  Held,  that  said 
assignee  should  not  be  made  a  party  with  the 
applicant  and  the  registrant  in  the  interfer- 
ence. Frank  &  Gutmann  v.  Macwilliam,  C. 
D.  190,-),  114  O.  G.  .542. 

15.  Where  a  party  to  a  trade-mark  inter- 
ference has  assigned  his  interest  in  the  trade- 
mark. Held,  that  the  assignees  should  be 
notified  of  the  declaration  of  interference  and 
that  no  good  reason  is  seen  why,  under  proper 
conditions,  the  assignees  should  not  be  per- 
mitted to  take  charge  of  the  prosecution  of 
the  interference  in  place  of  the  assignors.    Id. 

16.  Where  assignees  of  half  interest  petition 
for  permission  to  prosecute  the  case,  alleging 
that  inventor  has  disappeared,  and  it  appears 
that  the  inventor  has  a  habit  of  absenting  him- 
self, and  the  application  has  not  been  acted 
upon  by  the  office,  Held,  that  the  petition  is 
premature  and  may  be  renewed  in  case  it 
shall  appear  to  be  necessary  to  permit  prose- 
cution by  the  assignees  to  save  the  case  from 
abandonment.  Ex  parte  Fitzhugh,  C.  D.  1906, 
120  O.  G.  660. 

17.  Where  the  assignee  of  an  undivided  in- 
terest of  an  invention  makes  an  affidavit  that 
he  is  unable  to  obtain  any  information  from 
an  applicant  and  the  record  shows  that  the 
applicant  has  taken  no  action  in  the  inter- 
ference and  has  filed  no  preliminary  state- 
ment, the  assignee  will  be  allowed  to  prose- 
cute the  interference.  Lottridge  v.  Eustice, 
C.  D.  1906,  121  O.  G.  689. 

18.  Rules  5  and  20,  which  provide  that  the 
assignee  of  the  entire  interest  of  an  invention 
may  prosecute  the  application  for  patent  to 
the  exclusion  of  the  inventor,  Held,  to  be 
valid,  fin  re  Adams,  C.  D.  1907,  129  O.  G. 
1612. 

19.  The  patent  office  should  not  issue  a  pat- 
ent to  an  alleged  assignee  where  the  inventor 
has  reserved  to  himself  the  exclusive  right  to 
make  or  use  or  sell  the  invention  covered  by 
his  application  or  any  combination  of  these 
elements  which  limits  the  interests  of  the  al- 
leged assignee  to  an  interest  in  the  invention 
less  than  that  defined  as  an  assignment  by 
the  Supreme  Court  of  the  United  States  in 
the  decision  Waterman   v.  McKenzie    (C.   D. 

5 


1891,  320,  54  O.  G.  1562,  138  U.  S.  252),  which 
defined  an  assignment  to  be  either  (1)  the 
whole  patent,  comprising  the  exclusive  right 
to  make,  use,  and  vend  the  invention  through- 
out the  United  States,  or  (2)  an  undivided 
part  or  share  of  that  exclusive  right,  or  (3) 
the  exclusive  right  under  the  patent  within 
and  throughout  a  specified  part  of  the  United 
States.  Ex  parte  Taliaferro,  C.  D.  1908,  136 
O.  G.  1531. 

20.  Where  in  suit  in  the  supreme  court  of 
New  York  between  the  M.  Co.,  and  B.  in- 
volving the  title  to  certain  inventions  for 
which  applications  had  been  filed  in  the  United 
States  patent  office  it  was  held,  that  B.  was  the 
owner  of  such  inventions  and  it  was  ordered 
that  such  applications  be  assigned  by  the 
M.  Co.  to  B.,  which  order  was  finally  com- 
plied with,  and  an  appeal  was  taken  from 
such  decision,  but  no  supersedeas  of  the  order 
of  the  trial  court  was  ever  had.  Held,  that  the 
judgment  of  the  supreme  court  of  New  York, 
until  reversed  or  modified,  was  conclusive  as 
between  the  parties  on  all  questions  of  own- 
ership of  the  applications,  that  it  was  the  duty 
of  the  commissioner  of  patents  to  recognize 
this  right  and  permit  B.  to  inspect  and  obtain 
copies  of  such  applications,  and  that  a  man- 
damus to  this  effect  should  issue.  a  The 
United  States  of  America,  ex  rel.  Boyer  v. 
Moore,  C.  D.  1909,  138  O.  G.  529. 

21.  Where  in  a  suit  in  the  supreme  court 
of  New  York  between  the  M.  Co.  and  B.  in- 
volving the  title  to  certain  inventions  for 
which  applications  had  been  filed  in  the  United 
States  patent  office  it  was  held  that  B.  was 
the  owner  of  such  inventions  and  it  was  or- 
dered that  such  applications  be  assigned  by 
the  M.  Co.  to  B.,  which  order  was  finally  com- 
plied with.  Held,  that  it  was  within  the  dis- 
cretion of  the  commissioner  to  suspend  action 
upon  such  applications  pending  appeal  from 
the  decision  of  the  court  and  to  refuse  B.  ac- 
cess thereto  or  copies  thereof  until  the  final 
determination  of  the  question  of  ownership 
of  the  inventions,  although  no  stay  of  execu- 
tion was  granted,  and  that  a  mandamus  re- 
quiring the  commissioner  to  permit  B.  to 
have  access  to  such  applications  was  improp- 
erly granted.  *Moore,  Commissioner  of  Pat- 
ents V.  The  United  States  of  America,  ex 
rel.  Boyer,  C.  D.  1909,  13S  O.  G.  530. 

II.  Issuance  of  Patent  to. 

22.  Where  an  applicant  in  certain  instru- 
ments  assigned   his    right,   title,   and   interest 


66 


ASSIGNEES,  II. 


in  an  invention,  retaining  for  himself  the  ex- 
clusive right  to  employ  the  invention  in  the 
manufacture  of  a  certain  class  of  machines. 
Held,  that  such  instruments  do  not  convey  the 
entire  interest  in  the  invention  or  an  undi- 
vided part  thereof,  and  they  are  construed 
to  be  nothing  more  than  licenses.  (Gayler  v. 
Wilder,  10  How.  477,  and  Waterman  v.  Mac- 
kenzie, C.  D.  1891,  320,  54  O.  G.  1562,  cited.) 
E.x  parte  Rosback,  C.  D.  1899,  89  O.  G.  705. 

23.  Held,  further,  that  under  the  authorities 
and  the  settled  practice  of  the  office,  the  office 
was  justified  in  construing  such  instruments 
as  not  conveying  such  an  interest  in  the  in- 
vention and  the  patent  as  would  authorize  the 
commissioner  under  the  provisions  of  Rule 
26  to  issue  the  patent  to  the  party  named  as 
assignee.    Id. 

24.  Where  the  office  did  not  notify  the  in- 
terested parties  that  the  request  to  issue  a 
patent  to  an  alleged  assignee  would  not  be 
granted,  because  the  office  did  not  consider 
the  instruments  as  conveying  such  interest 
as  would  authorize  the  issuing  of  the  patents 
as  requested.  Held,  that  this  is  not  sufficient 
ground  to  warrant  the  issue  of  a  certificate 
of  correction,  as  the  parties  are  presumed  to 
know  the  rules  and  practice  of  the  office.    Id. 

25.  Where  an  instrument  is  recorded  in 
this  office  transferring  the  invention  "subject 
to  a  license,"  Held,  that  the  patent  will  not 
be  issued  to  the  assignee.  Ex  parte  Eicke- 
mcyer,  C.  D.  1902,  99  O.  G.  1622. 

26.  Where  an  instrument  transfers  an  in- 
vention "subject  to"  a  previous  instrument  re- 
ferred to  as  a  license.  Held,  that  without  an 
inspection  of  the  first  instrument  it  cannot  be 
determined  whether  or  not  the  second  con- 
veys the  entire  title.     Id. 

27.  Where  there  are  of  record  two  assign- 
ments by  the  inventor  to  different  parties  of 
his  entire  rights  in  the  application.  Held,  that 
the  patent  should  issue  to  the  inventor.  In 
re  Moller,  C.  D.  1904,  108  O.  G.  2144. 

28.  The  law  is  not  mandatory  that  the  pat- 
ent issue  to  the  assignee  in  any  case,  and 
where  by  reason  of  conflicting  assignments 
the  office  is  uncertain  who  is  the  real  owner  it 
is  justified  in  issuing  the  patent  to  the  in- 
ventor who  made  the  application,  leaving  it 
to  the  courts  to  determine  who  is  the  real 
owner.    Id. 

29.  Where  two  instruments  are  recorded  in 
this  office  purporting  to  convey  the  entire  right 
in  an  application  to  different  parties  and  only 
one   of   those   instruments   requests   the   issue 


of  the  patent  to  the  assignee,  Held,  that  that 
assignee  alone  has  the  legal  title  and  is  en- 
titled to  receive  the  patent.  Ex  parte  Graham, 
C.  D.  1904,  112  O.  G.  1752. 

30.  The  mere  reservation  in  an  assignment 
of  a  license  does  not  prevent  the  transfer  of 
the  legal  title  to  the  invention  and  the  patent 
to  be  granted.  Ex  parte  Rowand,  C.  D.  1905, 
114  O.  G.  2091. 

31.  This  office  will  not  refuse  to  issue  the 
patent  to  the  assignee  because  the  instrument 
of  transfer  contains  a  reservation  of  some- 
thing which  amounts  to  a  mere  license.     Id. 

32.  Where  a  patent  is  issued  to  the  inven- 
tor after  an  assignment  is  filed.  Held,  that  the 
patent  is  valid  and  vests  in  the  assignee  and 
that  therefore  the  error  is  not  such  as  to  call 
for  a  reissue  at  the  expense  of  the  office  or 
the  issuance  of  a  new  patent.  Ex  parte  Fish, 
C.  D.  1905,  114  O.  G.  2091. 

33.  The  issuance  of  a  patent  to  the  in- 
ventor after  assignment  does  not  affect  the 
scope,  validity,  or  legal  ownership  of  the  pat- 
ent, but  merely  the  form  of  the  grant,  and  the 
matter  will  therefore  be  corrected  only  by 
certificate  of  correction.     Id. 

34.  Where  a  master  is  appointed  by  the 
court  to  transfer  a  patent  application  and  he 
does  so  in  his  own  name  and  the  instrument  is 
recorded  in  this  office.  Held,  that  the  patent 
will  not  be  issued  to  the  grantee  named  in  the 
instrument,  since  the  instrument  is  not  a  legal 
assignment.  Ex  parte  McPherson,  C.  D. 
1905,  117  O.  G.  275. 

35.  An  assignment  in  which  there  is  no  re- 
quest that  the  patent  issue  to  the  assignee 
conveys  only  an  equitable  title.  Ex  parte 
Stanford,  C.  D.   1909,  138  O.  G.  527. 

36.  There  is  no  law  compelling  the  com- 
missioner of  patents  to  recognize  an  assign- 
ment. It  is  no  part  of  his  duty  to  pass  upon 
the  validity  or  invalidity  of  assignments  filed 
in  his  office,  and  it  is  a  matter  within  his  dis- 
cretion whether  he  shall  issue  the  patent  to 
the  assignee  or  the  inventor.  *Moore,  Com- 
missioner of  Patents  v.  The  United  States  of 
America,  ex  rel  Boyer,  C.  D.  1909,  138  O.  G. 
530. 

37.  Where  an  inventor  assigns  his  entire 
rights  in  an  application  for  patent  to  different 
parties,  Held,  that  the  patent  should  issue  to 
the  inventor.  In  re  Chicago  Hook  and  Eye 
Company,  C.  D.  1909,  146  O.  G.  255. 

38.  In  case  of  conflicting  assignments  it  is 
well  settled  that  the  commissioner  has  author- 


ASSIGNMENT,  I-III. 


67 


ity  to  ignore  those  assignments  and  issue  the 
patent  to  the  inventor.     Id. 

39.  The  assignee  of  an  entire  interest  in  the 
invention  may  not  revoke  a  power  of  attorney 
given  by  the  applicant  and  appoint  one  of  his 
own  selection  where  the  assignment  does  not 
request  that  the  patent  shall  issue  to  said  as- 
signee. Such  an  assignment  conveys  merely 
an  equitable  and  not  a  legal  title.  Ex  parte 
Stanford,  C.  D.  1909,  138  O.  G.  527. 

40.  If  an  assignment  be  of  record,  trans- 
ferring the  entire  right,  title,  and  interest 
without  any  qualifications  or  reservations,  and 
said  instrument  contains  a  request  to  issue  the 
patent  to  an  assignee,  such  action  will  be  taken 
by  the  office,  even  if  licenses  be  also  of  rec- 
ord.   In  re  Hubert,  C.  D.  1911,  171  O.  G.  745. 

41.  A  patent  will  not  be  issued  in  accord- 
ance with  the  request  contained  in  an  alleged 
assignment  which  is  made  subject  to  an  ex- 
clusive license.     Id. 

42.  V.  made  an  alleged  assignment  to  H. 
subject  to  an  exclusive  license  and  requested 
that  the  patent  issue  to  H.  Subsequently  H. 
acquired  this  license.  Held,  that  as  H.  was 
not  the  assignee  of  the  entire  interest  or  an 
undivided  part  thereof  the  patent  would  not 
be  issued  in  accordance  with  the  request.     Id. 


ASSIGNMENT. 

I.  In  General. 
II.  By  Order  of  Court. 

III.  In  Bankruptcy. 

IV.  Disputed  Title. 

V.  Recording  and  Identification. 

I.  In  General. 

1.  Where  the  company  owning  certain  pat- 
ents granted  to  the  complainant  the  exclusive 
right  to  use  the  invention  in  this  district  for 
a  certain  number  of  years.  Held,  that  the  fact 
that  the  company  is  now  insolvent  and  has 
gone  out  of  business  does  not  affect  or  limit 
the  exclusive  right  given  to  the  complainant. 
♦Whitson  et  al.  v.  The  Columbia  Phonograph 
Company,  C.  D.  1902,  90  O.  G.  418. 

2.  The  office  will  not  return  an  assignment 
filed  for  record  to  any  one  save  the  person 
filing  it  or  the  beneficiary.  It  may  depart 
from  this  rule  upon  the  advice  of  a  court  of 
competent  jurisdiction,  but  has  no  machinery 
or  jurisdiction  to  investigate  and  determine 
the  rights  of  the  parties  except  as  shown  by 


the    instrument   itself.     In    re    Hogan,    C.    D. 
1903,  105  O.  G.  1780. 

3.  An  assignment  referring  to  an  applica- 
tion filed  by  two  parties  as  joint  inventors 
can  not  be  applied  to  an  application  or  patent 
in  the  name  of  one  of  them  as  a  sole  inventor 
even  where  the  same  invention  is  claimed  in 
both  cases.  Ex  parte  Harris  C.  D.  1905,  116 
O.  G.  297. 

4.  An  instrument  purporting  to  convey  "an 
undivided  one-sixth  of  all  right,  title  and  in- 
terest" in  an  invention,  but  reserving  to  the 
assignor  the  sole  right  to  manufacture  and  sell 
the  invention  and  providing  that  the  assignee 
"shall  not  so  manufacture  and  sell"  except  by 
assignor's  consent,  conveys  nothing  more  than 
a  right  to  use  the  invention.  It  is  a  mere 
license  and  not  an  assignment  and  is  not  such 
an  interest  as  would  warrant  the  issuance  of 
the  patent  to  the  grantee,  notwithstanding  the 
request  in  such  instrument  that  the  patent  so 
issue.  Ex  parte  Taliaferro,  C.  D.  1908,  135 
O.  G.  1531. 

11.  By  Order  of  Court. 

5.  A  master  appointed  by  the  court  has  no 

interest  in  a  patent  granted  to  another,  and 
therefore  a  transfer  of  the  patent  by  him  in 
his  own  name  can  have  no  validity  unless  it 
be  assumed  that  the  court  first  gave  him  title 
to  the  patent  and  then  ordered  him  to  trans- 
fer it.  The  court,  however,  cannot  take  pos- 
session of  a  patent  in  such  manner.  Ex  parte 
McPherson,  C.  D.  1905,  117  O.  G.  275. 

6.  Patent-rights  do  not  exist  in  any  par- 
ticular state  or  district,  but  are  coextensive 
with  the  United  States,  and  therefore  they 
are  not  subject  to  seizure  and  sale  upon  exe- 
cution by  courts  whose  jurisdiction  is  neces- 
sarily limited  to  particular  districts.    Id. 

III.  In  Bankruptcy. 

7.  E.xcept  in  the  case  of  bankruptcy  pro- 
ceedings the  statutes  provide  for  no  transfer 
of  patent-rights  except  by  a  written  instru- 
ment executed  by  the  owner.  Ex  parte  Mc- 
Pherson, C.  D.  1905,  117  O.  G.  275. 

8.  Where  an  application  for  patent  is  as- 
signed and  prior  to  the  issuance  of  a  patent 
thereon  the  assignee  is  declared  a  bankrupt. 
Held,  that  the  trustees  in  bankruptcy  acquires 
no  title  to  such  application.  In  re  Ives,  C.  D. 
1909,   149   O.   G.   309. 

9.  An  assignment  purporting  to  be  by  the 
trustee  in  bankruptcy  of  the  applicant  will  be 


68 


ASSIGNMENT,   IV. 


recorded ;  but  the  patent  will  not  be  issued  in 
accordance  with  the  request  contained  there- 
in.    Ex  parte  Eyton,  C.  D.  1911,  171  O.  G.  481. 

IV.  Disi'uTici)  TiTi,i:. 

10.  This  office  must  refuse  to  decide  the 
question  of  the  title  to  an  invention  when 
there  are  conflicting  assignments  of  record, 
or  which  one  of  two  or  more  assignees  is  en- 
titled to  be  recognized  in  the  prosecution  of 
the  case,  as  it  has  no  judicial  power  to  try  and 
determine  such  questions,  and  when  there  is 
such  a  dispute  as  in  this  case  lietwecn  as- 
signees the  office  will  recognize  the  applicant, 
leaving  the  question  of  the  right  of  the  as- 
signees to  be  settled  by  the  courts.  Ex  parte 
McTammany,  C.  D.  1900,  93  O.  G.  7.51. 

11.  Where  it  appears  that  there  are  two  or 
more  assignments  of  record  in  which  the 
whole  right  is  transferred,  and  in  only  one 
of  the  assignments  is  there  a  request  that  the 
patent  issue  to  the  assignee,  that  assignee 
should  be  recognized  the  prosecution  of  the 
case  to  the  exclusion  of  the  other  assignee. 
Id. 

12.  Where  there  are  tvi-o  or  more  assign- 
ments purporting  to  convey  the  exclusive  right, 
and  in  each  there  is  a  request  that  the  patent 
issue  to  the  assignee  named  therein,  the  office 
should  not  determine  which  assignee  has  the 
right  to  the  invention  and  to  prosecute  the 
case,  but  the  applicant  should  be  permitted  to 
prosecute  it  and  to  appoint  an  attorney  of  his 
own  selection,  the  question  which  assignee  has 
the  right  to  the  invention  being  left  to  the 
courts.     Id. 

13.  In  any  case  where  there  is  an  assign- 
ment of  a  whole  interest  in  an  invention  dis- 
closed in  an  application  or  an  undivided  part 
thereof,  whether  accompanied  by  a  request  or 
not,  the  assignee  may  be  permitted  to  be  rep- 
resented by  an  attorney  of  his  own  selection 
for  the  purpose  of  having  access  to  the  appli- 
cation, but  not  for  prosecuting  it,  unless  the 
applicant  can  show  some  good  and  sufficient 
reason  why  such  assignee  should  not  be  per- 
mitted to  have  access  to  the  case.    Id. 

14.  Where  it  appeared  that  F.  as  trustee 
had  authority  to  sign  the  inventor's  name  and 
to  sell  and  convey  inventions  and  T.  had  re- 
ceived the  inventions  through  him  by  regular 
assignments  which  requested  that  the  patents 
be  issued  to  the  assignor.  Held,  that  T.  is  the 
legal  owner  of  the  inventions  and  entitled  to 
prosecute   the   applications   and   to   be   repre- 


sented  by   an   attorney   of  his  own    selection. 
Ex  parte  Tracy,  C.  D.  1901,  94  O.  G.  431. 

15.  Where  an  alleged  assignment  to  M. 
does  not  identify  any  application  and  docs  not 
request  that  the  patent  issue  to  the  assignee. 
Held,  that  if  the  assignment  conveys  any  in- 
terest in  the  invention  it  is  merely  equitable 
and  not  legal,  and  the  office  will  not  recognize 
such  equitable  interest,  but  must  be  guided 
by  the  record  as  to  the  legal  title.     Id. 

16.  field,  that  where  the  office  records  do 
not  show  conflicting  assignments  of  the  legal 
title  the  assignee  claiming  the  right  under  a 
legal  title  to  prosecute  a  case  will  be  recog- 
nized to  the  exclusion  of  a  party  claiming  the 
right  under  an  alleged  equitable  title.     Id. 

17.  Where  according  to  the  records  of  this 
office  one  party  has  the  legal  title  to  the  in- 
vention, a  power  of  attorney  given  by  another 
alleged  assignee  will  not  be  approved.  A  legal 
assignment  will  be  given  force  until  modified 
by  the  written  consent  of  the  parties  or  a 
decree  of  a  competent  court.  Ex  parte  Miller, 
C.  D.  1901,  97  O.  G.  2307. 

18.  The  office  cannot  undertake  to  adjudi- 
cate the  rights  of  parties  on  disputed  questions 
of  fact  relating  to  assignments,  since  it  acts 
in  a  ministerial  capacity  in  such  matters.  Ex 
parte  Turner,  C.  D.  1902,  100  O.  G.  2603. 

19.  Where  there  are  conflicting  assignments 
of  an  application  which  is  involved  in  inter- 
ference. Held,  that  the  first  assignee,  if  he 
intervenes,  will  be  recognized  to  prosecute 
that  application  until  his  assignment  is  set 
aside  either  by  mutual  agreement  or  by  a  de- 
cision of  a  competent  court.  Ex  parte  Mc- 
Tammany, C.  D.  1900,  lfi8,  93  O.  G.  751,  mod- 
ified. Sparkes  v.  Small,  C.  D.  1904,  113  O. 
G.  1970. 

20.  While  the  office  cannot  undertake  to  set- 
tle disputes  as  to  title,  it  should  not  ignore  the 
fact  of  conflicting  assignments  shown  by  its 
records.  In  re  MoUer,  C.  D.  1904,  108  O.  G. 
2144. 

21.  The  office  acts  in  a  ministerial  capacity 
in  regard  to  assignments  and  cannot  undertake 
to  prevent  fraud  in  them,  but  must  leave  that 
to  the  courts  and  the  punishment  there  meted 
out.    Id. 

22.  Where  an  inventor  assigns  his  entire  in- 
vention to  another,  identifying  the  invention 
by  reference  to  a  caveat  filed  in  the  patent  of- 
fice, and  requests  that  the  patent  which  may 
be  issued  on  an  application  which  he  is  "about 
to  make"  be  issued  to  the  assignee,  and  sub- 
sequently   makes   another   assignment   of    the 


ASSIGNMENT,  V. 


69 


same  invention  similar  to  the  first,  except 
that  he  identifies  the  invention  by  referring 
to  the  date  of  execution  of  the  apphcation,  the 
first  assignee  is  entitled  to  prosecute  the  ap- 
plication and  receive  the  patent,  as  the  first 
assignment,  as  well  as  ilie  second,  conveys  the 
legal  title.  Ex  parte  Wurtz,  C.  D.  190G,  120 
O.  G.  2441. 

23.  Two  assignments  of  the  invention  of  a 
certain  application  were  recorded.  Subse- 
quently there  was  recorded  a  decree  of  court, 
rendered  in  a  suit  to  which  the  inventor  and 
both  assignees  were  parties,  holding  that  the 
latter  assignment  was  void.  Held,  that  the 
patent  should  be  issued  to  the  first  assignee. 
Ex  parte  Nelson,  C.  D.  1910,  i:,3  O.  G.  821. 

V.  REcoRuiNr,  AND  Identification. 

24.  An  assignment  referring  to  two  letters 
patent,  giving  dates  and  numbers  and  purport- 
ing to  be  executed  by  a  receiver  for  a  cer- 
tain corporation,  and  two  grants  purporting 
to  be  executed  by  the  assignee  named  in  the 
assignment,  was  offered  for  record  in  the  pat- 
ent office;  but  record  was  refused  until  an  in- 
strument showing  title  in  the  receiver  was  fur- 
nished for  record.  Held,  on  petition  to  the 
commissioner,  that  as  the  instruments  are  cor- 
rect in  form  and  comply  with  the  terms  of 
the  statutes  and  rules  of  the  patent  office 
there  is  no  authority  vested  in  the  commis- 
sioner of  patents  to  refuse  to  record  the  in- 
strument. Ex  parte  Church  et  al.,  C.  D.  1898, 
82  O.  G.  1987. 

25.  Held,  further,  that  when  such  an  in- 
strument as  that  above  referred  to  is  offered 
for  record  and  the  fees  for  the  recording 
are  paid,  it  becomes  the  duty  of  the  patent 
office  to  record  the  same.  Such  duty  is  a 
ministerial  one.  If  in  the  judgment  of  the 
commissioner  of  patents  the  instrument  so  of- 
fered amounts  to  an  assignment,  grant,  mort- 
gage, lien,  incumbrance,  or  license,  or  affects 
the  title  to  a  patent  or  invention  which  is 
properly  identified  and  accompanied  by  the 
proper  fee,  it  should  be  recorded.  (See  Rule 
199  of  the  Rules  of  Practice.)     Id. 

26.  It  is  no  part  of  the  duty  of  the  office  to 
ascertain  whether  the  party  executing  the  in- 
strument is  possessed  of  tlie  proper  author- 
ity to  execute  the  same.  Manifestly  it  would 
in  many  cases  be  impossible  for  the  office  to 
determine  such  question.  There  is  no  statute 
which  requires  a  party  executing  such  an  in- 
strument to  record  in  the  patent  office  the  in- 


strument under  which  he  claims  title.  The 
commissioner  of  patents  is  vested  with  no 
power  to  compel  such  a  recording,  and  if  he 
be  possessed  of  no  such  power  he  cannot  be 
required  to  exercise  his  judgment  as  to  the 
legal  right  of  the  party  to  execute  the  instru- 
ment offered  for  record.     Id. 

27.  He  may  suggest,  in  a  case  where  the 
instrument  purports  to  be  executed  by  a  re- 
ceiver, attorney,  or  other  party  acting  in  a 
representative  capacity,  that  it  would  be  ad- 
visable to  record  the  instrument  claimed  to 
vest  title  in  such  representative.    Id. 

28.  Where  the  granting  clause  of  an  instru- 
ment contains  no  reference  to  a  specific  appli- 
cation, but  upon  taking  the  instrument  as  a 
whole  and  construing  all  the  parts  together  it 
is  seen  that  it  was  intended  to  convey  and 
does  convey  a  certain  right  in  the  application 
named  in  said  instrument.  Held,  that  the  as- 
signment division  made  no  error  in  applying 
the  assignment  to  said  application,  so  that  the 
patent  might  be  issued  to  the  assignee  speci- 
fied. In  re  O'Leary,  C.  D.  1900,  91  O.  G. 
2001. 

29.  An  assignment  not  identifying  an  appli- 
cation was  filed  for  record  together  with  an 
affidavit  and  two  letters  setting  forth  that  the 
assignment  was  intended  to  apply  to  a  spe- 
cific application,  and  it  was  requested  that  the 
assignment  be  so  applied.  Held,  that  there  is 
no  authority  for  recording  in  this  office  the 
affidavit  and  letters,  and  that  it  has  been  the 
uniform  practice  of  the  office  to  refuse  to 
record  such  papers,  and  as  the  assignment 
does  not  identify  the  application  it  cannot  be 
applied  thereto.  In  re  Haines,  C.  D.  1900, 
91  O.  G.  2.571. 

30.  Where  evidence  is  presented  tending  to 
show  that  the  conditions  of  an  agreement  re- 
lating to  a  patent  have  not  been  complied 
with  and  it  is  requested  that  the  agreement 
be  stricken  from  the  record.  Held,  that  the 
request  will  be  denied,  since  this  office  has 
no  authority  to  render  decisions  as  to  the 
validity  of  such  agreements.  In  re  Flanigan 
ct  al.,  C.  D.  190:!,  103  O.  G.  428. 

31.  No  assignment  or  agreement  regularly 
and  properly  recorded  will  be  stricken  from 
the  record,  but  a  second  instrument  having  the 
effect  of  nullifying  the  first  will,  if  presented, 
be  recorded,  leaving  the  effect  of  that  instru- 
ment to  be  determined  by  the  courts.     Id. 

32.  No  instrument  will  be  recorded  which 
does  not  itself  aft'ect  the  title  or  the  rights 
of  the  patentee,  and  nothing  will  be  recorded 


70 


ATTORNEYS,  I. 


which   merely   constitutes   evidence  as   to   the 
validity  of  sucli  an  instrument.     Id. 

33.  Where  an  assignment  is  recorded  trans- 
ferring the  invention  of  a  certain  apphcation 
except  the  part  shown  in  a  blue-print  attached 
to  the  assignment  and  the  office  issues  to  the 
assignee  a  patent  upon  an  application  which 
purports  to  be  a  division  of  the  first  case  and 
which  it  is  now  claimed  covers  only  the  mat- 
ter e.xcepted  from  the  assignment,  Held,  no 
mistake  on  the  part  of  the  office.  Ex  parte 
Long,  C.  D.  1903,  104  O.  G.  851. 

34.  The  office  acts  in  a  ministerial  capacity 
in  regard  to  assignments  and  cannot  be  ex- 
pected to  make  examinations  into  the  subject- 
matter  of  applications  to  determine  whether 
or  not  assignments  apply  to  them.     Id. 

35.  Assignments  in  order  to  be  given  ef- 
fect by  the  office  must  identify  the  applica- 
tions referred  to  otherwise  than  by  subject- 
matter,  and  this  is  true  of  matter  to  be  ex- 
cepted from  the  assignment  as  well  as  that  to 
be  included.     Id. 

36.  Where  a  license  and  an  agreement  to 
employ  the  licensor  during  the  life  of  the  li- 
cense are  recorded  and  subsequently  letters 
from  the  licensee  terminating  the  employment 
are  presented  for  record,  Held,  that  they  will 
not  be  recorded.  In  re  Charlton,  C.  D.  1903, 
104  O.  G.  1130. 

37.  The  law  does  not  provide  for  recording 
evidence  relating  to  assignments,  but  merely 
for  recording  the  instruments  themselves.  Id. 

38.  This  office  will  not  record  among  the 
transfers  of  patents  letters  and  affidavits  tend- 
ing to  show  that  an  assignment  of  the  inven- 
tion was  made.  It  will  record  the  instruments 
themselves,  but  not  evidence  relating  to  them. 
In  re  Richard,  C.  D.  1904,  113  O.  G.  1969. 

39.  Evidence  relating  to  assignments  may 
properly  be  used  in  the  courts  which  have 
authority  to  pass  upon  such  matters ;  but  it 
cannot  properly  be  made  a  part  of  the  records 
of  this  office.  Id. 

40.  An  ex  parte  statement  or  affidavit  by 
the  beneficiary  under  an  alleged  lien  as  to  his 
claimed  rights  under  a  patent  will  not  be  re- 
corded in  the  assignment  records  of  this  of- 
fice.   In  re  Clark,  C.  D.  190.5,  115  O.  G.  256. 

41.  An  assignment  does  not  identify  an  ap- 
plication with  certainty  where  it  alleges  that 
such  application  was  executed  November  9, 
1904,  but  the  notary's  certificate  attached  to 
the  application  bears  the  date  of  November 
9,  1890.  Ex  parte  Wurtz,  C.  D.  1906,  120  O. 
G.  2441. 


42.  An  assignment  executed  by  an  inven- 
tor transferring  his  entire  interest  in  certain 
inventions  disclosed  in  a  caveat  filed  in  the 
patent  office,  identifying  such  caveat  by  date 
of  filing  and  subject-matter,  and  requesting 
that  the  patent  upon  the  application  "which 
I  am  about  to  make"  issue  to  the  assignee, 
i<lentifies  an  application  subsequently  filed 
sufficiently  to  warrant  its  recognition  by  the 
office  where  it  is  found  that  subject-matter 
of  the  caveat  corresponds  to  that  of  the  ap- 
jilication.     Id. 

43.  It  is  the  uniform  custom  of  the  office 
to  apply  to  divisional  applications  assignments 
of  the  original  cases,  and  no  good  reason  is 
seen  why  the  same  practice  should  not  be  ap- 
plied to  caveats  and  subsequent  applications 
for  the  same  subject-matter.     Id. 

44.  Ratifications  of  assignments  by  persons 
not  appearing  as  parties  thereto  are  subject 
to  fees  for  recording  in  addition  to  those 
charged  for  recording  the  assignments.  In  re 
Bradford  &  Hood,  C.  D.  1900,  123  O.  G.  1283. 


ATTOHNEYS  AND  POWERS. 


I.  In  General. 
II.  Disbarment. 

I.  In  General. 

1.  An  attorney  appointed  by  alleged  as- 
signees will  not  be  recognized  in  the  prosecu- 
tion of  an  application  unless  the  assignment 
clearly  identifies  that  particular  application, 
so  that  there  can  be  no  doubt  that  it  is  the 
one  referred  to.  The  office  requires  certainty 
and  not  mere  probability  in  such  matters.  Ex 
parte  Williamson,  C.  D.  1899,  88  O.  G.  2065. 

2.  An  applicant  is  bound  by  the  acts  of 
his  attorney,  whether  made  by  the  principal 
attorney  or  by  his  associate  of  record.  Ex 
parte  Clausen,  C.  D.  1899,  88  O.  G.  2242. 

3.  Where  it  appeared  that  an  applicant  had 
entered  into  an  agreement  with  a  company 
to  assign  all  the  inventions  pertaining  to  the 
subject-matter  of  his  application,  but  had  not 
actually  made  such  an  assignment.  Held,  that 
the  office  should  not  interfere  to  prevent  the 
revocation  of  the  power  of  attorney  given  by 
applicant.  (Ex  parte  Gallatin,  C.  D.  1892, 
106,  59  O.  G.  1104,  cited.)  In  re  Macphail, 
C.  D.  1899,  89  D.  G.  521. 

4.  Held,  further,  that  even  if  the  agreement 
between  the  company  and  the  applicant  should 


ATTORNEYS,  II. 


71 


be  considered  as  an  assignment,  the  office 
should  not  recognize  the  right  of  the  company 
to  appoint  an  attorney  to  prosecute  the  case, 
as  the  application  is  not  identified  in  the  agree- 
ment. (Ex  parte  ChiUingsworth,  C.  D.  1897, 
72,  80  O.  G.  1892,  cited.)     Id. 

5.  It  is  the  practice  of  the  office  to  refrain 
from  setting  the  private  rights  of  an  appli- 
cant and  an  alleged  assignee  in  such  matters 
as  that  raised  by  this  petition,  as  they  are 
properly  determined  by  a  court  of  equity.  Id. 

6.  Where  an  applicant  appoints  an  attorney 
to  prosecute  his  case,  and  thereby  gives  up 
his  personal  right  to  act  therein,  he  not  only 
trusts  to  the  attorney  to  make  proper  amend- 
ments to  secure  the  best  protection,  but  also 
to  make  those  amendments  within  the  time 
required,  and  he  is  bound  by  the  attorney's 
action  or  inaction  in  each  respect.  Ex  parte 
Collins,  C.  D.  1901,  97  O.  G.  1372. 

7.  A  power  of  attorney  in  the  original  ap- 
plication authorizing  an  attorney  to  transact 
all  business  in  the  patent  office  in  connection 
with  the  application  construed  to  be  of  suf- 
ficient scope  to  include  the  signing  of  a  pe- 
tition for  renewal  and  the  subsequent  prose- 
cution of  the  application.  Ex  parte  Agee, 
C.  D.  1902,  101  O.  G.  1609. 

8.  The  attorney  cannot  be  made  responsible 
for  mistakes  in  the  case,  since  the  client  must 
be  charged  with  the  responsibility  for  the  ac- 
tion, mistake,  or  inadvertence  of  the  attorney. 
*In  re  Starkey,  C.  D.  1903,  104  O.  G.  2150. 

9.  Where  a  party  is  appointed  attorney  and 
at  the  same  time  is  given  an  assignment  of  a 
part  interest  in  the  invention.  Held,  that  the 
power  of  attorney  is  coupled  with  an  interest 
and  is  not  revocable.  In  re  Edwards  and 
Gregory,  C.  D.  1904,  110  O.  G.  800. 

10.  Where  the  attorney  conducting  the  ex- 
amination of  the  witnesses  for  one  party 
makes  an  agreement  with  the  attorney  for  the 
other  party.  Held,  that  the  agreement  is  bind- 
ing, although  no  written  power  of  attorney 
is  filed  in  this  office.  The  applicant  cannot 
repudiate  any  ordinary  agreement  by  him  on 
the  ground  that  it  was  in  excess  of  his  au- 
thority.    Fairbanks  and  Sauer  v.  Karr,  C.  D. 

1904,  113  O.  G.  1148. 

11.  Notice  to  a  party's  attorney  of  the 
declaration  of  an  interference  and  the  re- 
quirement for  a  preliminary  statement  must 
be  taken  as  notice  to  him,  and  it  is  imma- 
terial whether  or  not  he  has  actual  personal 
notice.     White   v.    Hewitt   and    Nolen,    C.    D. 

1905,  115  O.  G.  1846. 


12.  Where  notices  were  sent  by  this  office 
to  the  attorney  and  the  party  himself  admits 
actual  knowledge  of  those  notices  before  his 
time  for  filing  a  preliminary  statement  had 
expired,  but  he  alleges  that  he  did  not  know 
that  it  was  necessary  for  him  to  take  any 
personal  action.  Held,  that  there  was  gross 
negligence  by  the  party  or  his  then  attorney. 
Id. 

13.  Where  the  power  of  attorney  given  by 
one  of  the  executors  is  not  signed  in  person, 
but  by  one  claiming  to  act  as  his  attorney. 
Held,  that  said  power  of  attorney  should  not 
be  recognized,  since  the  rule  of  the  office 
which  denies  recognition  to  general  powers  of 
attorney  seems  to  be  applicable.  Ex  parte 
Rogers,  C.  D.  1906,  125  O.  G.  2766. 

14.  Held,  that  under  section  1782  of  the 
Revised  Statutes  a  person  holding  the  office 
of  United  States  commissioner  is  ineligible 
to  practice  as  an  attorney  representing  appli- 
cants for  patents  before  the  United  States 
patent  office,  fin  re  Bloch,  C.  D.  1907,  128 
O.  G.  457. 

15.  While  an  attorney  who  has  appointed 
an  associate  has  the  right  to  present  amend- 
ments over  his  own  signature,  the  practice 
adopted  by  the  principal  attorney  in  this  case 
of  authorizing  his  associate  to  amend  and  also 
amending  the  application  himself  is  not  con- 
ducive to  expeditious  prosecution  and  open 
to  serious  objection.  Ex  parte  Eggan,  C.  D. 
1911,  172  O.  G.  1091. 

II.  Disbarment. 

16.  Section  487,  Revised  Statutes,  remits  to 
the  commissioner  of  patents  the  entire  cog- 
nizance of  cases  of  malpractice  occurring  be- 
fore his  bureau  and  under  it  the  hearing  of 
such  cases  is  to  be  by  him  and  not  by  the  Sec- 
retary of  the  Interior.  It  is  eminently  fitting 
that  this  should  be  so  in  view  of  the  char- 
acter of  the  duties,  judicial  or  quasi-judicial, 
which  are  vested  in  him.  *United  States  ex  rel. 
Wedderburn  v.  Bliss,  Secretary  of  the  In- 
terior, C.  D.  1898,  83  O.  G.  296. 

17.  By  section  487,  Revised  Statutes,  there 
is  reserved  to  the  Secretary  of  the  Interior 
a  supervising  power  over  the  action  of  the 
commissioner  of  patents ;  but  this  is  no  more 
than  an  executive  or  administrative  proceed- 
ing. The  provision  that  the  judgment  of  the 
commissioner  shall  "be  subject  to  the  approval 
of  the  Secretary  of  the  Interior"  does  not 
make  the  secretarv  a  court   for   the  trial  of 


73 


BRIEFS. 


tlie  case,  nor  does  it  make  him  in  any  proper 
sense  an  appellate  tribunal  before  which  it 
would  be  proper  fur  a  party  in  interest  to  de- 
mand and  to  be  accorded  a  hearing.    ♦Id. 

18.  The  meaning  of  such  supervisory  power 
is  not  that  the  secretary  must  try  or  hear  the 
cause,  but  that  the  judgment  of  the  commis- 
sioner is  not  to  be  carried  into  effect  until  it 
receives  the  approval  of  the  secretary,  and  in 
order  to  give  it  this  approval,  or  conversely 
and  by  implication  his  disapproval,  the  secre- 
tary is  necessitated  to  go  over  the  record  of 
the  proceedings  that  is  made  up  for  him  ac- 
cording to  law  or  regulation.  This,  as  we 
have  said,  is  a  judicial  or  quasi-judicial  duty 
on  his  part;  but  it  is  not  the  equivalent  in  any 
sense  of  the  hearing  of  a  cause.    *Id. 

19.  When  the  act  of  July  4,  1884,  and  sec- 
tion 487,  Revised  Statutes,  are  compared  and 
construed  together,  it  is  clear  that  it  was 
not  the  intention  of  congress  to  repeal  section 
487  by  the  enactment  of  the  latter  law,  and  if 
such  was  not  the  intention  of  congress  then 
the  only  reasonable  construction  of  the  act 
of  1884  was  that  the  hearing  therein  provided 
to  be  given  to  the  persons  charged  with  mal- 
practice was  the  hearing  implied  to  be  by  sec- 
tion 487  of  the  Revised  Statutes.  So  far,  at 
least,  as  the  patent  office  was  concerned  the 
act  of  1884  made  no  substantial  change  in  the 
law.    *Id. 

20.  The  provision  of  the  act  of  July  4, 
1884,  is  not  that  the  secretary  might  exclude 
from  practice  after  notice  and  hearing  of  the 
party  charged,  which  would  be  the  more  nat- 
ural form  of  expression  if  it  was  the  intention 
that  the  hearing  should  be  before  the  secre- 
tary in  person,  but  that  he  might  exclude 
"after  notice  and  opportunity  for  a  hearing," 
meaning  plainly  a  hearing  before  some  proper 
officer  in  such  reasonable  mode  as  should  be 
provided  by  regulation  of  the  department.  *Id. 

21.  The  word  "hearing"  in  law  and  in  this 
statute  means  something  more  than  oral  ar- 
gument. It  means,  also,  the  right  to  adduce 
testimony.  If  the  sole  hearing  contemplated 
by  the  statute  was  to  be  had  before  the  sec- 
retary, the  commissioner  of  patents  could  not 
hear  it  at  all,  and  the  only  duty  that  could 
reasonably  be  imposed  upon  that  officer  was 
that  of  taking  the  testimony  and  reporting  it 
to  the  secretary;  but  this  conclusion  would 
be  in  direct  contravention  of  section  487  of 
the  Revised  Statutes,-  which  explicitly  pro- 
vides that  the  commissioner  shall  determine 
the   matter,   subject   only   to   the   approval   of 


his   action   by   the   Secretary   of   the   Interior. 
*ld. 

22.  The  construction  placed  by  an  executive 
department  of  the  government  upon  a  statute 
enacted  for  its  guidance  and  the  regulation  of 
its  business  must,  unless  it  be  plainly  erro- 
neous, receive  due  weight  and  consideration 
and  should  not  be  disregarded,  except  for 
cogent  reasons.  When,  therefore,  the  depart- 
ment, which  was  called  upon  to  administer 
the  act  of  1884  and  construe  that  act  in  con- 
nection with  section  487  of  the  Revised  Stat- 
utes, did  so  construe  it  that  the  notice  and 
an  opportunity  for  a  hearing  therein  provided 
to  be  given  should  be  given  by  the  head  of 
the  proper  bureau  and  that  the  investigation 
should  be  conducted  by  such  bureau  officer, 
subject  to  the  approval  of  his  findings  by  the 
Secretary  of  the  Interior,  it  is  not  apparent 
that  there  was  error  in  that  construction.    *Id. 

23.  Assuming  that  mandamus  is  proper 
whenever  an  inferior  court  or  a  judicial  of- 
ficer charged  with  the  exercise  of  discre- 
tionary or  judicial  functions  either  assumes 
to  exercise  jurisdiction  when  none  exists  or 
refuses  to  entertain  jurisdiction  with  which 
he  is  by  law  invested,  without  regard  to  the 
question  whether  there  is  any  appeal  from 
his  judgment  when  rendered  and  when  he  has 
acted.  Held,  that  it  is  doubtful  whether  the 
refusal  of  the  secretary  to  accord  to  the  re- 
lator the  opportunity  to  make  an  argument, 
especially  when  it  is  not  shown  or  in  any 
manner  intimated  how  or  wherein  the  secre- 
tary erred  or  was  mistaken  or  misled,  is  to 
be  regarded  as  a  jurisdictional  matter  for 
which  the  writ  of  mandamus  would  be  proper. 
*Id. 


BKIEFS. 

1.  Held,  that  the  arguments  of  counsel  with 
regard  to  a  case  are  privileged  statements 
and  that  he  is  permitted  to  use  language  in 
his  argument  and  to  make  statements  in  his 
brief  which  if  used  out  of  court  might  be  con- 
sidered objectionable,  when  it  is  apparent  that 
the  statements  were  not  made  through  malice, 
but  solely  for  the  purpose  of  pointing  out 
what  are  considered  to  be  inconsistencies  and 
defects  in  the  record.  Schellenbach  v.  Harris, 
C.  D.  1904,  111  O.  G.  2323. 

2.  Where  a  brief  is  filed  after  the  hearing 
and  without  permission.  Held,  that  it  will  not 
be  received  and  considered.  The  rules  as  to 
the  time  of   filing  briefs  should   be  complied 


CAVEATS. 


73 


with   Newcomb  v.   Lcmp,  C.   D.  1904,  lOU  O. 
G.  2171. 

3.  All  briefs  must  be  filed  before  the  hear- 
ing, and  they  cannot  be  filed  at  or  after  the 
hearing  except  upon  the  consent  of  the  ad- 
verse party  and  upon  obtaining  the  permission 
of  the  tribunal  hearing  the  case.     Id. 

4.  Briefs  on  interlocutory  motions  and  ap- 
peals need  not  be  printed,  but  must  be  filed 
before  the  hearing.  Royce  v.  Kempshall,  C. 
D.  190.'-.,  11.'-.  O.  G.  2011. 


CAVEATS. 

1.  Section  4902  of  the  Revised  Statutes  of 
the  United  States,  under  the  terms  of  which 
caveats  may  be  filed,  does  not  give  the  right 
to  file  a  caveat  to  any  one  other  than  the  in- 
ventor, and  in  the  absence  of  any  expressed 
right  being  vested  under  the  statute  in  the 
personal  representative  of  an  inventor  to  file 
a  caveat  no  such  right  exists,  nor  can  it  be 
implied.  Ex  parte  Conklin,  C.  D.  1898,  83 
O.  G.  1660. 

2.  Section  4902  of  the  Revised  Statutes  does 
not  provide  for  the  renewal  of  a  caveat,  and 
although  the  rules  of  the  patent  office  pro- 
vide for  such  renewal  yet  in  the  absence  of 
any  express  language  in  the  statutes  giving 
the  right  of  renewal  in  order  to  validate  the 
rule  the  word  "renewal,"  as  employed  in  the 
rule,  must  be  taken  to  mean  not  an  extension 
of  the  caveat  originally  filed,  but  rather  con- 
sidered as  referring  to  and  making  the  so- 
called  renewal  a  new  caveat,  based  upon  the 
papers   originally   filed.     Id. 

3.  If  the  so-called  renewal  must  be  consid- 
ered in  effect  as  a  new  filing  of  the  original 
caveat,  an  executor  cannot  renew  the  caveat 
filed  by  a  deceased  inventor,  for  the  reason 
that  the  executor,  under  the  statutes,  could 
not  have  filed  the  caveat  in  the  first  instance. 
Id. 

4.  An  executor  or  an  administrator  of  a 
deceased  inventor  is  not  deprived  of  any  sub- 
stantial right  if  he  be  not  allowed  to  renew  a 
caveat;  but  even  if  he  were  the  remedy  can- 
not be  found  in  the  patent  office,  but  rather 
should  be  the  subject  of  legislation  by  con- 
gress. If  at  the  time  of  the  death  of  a  ca- 
veator an  invention  had  not  been  perfected, 
his  executor  could  not  file  an  application  for 
patent  in  his  representative  capacity.  If  the 
invention  had  been  perfected,  then  the  ex- 
ecutor could  file  an  application  for  a  patent. 


and  in  cither  case  no  injury  that  would  flow 
from  the  denial  of  a  right  to  renew  the  caveat 
would  follow.    Id. 

5.  An  applicant,  by  referring  to  a  caveat 
and  quoting  therefrom  in  an  affidavit  filed 
under  Rule  T.'j  to  overcome  a  prior  patent 
upon  which  the  application  was  rejected,  does 
not  hereby  withdraw  the  caveat  from  the  se- 
cret archives  of  the  patent  office  and  lose  the 
right  to  have  it  "preserved  in  secrecy"  so 
that  another  applicant  with  whose  application 
his  application  is  placed  in  interference  be- 
comes entitled  to  a  copy  of  the  caveat.  In  re 
Lowry,  C.  D.  1900,  90  O.  G.  445. 

6.  Rules  97,  Io:i,  and  108,  which  relate  to 
interference  proceedings,  do  not  contain  any- 
thing wliich  authorizes  the  disclosure  of  a 
caveat  which  may  have  been  referred  to  dur- 
ing the  ex  parte  consideration  of  a  case.    Id. 

7.  A  distinction  was  made  by  the  court  in 
the  case  of  U.  S.  ex  rel.  Pollok  v.  Commis- 
sioner of  Patents  (C.  D.  1889,  582,  48  O.  G. 
120:!),  between  a  caveat  and  an  abandoned  or 
rejected  application  for  a  patent.     Id. 

8.  As  the  statute  does  not  provide  for  a 
renewal  of  a  caveat  and  as  a  so-called  "re- 
newal" is  in  effect  a  new  caveat,  Held,  that  an 
attorney  cannot  renew  a  caveat,  but  it  must 
be  done  by  the  inventor,  who  is  the  only  per- 
son who  may  under  the  statute  file  a  caveat. 
In  re  Ale,  C.  D.  1901,  94  O.  G.  584. 

9.  Where  it  appears  that  M.  was  duly  noti- 
fied to  file  an  application  for  a  patent  on  the 
invention  disclosed  in  his  caveat  in  order  that 
an  interference  might  be  declared  with  a 
pending  application  to  H.  and  A.,  and  M. 
thereupon  filed  an  abandonment  of  his  caveat 
and  conceded  priority  of  invention  to  H.  and 
A.,  and  the  application  of  H.  and  A.  subse- 
quently became  a  patent,  Held,  that  the  aban- 
doned caveat  of  M.  does  not  become  a  matter 
of  public  record.  In  re  Williams,  C.  D.  1903, 
102  O.  G.  228. 

10.  The  grant  of  a  patent  to  an  inventor 
does  not  make  his  abandoned  caveat  a  public 
record  when  there  is  no  mention  of  the  caveat 
in  the  patent,  and  especially  where  the  circum- 
stances indicate  that  the  patent  is  for  a  dif- 
ferent invention  from  that  disclosed  in  the 
caveat.    Id. 

11.  A  petition  for  the  renewal  of  a  caveat 
may  be  signed  by  the  attorney.  It  is  not 
necessary  that  it  be  signed  by  the  inventor  in 
person.  (In  re  Ale,  94  O.  G.  584,  overruled.) 
In  re  Reim,  C.  D.  1903,  103  O.  G.  2173. 


74 


CITIZENSHIP,  CERTIORARI,  CLAIMS. 


12.  Where  the  drawing  of  a  caveat  was  in 
pencil,  Held,  that  though  it  is  desirable  that 
drawings  of  caveats  should  be  executed  in  a 
medium  of  permanent  character;  it  is  not 
necessary  for  the  office  to  refuse  to  file  such 
a  caveat  on  the  day  it  is  received.  It  is  suf- 
ficient, if  the  invention  can  be  understood,  for 
the  examiner  to  require  whatever  amendments 
may  be  necessary  and  to  notify  the  party  that 
notice  of  interfering  applications  will  be  with- 
held until  the  requirements  are  complied  with. 
Ex  parte  Baldwin,  C.  D.  1906,  124  O.  G.  318. 


CITIZENSHIP. 

1.  Where  a  foreigner  declares  his  intention 
of  becoming  a  citizen  of  this  country,  he 
remains  a  citizen  of  the  foreign  country  until 
his  citizenship  in  this  country  becomes  effec- 
tive. Ex  parte  Rhodes,  C.  D.  1903,  105  O.  G. 
1361. 


CERTIORARI. 

1.  The  concurrent  finding  of  a  circuit  court 
and  circuit  court  of  appeals  on  questions  of 
fact  will  not  be  disturbed  by  the  Federal  Su- 
preme Court  on  certiorari  unless  clearly  er- 
roneous. **Continental  Paper  Bag  Company 
V.  Eastern  Paper  Bag  Company,  C.  D.  190S, 
136  O.  G.  1297. 

2.  "In  the  case  of  In  re  Tampa  Suburban 
R.  R.  Co.  (168  U.  S.  583)  the  general  rule 
governing  the  issuance  of  the  writ  is  stated 
to  be  that  the  'writ  will  be  granted  or  denied, 
in  the  sound  discretion  of  the  court,  on  special 
cause  or  ground  shown ;  and  will  be  refused 
where  there  is  a  plain  and  equally  adequate 
remedy  by  appeal  or  otherwise.'"  *Billings, 
Acting  Commissioner  of  Patents  v.  Field,  C. 
D.  1911,  163  O.  G.  232. 

3.  The  writ  is  sometimes  issued  to  test  the 
question  of  jurisdiction,  notwithstanding  a 
remedy  by  appeal  or  writ  of  error  exists, 
when  the  tribunal  whose  action  is  sought  to 
be  reviewed  has  proceeded  without  jurisdic- 
tion and  that  fact  appears  upon  the  record; 
but  the  writ  will  not  be  issued  if  there  is  an- 
other adequate  remedy  available,  nor  will  it 
be  issued  unless  to  accomplish  substantial 
justice.     *Id. 

4.  "The  statute  has  conferred  jurisdiction 
upon  this  court  to  hear  and  determine  ap- 
peals from  the  patent  office.  The  only  ex- 
cuse,   therefore,    for    invoking   this   common- 


law  remedy  is  that  relief  by  appeal  will  be 
less  efficient.  We  are  fully  convinced  that  an 
appeal  will  afford  fully  as  speedy  and  ade- 
quate redress  as  will  be  accomplished  by  cer- 
tiorari. If  proceedings  in  the  patent  office 
are  to  be  interrupted  by  certiorari  when  there 
is  an  equally  adequate  remedy  by  appeal,  it 
is  clear  that  an  additional  tribunal  not  con- 
templated by  the  statute,  namely  the  supreme 
court  of  the  District,  will  be  interposed  be- 
tween the  tribunals  of  the  patent  office  and 
this  court.  In  other  words,  instead  of  appeals 
coming  direct  to  this  court  an  aggrieved  per- 
son, by  resorting  to  the  writ  of  certiorari, 
will  be  enabled  to  prolong  the  contest  by  first 
taking  the  case  to  the  supreme  court."    *Id. 


I. 

II. 

III. 


IV. 


V. 

VI. 

VII. 

VIII. 

IX. 

X. 

XI. 

XII. 

XIII. 

XIV. 

XV. 

XVI. 

XVII. 

XVIII. 

XIX. 
XX. 


CLAIMS. 

In  General. 

Article  Defined  by  Process. 

Duplicate  or  Redundant. 

(a)  In  General. 

(b)  Held  Duplicate  or  Redundant. 

(c)  Not    Held    Duplicate    or    Re- 

dundant. 
Functional  or  Indefinite. 

(a)  In  General. 

(b)  Held  Functional  or  Indefinite. 

(c)  Not    Held    Functional    or    In- 

definite. 

Alternative. 

Not  Alternative. 

Genus  and  Species. 

Means,  Mechanism,  Etc. 

Substantially  as  Described,  Etc. 

Positive  Inclusion  of  Elements. 

Formal  Matters. 

Reference  to  Drawing  or  Specifica- 
tion. 

For  Subcombination. 

Enlarging  Scope. 

Intangible  Elements. 

Prolix. 

Inaccurate  or  Inapt. 

Incomplete  or  Imperfect  Combina- 
tion. 

Reinstatement  of. 

Construction  of. 

(a)  Liberal  or  Broad. 

(b)  By  Specification. 

(c)  By  State  of  Art. 

(d)  Limited  by  Their  Terms. 

(e)  Limited  by  Amendment  in  Pat- 

ent Office. 

(f)  Forced. 


CLAIMS,  I-III,  (a). 


75 


I.  In  General. 

1-  The  patentability  of  claims  cannot  prop- 
erly be  predicted  on  alleged  differences  of 
construction  which  are  not  specified  therein. 
Ex  parte  McNeil  and  Sturtevant,  C.  D.  190G, 
124  O.  G.  2177. 

II.  Article  Defined  by  Process. 

2.  It  is  the  general  rule  that  an  article  of 
manufacture  should  not  be  defined  in  the 
claim  by  the  process  of  making  it.  Ex  parte 
Scheckner,  C.  D.  190:{,  lOG  O.  G.  765. 

3.  Where  a  claim  to  an  article  refers  to  an 
etched  plate,  Held,  not  objectionable  on  the 
ground  that  it  defines  the  articles  by  the  pro- 
cess of  making  it,  since  etched  plates  have 
well-known  physical  characteristics.    Id. 

4.  Where  an  appeal  to  the  examiners-in- 
chief  is  filed  in  a  case  in  which  one  of  the 
appealed  claims  had  been  objected  to  on  the 
ground  that  it  attempted  to  define  the  article 
by  the  process  of  making  it,  it  is  not  necessary 
to  remove  the  objection  before  forwarding 
the  appeal,  as  the  objection  is  one  that  can 
be  properly  considered  by  the  examiners-in- 
chief  with  the  other  questions  of  patentability. 
Ex  parte  Warren,  C.  D.  190G,  120  O.  G.  2755. 

III.  Duplicate  or  Redundant. 
(a)  In  General. 

5.  The  question  as  to  whether  two  claims 
are  substantially  the  same  is  reviewable  on 
petition,  not  upon  appeal  to  the  examiners-in- 
chief.  Held,  in  this  case  that  claims  8  and 
9  contain  material  differences  and  are  not 
duplicates.  Ex  parte  Russell,  C.  D.  1898,  84 
O.  G.  1871. 

6.  An  applicant  after  being  allowed  claims 
which  fully  and  adequately  cover  his  real 
invention  should  not  be  permitted  to  need- 
lessly multiply  such  claims  by  the  inclusion 
of  well-known  elements  which  do  not  co- 
operate therewith  to  produce  a  new  result  or 
in  any  manner  add  to  the  patentable  novelty 
of  the  devise.  Ex  parte  Griffith,  C.  D.  1898, 
85  O.  G.  93C. 

7.  The  office  is  more  liberal  in  construing 
the  differences  between  claims  in  one  appli- 
cation than  if  they  were  presented  in  separate 
applications,  both  as  to  the  materiality  and 
the  patentability  of  those  differences.  All 
doubts  should  be  resolved  in  the  applicant's 
favor.    Id. 


8.  An  applicant  should  not  be  required  to 
elect  between  two  claims  to  the  same  inven- 
tion unless  those  claims  are  substantially  the 
same.  The  allegation  that  they  are  not  pat- 
entably  different  is  no  ground  for  the  require- 
ment. Ex  parte  Lahue,  C.  D.  1902,  101  O.  G. 
448. 

9.  A  party  will  not  be  permitted  to  include 
in  his  claims  the  real  invention  and  in  addi- 
tion well-known  elements  which  do  not  co- 
operate therewith  to  produce  a  new  result; 
but  this  is  true  whether  or  not  he  has  other 
claims  covering  only  the  real  invention.  The 
presence  of  such  other  claims  does  not  affect 
the  question.     Id. 

10.  Where  two  claims  in  one  application 
are  not  substantially  the  same,  but  the  ex- 
aminer says  that  both  should  not  be  allowed, 
because  they  are  not  patentably  different. 
Held,  that  the  matter  will  not  be  considered 
on  petition,  since  it  involves  a  consideration 
of  the  merits.  Ex  parte  Riley,  C.  D.  1902, 
101  O.  G.  1832. 

11.  An  applicant  will  not  be  permitted  to 
needlessly  multiply  his  claims  by  alleged  com- 
binations of  the  real  invention  with  other  ele- 
ments where  the  alleged  combinations  are 
mere  aggregations  or  where  they  involve  mere 
double  use  of  the  additional  elements  with  the 
real  invention.    Id. 

12.  The  only  way  to  treat  claims  which  in- 
volve mere  double  use  of  old  elements  with 
the  real  invention  is  to  reject  them  and  in 
such  rejection  reference  may  be  made  to  the 
fact  that  proper  claims  to  the  real  invention 
have  been  allowed  in  the  case.     Id. 

13.  Where  the  examiner  rejects  one  claim 
in  a  case  on  the  ground  that  it  is  not  patent- 
able over  an  allowed  claim  in  the  same  case. 
Held,  that  his  action  is  to  be  reviewed  by 
the  e.xaminers-in-chief  upon  appeal  and  not 
by  the  commissioner  upon  petition.  Ex  parte 
Leonius,  C.  D.  1903,  103  O.  G.  1164. 

14.  The  fact  that  an  applicant  presents  du- 
plicate claims  is  no  reason  for  refusing  action 
on  the  merits.  Ex  parte  Lee,  C.  D.  1903,  106 
O.  G.  999. 

15.  In  such  cases  action  on  the  merits  should 
be  given  and  formal  objection  made  at  the 
same  time  to  the  multiplicity  of  the  claims. 
If  the  examiner  is  of  the  opinion  that  one  of 
the  claims  is  allowable,  but  that  there  are 
other  claims  in  the  case  which  are  not  pat- 
entably different  therefrom,  then  he  would  be 
justified  in  rejecting  the  claims  which  he  did 


76 


CLAIMS,  III,  (b),  (c),  IV,  (a). 


not    regard    as    patentable    over    llie    allowed 
claims.     Id. 

16.  The  requirement  to  eliminate  certain 
claims  because  they  are  substantially  the  same 
as  other  claims  in  the  same  case  is  to  be  re- 
garded as  a  rejection  and  is  appealable  to  the 
examiners-in-chief.  Ex  parte  Chapman,  C. 
D.   19Ur,,  120  O.  G.  2446. 

17.  The  practice  of  presenting  a  needless 
multiplicity  of  claims  of  substantially  the 
same  scope  is  to  be  condemned.  Ex  parte 
Kadow,  C.  D.  1910,  154  O.  G.  1413. 

18.  Where  an  examiner  requires  that  the 
claims  of  an  application  be  restricted  to  a 
reasonable  number,  he  should  point  out  the 
claims  which  he  believes  to  be  of  substantially 
the  same  scope.     Id. 

(b)  Held  DupHcale  or  Redundant. 

19.  While  all  reasonable  latitude  should  be 
allowed  an  applicant  in  presenting  claims  in 
order  that  the  patent  when  issued  may  afford 
him  full  protection,  an  unreasonable  and  un- 
necessary multiplication  of  the  claims  will  not 
be  permitted.  Ex  parte  Hoegh,  C.  D.  1902, 
1(11)   O.  G.   453. 

20.  Where  two  claims  in  an  application  dif- 
fer from  each  only  in  that  one  includes  and 
the  other  does  not  include  the  words  "sub- 
stantially as  described,  Held,  that  they  are 
substantially  the  same  and  one  of  them  should 
be  canceled.  Ex  parte  Shepler,  C.  D.  1903, 
102  O.   G.  408. 

21.  Where  the  claims  in  an  application  are 
drawn  to  cover  a  mechanical  structure  capa- 
ble of  performing  several  functions  and  the 
claims  differ  from  each  other  only  in  the 
statements  of  function  attributed  to  the  de- 
vice, Held,  that  the  claims  are  substantial 
duplicates,  for  upon  the  elimination  of  the 
statements  of  function  each  claim  would  cover 
the  same  combination  of  elements.  Ex  parte 
Jacobson,  C.  D.  1903,  107  O.  G.  1378. 

22.  Where  the  invention  can  be  clearly  de- 
fined by  means  of  four  claims,  Held,  that  the 
presentation  of  twelve  claims  is  objectionable, 
because  the  claims  are  then  unnecessarily  mul- 
tiplied. *In  re  Carpenter,  C.  P.  1904,  112  O. 
G.  503. 

(c)  Not  Held  Dnf'licate  or  Redundant. 

23.  Where  a  method  claim  includes  the  step 
of  heating  and  another  claim  includes  the 
step  of  heating  over  a  water-bath,  Held,  that 
the  latter  claim  is  more  limited  than  the  form- 


er and  both  may  properly  be  allowed  in  the 
same  application  if  the  state  of  the  art  so 
warrants.  Ex  parte  Ach,  C.  D.  1901,  96  O. 
G.  2411. 

24.  Where  one  claim  refers  to  an  element 
as  impervious  and  the  other  sets  forth  a 
particular  means  for  making  it  impervious. 
Held,  that  they  differ  in  scope  and  are  not 
substantially  the  same.  Ex  parte  Wiens,  C.  D. 
1902,  101  O.  G.  1369. 

25.  Where  the  invention  includes  a  clamp- 
ing member  "having  three  radiating  spring- 
lingers"  and  one  claim  includes  a  clamping 
member  provided  with  "a  spring-finger"  and 
another  claim  specilies  that  the  same  clamping 
member  is  provided  with  "a  plurality  of 
spring-lingers,"  Held,  that  these  claims  are 
not  duplicates,  as  one  is  broad  and  the  other 
is  narrow  to  the  same  construction.  Ex  parte 
Wishart  and  Seidel,  C.  D.  1902,  101  O.  G. 
3107. 

26.  Where  claims  are  objected  to  as  du- 
plicates, but  it  appears  that  one  includes  lim- 
itations not  in  the  other.  Held,  that  the  objec- 
tion is  not  well  founded.  The  question  of 
patentable  difference  will  not  be  considered  on 
petition.  Ex  parte  Massie,  C.  D.  1904,  113 
O.  G.  2505. 

27.  The  practice  of  unduly  multiplying 
claims  is  to  be  condemned;  but,  on  the  other 
hand,  an  applicant  should  be  given  a  reason- 
able latitude  in  presenting  claims  in  order  that 
he  may  not  be  deprived  of  his  right  to  ade- 
quately cover  his  invention.     Id. 

28.  Held,  that  a  claim  covering  the  manu- 
facture of  nitroglycerin  which  states  that  a 
reagent  is  added  to  other  materials  "during 
the  manufacture  of  nitroglycerin"  is  not  a 
duplicate  of  a  claim  which  omits  this  limiting 
statement.  Ex  parte  Reese,  C.  D.  1904,  113 
O.  G.  849. 

IV.  Functional  or  Indekinitk. 

(a)  In  General. 

29.  Claims  which,  while  including  sufficient 
mechanical  elements  to  effect  a  function  ex- 
pressed in  the  claims,  depend  upon  that  state- 
ment of  function  to  distinguish  them  from  the 
perior  art  are  not  to  be  objected  to,  but  are 
subject  to  rejection.  Ex  parte  McMulIen,  C. 
D.    1898,  84  O.  G.  507. 

30.  An  applicant  cannot  be  permitted  to  use 
in  his  claims  terms  which  are  indefinite  and 
general  in  their  meaning  without  such  quali- 
fying words  as  shall  make  clear  what  is  in- 


CLAIMS,  IV,   (b). 


77 


tended  to  be  covered  by  them  and  shall  be 
expressive  of  the  purpose,  location,  or  func- 
tion of  the  elements  intended.  Ex  parte  Ham- 
ilton, C.  D.  1898,  8->  O.  G.  17l:i. 

31.  Claim  2  of  Letters  Patent  No.  300,070, 
which  reads  "in  a  brake  mechanism,  the  com- 
bination of  a  main  air-pipe,  an  auxiliary  reser- 
voir, a  brake-cylinder,  and  a  triple  valve  hav- 
ing a  piston,  whose  preliminary  traverse  ad- 
mits air  from  the  auxiliary  reservoir  to  the 
brake-cylinder,  and  which  by  a  further  trav- 
erse admits  air  directly  from  the  main  air- 
pipe  to  the  brake-cylinder,  substantially  as 
set  forth,"  is,  to  a  certain  extent,  for  a  func- 
tion— viz.,  the  admission  of  air  directly  from 
the  train-pipe  to  the  brake-cylinder — and  is 
only  limited  to  such  function  when  performed 
by  the  further  traverse  of  the  piston  of  the 
triple  valve.  If  it  be  not  susceptible  of  the 
interpretation  that  it  is  simply  for  a  function, 
then  the  performance  of  that  function  must 
be  limited  to  the  particular  means  described 
in  the  specification  for  the  admission  of  air 
from  the  train-pipe  to  the  brake-cylinder. 
**ld. 

32.  Where  a  claim  is  finally  rejected  by  the 
examiner  on  a  certain  patent  duly  cited  on 
the  ground  that  the  claim  is  distinguished 
therefrom  only  by  a  statement  of  function. 
Held,  that  the  question  thus  raised  relates 
to  the  merits  and  an  appeal  lies  in  the  first 
instance  to  the  examiners-in-chief.  Ex  parte 
Morgan,  C.  D.  1902,  101  O.  G.  2568. 

33.  It  is  the  duty  of  the  patent  office  to  re- 
quire applicants  to  make  their  claims  clear 
and  definite,  and  therefore  it  will  not  read 
limitations  into  claims  pending  before  it  to 
avoid  references,  but  will  require  the  appli- 
cants to  include  them  clearly  and  definitely. 
Secley  v.  Baldtvin.  C.  D.  190.5,  117  O.  G.  2633. 

34.  The  terms  of  description  used  in  the 
claims  should  accurately  describe  the  con- 
struction disclosed  in  the  application.  Ex 
parte  Mueller  and  Braunsdorf,  C.  D.  1905,  118 
O.   G.   270. 

35.  It  is  a  well-settled  law  that  a  patent 
cannot  issue  for  a  result  sought  to  be  ac- 
complished by  the  inventor  of  a  machine,  but 
only  for  the  mechanical  means  or  instrumen- 
talities by  which  that  result  is  to  be  obtained. 
One  cannot  describe  a  machine  which  will  per- 
form a  certain  function  and  then  claim  the 
function  itself  and  all  other  machines  that 
may  be  invented  by  others  to  perform  the 
same  function.  *In  re  Gardner,  C.  D.  1909, 
140  O.  G.  256. 


36.  In  all  cases  where  the  examiner  holds 
a  claim  otherwise  clear  and  intelligible  to  be 
functional — that  is,  for  a  function  merely  or 
because  it  fails  to  include  sufficient  mechani- 
cal elements  to  effect  the  function  expressed 
in  the  claim — the  action  of  the  examiner  shall 
be  a  rejection  of  the  claim  upon  the  ground 
that  the  claim  does  not  point  out  the  invention 
with  sufficient  particularity  and  distinctness 
to  meet  the  requirements  of  section  4888, 
Revised  Statutes.  The  rejection  shall  at  the 
same  time  include  all  of  the  grounds  enu- 
merated in  Rule  LIS  that  the  examiner  thinks 
applicable.  Applicant's  remedy  is  by  way  of 
appeal  successively  to  the  examiners-in-chief, 
the  commissioner  and  the  court  of  appeals  of 
the  District  of  Columbia.  Ex  parte  Bitner, 
C.  D.  1909,  140  O.  G.  256. 

37.  It  is  well  settled  that  where  a  claim  dis- 
tinctly specifies  a  certain  structure  which  is 
adapted  to  perform  a  particular  function  there 
is  no  objection  to  setting  that  function  out  in 
the  claim.  Ex  parte  Hoge,  C.  D.  1911,  173 
O.  G.  1081. 

38.  It  is  also  well  settled  that  where  a  claim 
does  not  include  sufficient  mechanical  elements 
to  effect  the  function  stated  it  should  be  re- 
jected on  the  ground  that  it  does  not  comply 
with  section  4888  of  the  Revised  Statutes.  Id. 

(h)  Held  Functional  or  Indefinite. 

39.  If  this  claim  be  interpreted  simply  as 
a  claim  for  the  function  of  admitting  air  to 
the  brake-cylinder  directly  from  the  train- 
pipe,  it  is  open  to  the  objection  that  the  mere 
function  of  a  machine  cannot  be  patented. 
(Citing  Corning  v.  Burden.  15  How.  252;  Ris- 
don  Locomotive  Works  v.  Medart,  C.  D.  1895, 
330,  71  O.  G.  751,  158  U.  S.  68,  and  other 
cases.)  **Boyden  Power  Brake  Co.  v.  West- 
inghouse,  C.  D.  1898,  83  O.  G.  1067. 

40.  Where  expressions  used  in  the  claims 
have  not  been  specifically  defined  or  explained 
in  the  specification  so  that  their  meaning  can 
be  understood.  Held,  that  the  claims  are  ob- 
jectionable as  not  being  so  clear  and  concise 
as  required  in  the  statutes  and  rules.  Ex  parte 
Kotler,  C.  D.  1901,  95  O.  G.  2684. 

41.  To  merely  state  in  a  claim  the  function 
or  the  result  without  first  including  therein 
the  structure  by  means  of  which  the  func- 
tion or  result  is  obtained  renders  a  claim 
vague  and  indefinite.     Id. 

42.  A  statement  of  the  purpose,  result,  op- 
eration, or  advantages  of  a  mechanical  inven- 


78 


CLAIMS,  IV,   (c). 


tion  should  not  be  included  in  the  claims,  but 
should  be  embodied  in  the  specification.  The 
claims  should  be  limited  to  statements  of 
structure.  Ex  parte  Schweitzer,  C.  D.  1901, 
97  O.  G.  1371. 

43.  The  only  apparent  purpose  of  including 
in  the  claim  a  statement  of  the  operation  and 
result  of  the  device  is  to  make  it  appear  that 
the  claim  covers  all  devices  accomplishing  that 
result  and  in  which  the  operation  slated  takes 
place,  and  it  is  not  believed  to  be  proper  prac- 
tice for  this  office  to  give  its  sanction  to  such 
a  statement  in  the  claim  intended  merely  to 
define  its  scope.    Id. 

44.  Where  a  term  used  in  the  claims  was 
such  that  it  could  not  be  determined  whether 
any  element  of  the  machine  was  referred  to 
thereby  or  whether  the  term  referred  to  a 
particular  clement.  Field,  that  the  claim  was 
vague  and  indefinite.  Ex  parte  Groebli,  C. 
D.  190.-,,  lis  O.  G.  2.537. 

45.  A  claim  covering  certain  printed  matter 
and  including,  among  other  features,  "spaces 
to  receive  collected  data  relating  to  a  number 
of  checks"  is  functional,  and  therefore  ob- 
jectionable. Ex  parte  McClain,  C.  D.  1903, 
119  O.  G.  1.J85. 

46.  A  claim  covering  certain  printed  matter 
and  including,  among  other  features,  a  "form 
*  *  *  having  lines  to  receive  collected  data 
for  a  number  of  deposits"  is  functional,  and 
therefore  objectionable,  sufficient  structure 
not  being  included  to  carry  the  function 
stated.     Id. 

47.  Where  the  claim  is  not  for  a  combina- 
tion of  which  the  "means"  for  the  purpose 
mentioned  is  an  clement,  but  is  merely  for 
means  as  an  element  and  covers  all  possible 
means  for  accomplishing  a  certain  function 
regardless  of  structure.  Held,  that  the  claim 
is  indefinite  and  functional.  Ex  parte  Bul- 
lock, C.  D.  1907,  127  O.  G.  1380. 

48.  Claims  which  fail  to  include  sufficient 
mechanical  elements  to  eflfect  the  function  ex- 
pressed in  the  claims  are  open  to  objection, 
and  from  objection  on  such  ground  petition 
may  be  taken  to  the  commissioner.  Ex  parte 
Plumb,  C.  D.  1907,  131  O.  G.  1165. 

49.  The  claim  reading  "In  combination  in 
a  vapor-register,  a  dial  upon  which  are  mark- 
ed pressures  and  heat  characteristics  and  a 
device  for  automatically  indicating  on  said 
dial  simultaneous  pressures  and  heat  char- 
acteristics" and  claims  similar  thereto  were 
properly  rejected  as  claims  for  functions  or 
results.     If  allowed,  they  would  cover  means 


substantially  different  from  those  described 
which  might  be  discovered  by  another  for  ac- 
complishing the  same  results.  ♦In  re  Gard- 
ner, C.  D.  1909.   1-10  O.  G.  258. 

(c)  .\ot  Held  Funetional  or  Indefinite. 

50.  Where  a  claim  distinctly  specifies  a  cer- 
tain structure  which  is  adapted  to  perform 
a  particular  function,  there  is  no  objection  to 
setting  out  in  the  claim  also  the  function 
which  the  structure  is  adapted  to  perform. 
Ex  parte  Holder,  C.  D.  1903,  107  O.  G.  833. 

51.  The  use  of  the  word  "means"  limited 
by  a  statement  of  function  has  l<mg  been  rec- 
ognized as  the  proper  method  of  stating  an 
element  of  a  combination  claim.  Voung  v. 
Eick,  C.  D.  1907,  113  O.  G.  547. 

52.  The  following  expression  as  an  element 
of  a  combination  claim,  "means  extending 
throughout  the  length  of  the  frame  for  sup- 
porting a  series  of  bottle-holding  racks  there- 
on and  permitting  the  discharge  of  one  of 
the  racks  at  one  end  as  a  new  rack  is  secured 
in  place  at  the  opposite  end,"  Held,  not  in- 
definite or  functional  by  omission  of  a  struc- 
ture upon  which  the  functions  stated  depend. 
Id. 

53.  Claims  for  an  apparatus  which  include, 
among  other  elements,  an  "arrester,"  a  "me- 
chanical separator,"  and  a  "chemical  separa- 
tor" are  not  vague  and  indefinite  on  account 
of  their  failure  to  state  the  specific  character- 
istics of  such  elements  where  the  description 
fully  and  clearly  describes  the  construction 
referred  to  by  such  terms,  the  objection  going 
to  the  breadth  or  scope  of  the  claims  rather 
than  to  their  form.  Ex  parte  Donk,  C.  D. 
1905,   119  O.  G.  465. 

54.  A  claim  for  certain  printed  matter  in- 
cluding among  other  features  properly  set 
forth,  "another  form"  located  at  a  certain 
place  w-ith  respect  to  other  features  is  not  ob- 
jectionable as  being  indefinite,  the  language 
involving  a  question  as  to  the  scope  of  the 
claim  rather  than  its  form.  Ex  parte  Mc- 
Clain, C.  D.  1903,  119  O.  G.  1383. 

55.  The  following  claim :  "In  a  paper-bag 
machine,  the  combination  of  a  rotating  cylin- 
der provided  with  one  or  more  pairs  of  side- 
forming  fingers  adapted  to  be  moved  toward 
or  from  each  other,  a  forming-plate  also  pro- 
vided, with  side-forming  fingers  adapted  to 
be  moved  toward  or  from  each  other,  means 
for   operating   said    fingers    at    definite    times 


CLAIMS,  V-VIII. 


79 


during  the  formative  action  upon  the  bag- 
tube,  operating  means  for  the  forming-plate 
adapted  to  cause  the  said  plate  to  oscillate 
about  its  rear  edge  upon  the  surface  of  the 
cylinder  during  the  rotary  movement  of  said 
cylinder,  the  whole  operating  for  the  pur- 
pose of  opening  and  forming  the  bottom  of 
the  bag-tube,  and  means  to  move  the  bag- 
tube  with  the  cylinder,"  Held,  not  merely 
for  the  function  of  the  machine,  but  for  me- 
chanical means  to  bring  into  working  relation 
the  folding-plate  and  cylinder.  **ContinentaI 
Paper  Bag  Co.  v.  Eastern  Paper  Bag  Co..  C. 
D.  1908,  136  O.  G.  1297. 

56.  A  claim  for  a  sound-producing  appa- 
ratus consisting  of  a  traveling  tablet  having 
a  sound-record  formed  thereon  and  a  repro- 
ducing-stylus  shaped  for  engagement  with 
said  record  and  free  to  be  vibrated  and  pro- 
pelled by  the  same  is  not  for  the  function  of 
the  machine,  but  sets  forth  a  valid  combina- 
tion. **Leeds  &  Catlin  Company  v.  Victor 
Talking  Machine  Company  and  United  States 
Gramophone  Company,  C.  D.  1909,  140  O.  G. 
1089. 

57.  Claims  for  a  finish-remover  including 
the  expression  "a  liquid,  finish-solvent,  ketonic 
derivative  of  a  cyclic  CH„  hydrocarbon"  Held, 
not  objectionable  as  failing  to  define  the  in- 
vention disclosed  where  it  appears  that  fif- 
teen or  twenty  substances  are  named  in  the 
specification  as  suitable  ingredients  for  a 
finish-remover  and  it  does  not  appear  that 
there  is  any  other  term  which  is  accurately 
generic  to  those  named.  *In  re  Ellis,  C.  D. 
1911,  167  O.  G.  981. 

V.  Alternative. 

58.  A  claim  should  not  be  drawn  in  an  al- 
ternative form  even  where  the  alternative  ele- 
ments are  equivalents,  but  should  use  some 
broad  term  of  description  which  will  include 
both  forms.  Ex  parte  Caldwell  and  Barr, 
C.  D.  1906,  120  O.  G.  2125. 

59.  A  claim  including  a  description  of  an 
element  as  "brick  or  the  like"  is  alternative  in 
form  and  is  indefinite,  since  the  word  "like" 
fails  to  identify  the  characteristics  of  the  sub- 
stance.    Id. 

60.  The  expression  "asbestos  or  its  equiva- 
lent" occurring  in  a  claim  renders  the  claim 
objectionable  as  being  alternative  in  form. 
Ex  parte  Phillips.  C.  D.  1908,  135  O.  G.  1801. 

61.  The  phrase  "brake  or  locking  device," 
Held,  either  alternative  or  so  inapt  to  define 


the  desired  construction  as  to  be  objectionable 
on  the  ground  of  indefiniteness.  Ex  parte 
Leon,  C.  D.  1011,  164  O.  G.  250. 

VI.  Not  Alternative. 

62.  Where  an  applicant  in  his  description 
and  claim  employs  two  terms  to  designate  a 
particular  element,  both  of  which  terms  de- 
scribe the  element  correctly,  the  claim  is  not 
open  to  the  objection  of  alternativeness,  the 
apparent  alternativeness  in  such  a  case  being 
one  of  language  merely  and  not  of  structure. 
Ex  parte  Holder,  C.  D.  1903,  107  O.  G.  833. 

63.  .\lternative  expressions  in  claims  are 
not  generally  permitted ;  but  where  two  terms 
are  employed  to  designate  a  particular  ele- 
ment, both  of  which  terms  describe  the  ele- 
ment correctly,  the  claim  is  not  objectionable, 
as  the  alternativeness  is  of  language  rather 
than  of  structure.  Ex  parte  Holder,  C.  D. 
1903,  442;  107  O.  G.  833;  Phillips  v.  Senscnich, 
C.  D.  1908,   132  O.  G.  677. 

64.  The  words  "button  or  hand  wheel,"  re- 
ferring to  a  member  shaped  to  resemble  the 
head  of  a  hat  pin  and  used  for  revolving  cer- 
tain parts  of  a  hat-fastener.  Held,  to  be  un- 
objectionable on  the  ground  of  alternativeness, 
since  they  refer  to  the  same  element,  (citing 
Phillips  V.  Sensenich,  132  O.  G.  677.)  Ex 
parte  Leon,  C.  D.  1911,  184  O.  G.  250. 

VII.  Genus  and  Species. 

65.  Where  a  party  claims  to  be  the  first  in- 
ventor of  the  generic  invention.  Held,  that 
this  if  true  does  not  entitle  him  to  claim  spe- 
cific forms  not  disclosed  in  his  application. 
Brill  and  Brill  v.  Hunter,  C.  D.  1901,  96  O.  G. 
641. 

66.  Where  two  forms  of  device  are  shown 
for  controlling  a  lock,  one  of  which  is  coin- 
controlled  and  the  other  is  not.  Held,  that  if 
the  state  of  the  art  permits  the  allowance  of 
a  claim  broad  enough  to  include  two  struc- 
tures both  of  them  may  be  shown  and  de- 
scribed. Ex  parte  Garland,  C.  D.  1903,  107 
O.  G.  267. 

VIII.  Means,  Mechanism,  Etc. 

67.  Where  the  invention  claimed  is  a  com- 
bination. Held,  that  the  term  "means,"  fol- 
lowed by  a  statement  of  function,  is  properly 
readable  on  a  structure  in  which  such  means 
consists  of  more  than  one  element.  Lacroix 
V.  Tyberg,  C.  D.  1909,  148  O.  G.  831. 


so 


CLAIMS.  IX-XI. 


68.  The  term  "means,"  followed  by  a  state- 
ment of  function.  Held,  to  be  applicable  to  a 
structure  in  which  such  means  includes  a  plu- 
rality of  elements.  *Lacroix  v.  Tyberg,  C.  D. 
1910,  1.-jO  O.  G.  267. 

IX.  Substantially  as  Described,  Etc. 

G9.  The  words  "substantially  as  set  forth" 
have  been  uniformly  held  by  the  supreme 
court  to  import  into  a  claim  the  particulars 
of  the  specification.  A  claim,  therefore, 
which  might  otherwise  be  bad,  as  covering  a 
function  or  result,  when  contaming  these 
words  should  be  construed  in  connection  with 
the  specification,  and  when  so  construed  may 
be  held  to  be  valid.  (Citing  Seymour  v.  Os- 
borne, n  Wall.  516,  and  The  Corn  Planter 
Patent,  6  O.  G.  392,  23  Wall.  181.)  **Boyden 
Power  Brake  Company  et  al.  v.  Westinghouse 
et  al.,  C.  D.   1898,  83  O.  G.  1067. 

70.  Where  the  words  "substantially  as  de- 
scribed" were  inserted  in  a  claim  at  the  sug- 
gestion of  the  patent  office  and  the  patentee 
acquiesced  in  the  decision  that  these  words 
should  be  inserted,  Held,  that  the  patentee  is 
not  prohibited  from  invoking  the  doctrine  of 
known  equivalents  with  respect  to  alleged  in- 
fringers; nor  in  dealing  with  the  broad  in- 
vention which  represents  a  distinct  advance 
in  the  art  is  he  estopped  from  asking  the 
court  to  apply  a  more  liberal  rule  as  to  what 
constitutes  equivalents  than  is  applicable  to 
a  narrow  invention  which  is  only  an  improve- 
ment on  what  was  old  and  well  known. 
*Beach  v.  Hobbs  et  al,  C.  D.  1899,  87  O.  G. 
1960. 

71.  The  words  "substantially  as  described" 
in  a  claim  are  not  to  be  construed  as  limiting 
the  patentee  to  the  exact  mechanism  described, 
but  he  is  entitled  to  the  benefit  of  the  doc- 
trine of  equivalents.  Doubts  on  the  question 
of  mechanical  equivalent  should,  however,  be 
resolved  against  the  patentee.  *Id.  Hobbs  et 
al.  V.  Beach,  C.  D.  1901,  94  O.  G.  23.57. 

72.  It  is  unnecessary  to  include  in  the  claim 
such  words  as  "substantially  as  described," 
since  the  law  makes  the  description  a  part  of 
the  patent,  and  therefore  the  claim  must  be 
construed  with  reference  to  the  description 
whether  the  words  are  included  or  not.  Ex 
parte    Shepler,   C.   D.   1903,   102  O.   G.  468. 

73.  This  office  in  determining  the  meaning 
and  legal  effect  of  a  claim  must  regard  the 
presence  or  absence  of  the  words  "substan- 
tially as  described"  as  immaterial.     Id. 


74.  A  party  will  not  be  permitted  to  attempt 
to  distinguish  claims  by  the  words  "substan- 
tially as  described,"  since  they  impart  no  def- 
inite limitation  into  the  claims  and  since  it 
is  the  duty  of  the  office  to  require  that  the 
limitations  intended  to  be  included  in  a  claim 
be  clearly  and  definitely  stated   therein.     Id. 

X.  Positive  Inclusion  oe  Elements. 

75.  To  imply  as  elements  of  a  claim  parts 
not  named  therein  for  the  purpose  of  limit- 
ing its  scope,  so  that  it  may  be  accorded  nov- 
elty is  contrary  to  a  well-settled  rule  of  pat- 
ent law.  d  Frederick  R.  Stearns  &  Co.  v. 
Russell.  C.  D.  1898,  84  O.  G.  14.S4. 

76.  Where  an  element  is  mentioned  in  a 
claim  and  intended  to  be  included  as  an  ele- 
ment of  the  combination.  Held,  that  it  is  in 
the  interest  of  clearness  and  good  form  to 
positively  and  directly  include  it  instead  of 
making  an  indefinite  reference  to  it.  Ex  parte 
Vincke,  C.  D.  1901,  96  O.  G.  2061. 

77.  Held,  that  a  part  referred  to  for  the 
purpose  of  defining  the  position  of  other  parts 
should  be  made  a  positive  element  of  the 
claims.  Ex  parte  Dodge,  C.  D.  1906,  125  O. 
G.  685. 

78.  Elements  of  an  invention  to  which  it  is 
necessary  to  refer  in  order  to  define  other 
elements  should  be  positively  included  in  the 
claims.  Ex  parte  Stimpson,  C.  D.  1910,  160 
O.  G.  1271. 

XI.  Formal  Matter. 

79.  A  mere  laudatory  statement  which  con- 
veys no  idea  of  structure,  but  merely  sets 
forth  some  advantages  which  the  applicant 
thinks  would  flow  from  the  use  of  his  de- 
vice, should  not  be  included  in  the  claim.  Ex 
parte  Schweuzer,  C.  D.  1901,  97  O.  G.  1371. 

80.  Held,  that  it  is  better  form  in  a  method 
claim  to  state  that  a  mixture  is  heated  at  a 
moderate  temperature  than  to  state  that  the 
same  is  heated  over  a  water-bath.  Ex  parte 
Ach,  C.   D.   1901,  96  O.  G.  2411. 

81.  Where  an  applicant  rewrote  his  claims, 
omitting  some,  but  retained  the  original  num- 
bers, thus  leaving  some  numbers  blank,  and 
the  examiner  renumbered  them  in  regular 
order  and  so  informed  the  applicant.  Held, 
that  a  petition  that  the  examiner's  action  be 
set  aside  and  his  letter  canceled  from  the 
record  will  be  denied.  E.x  parte  Tuttle,  C.  D. 
1093,  102  O.  G.  1781. 


CLAIMS,  XII-XVII. 


81 


82.  To  avoid  confusion  in  examining  cases, 
the  claims  must  be  numbered  in  regular  order, 
and  the  examiner  may  properly  so  renumber 
them  when  some  are  canceled,  even  in  the  ab- 
sence of  specific  instructions  from  the  appli- 
cant, but  the  applicant  should  be  notified  of 
the  renumbering.    Id. 

83.  Where  the  claim  refers  to  a  stencil  as 
"means  for  marking"  and  the  examiner  raises 
the  objection  of  inaccuracy,  Held,  that  the  ob- 
jection should  not  be  insisted  upon,  since  the 
description  is  sufficiently  accurate  to  avoid 
any  mistake  as  to  the  meaning.  Ex  parte 
Conley,  C.  D.  1904,  108  O.  G.  291. 

84.  Claims  which  purport  to  cover  a  pro- 
cess, but  which  describe  the  operation  of  an 
apparatus,  the  putting  together  of  an  appa- 
ratus, and  perhaps  the  apparatus  itself,  Held, 
to  be  objectionable.  Ex  parte  Dixon,  C.  D. 
1906,  123  O.  G.  653. 

XII.  Reference    to    Drawing    or    Specifica- 
tion. 

85.  A  claim  should  itself  clearly  set  forth 
the  structure  which  it  is  intended  to  cover, 
and  not  merely  by  the  use  of  reference-letters 
refer  to  the  drawing  and  specification  for  a 
disclosure  of  it.  A  claim  which  relies  entirely 
upon  reference-letters  to  indicate  structure 
is  objectionable.  Ex  parte  Osborne,  92  O.  G. 
1797. 

86.  It  is  no  more  permissible  on  principle 
to  refer  to  the  description  for  some  of  the 
limitations  which  should  be  and  are  intended 
to  be  included  in  a  claim  than  it  is  to  refer  to 
the  description  for  all  of  the  limitations.  Ex 
parte  Shepler,  C.  D.  1903,  102  O.  G.  468. 

XIII.  For  Subcombination. 

87.  A  party  may  claim  the  general  com- 
bination of  parts  in  his  device  and  also  a 
subcombination  of  less  than  the  whole  num- 
ber of  elements ;  but  a  subcombination  cannot 
be  held  patentable  on  the  sole  ground  that  a 
device  could  be  made  embodying  it  which 
would  operate  in  a  certain  way  when,  as  a 
matter  of  fact,  in  the  device  disclosed  the 
subcombination  cannot  possibly  operate  in 
that  way  by  reason  of  the  presence  of  other 
elements.  Ex  parte  Hummel,  C.  D.  1901,  94 
O.  G.  583. 

88.  The  operation  and  operativeness  of  a 
combination  covered  by  a  claim  must  be  de- 
termined by  the  disclosure  in  that  particular 

6 


case  and  not  by  a  theory  as  to  what  they 
might  be  in  a  different  device  or  arrangement 
of  parts.     Id. 

XIV.  Enlarging  Scope. 

89.  Where  the  application  as  filed  covered 
an  apparatus  for  applying  the  wrappers  to 
cigars  and  a  claim  was  thereafter  presented 
for  the  process  which  was  not  supported  by 
a  new  oath,  Held,  that  the  process  was  dis- 
closed in  the  original  case  and  that  the  claim 
is  not  invalid  because  inserted  by  the  attor- 
neys by  amendment,  cjohn  R.  Williams  Co. 
et  al.  V.  Miller,  Du  Brul  &  Peters  Mfg.  Co., 
C.  D.  1901,  97  O.  G.  2308. 

XV.  Intangible  Elements. 

90.  An  "opening"  should  not  be  made  a 
positive  or  direct  element  in  combination 
claims,  for  the  reason  that  an  opening  is 
not  a  tangible  thing.  It  can  exist  only  in 
connection  with  some  other  element.  If  it  is 
desired  to  describe  this  element  as  provided 
with  an  opening,  there  is  no  objection  to  such 
a  course.  Ex  parte  Davin,  C.  D.  1902,  100 
O.  G.  452. 

91.  The  use  of  the  term  "outlet"  in  a  claim 
is  not  objectionable  in  all  cases  on  the  ground 
that  it  refers  to  something  intangible.  Ex 
parte  Ljungstrom,  C.  D.  1905,  119  O.  G.  2235. 

XVI.  Prolix. 

92.  A  claim  may  be  so  proli.x  as  not  to  com- 
ply with  the  requirements  of  the  statute  that 
an  applicant  "shall  particularly  point  out  and 
distinctly  claim  the  particular  improvement  or 
combination  which  he  claims  as  his  invention 
or  discovery."  Ex  parte  Jagan,  C.  D.  1911, 
162  O.  G.  538. 

93.  Claims  should  not  be  allowed  merely 
because  they  represent  a  multitude  of  ele- 
ments all  of  which  do  not  appear  in  one  or 
two  or  even  more  references.     Id. 

XVII.  Inaccurate  or  Inapt. 

94.  A  claim  for  "lumber  partially  saturated 
with  sulfuric  acid."  Held,  to  be  objectionable, 
the  words  "partially  saturated"  being  inapt. 
Ex  parte  Chapman,  C.  D.  1906,  120  O.  G.  2446. 

95.  Where  a  part  defined  as  a  "latch"  is 
carried  by  bearings  in  one  part  of  the  me- 
chanism and  merely  rides  in  a  slot  in  a  part 
termed    a   "mold-blade,"   Held,   that    a  claim 


CLAIMS,  XVIII-XX,  (a). 


specifying  that  the  latch  is  mounted  on  the 
mold-blade  is  not  supported  by  the  disclosure. 
Ex  parte  Duncan,  Prichard  &  McCauIey,  C. 
D.  1906,   124   O.   G.   1207. 

XVIII.  Incomplete  or   Imperfect   Combina- 
tion. 

96.  Where  mechanism  defined  as  an  "actu- 
ating connection"  includes  as  one  of  its  ele- 
ments a  cross-pin  which  serves  as  a  latch  to 
hold  other  parts  of  the  mechanism  in  place, 
Held,  that  no  valid  reason  exists  why  the  "ac- 
tuating mechanism"  and  the  "latch"  should 
not  be  independently  recited  in  the  claim.  Ex 
parte  Duncan,  Prichard,  and  Macauley,  C.  D. 
1906,  124  O.  G.  1207. 

XIX.  Reinstatement  of. 

97.  Where  some  of  the  claims  are  finally  re- 
jected and  the  applicant  presents  an  amend- 
ment reinstating  claims  which  had  been  re- 
jected and  canceled  and  at  the  same  time 
files  an  appeal  to  the  e.xaminers-in-chief  in- 
cluding the  reinstated  claims.  Held,  that  the 
examiner  properly  refused  to  enter  the  amend- 
ment or  forward  the  appeal.  Ex  parte  Kieffer, 
C.  D.  1903,  104  O.  G.  2443. 

98.  A  party  cannot  as  a  matter  of  right  be 
permitted  to  reinsert  for  the  purpose  of  ap- 
peal any  and  all  rejected  claims  which  have 
been  canceled  during  the  prosecution  of  the 
application.    Id. 

99.  The  question  whether  claims  may  be 
reinstated  in  a  particular  case  must  be  left 
largely  to  the  discretion  of  the  examiner  and 
must  be  decided  in  view  of  the  circumstances 
of  the  case.    Id. 

XX.  Construction  of. 

(a)  Liberal  or  Broad. 

109.  Where  in  one  form  of  the  device  two 
spring-clamps  are  used  and  in  the  other  one 
is  used,  Held,  that  a  claim  to  "a  spring  holding 
device"  is  broad  enough  to  apply  to  both  forms 
and  is  not  limited  to  either.  Ex  parte  Plum- 
ley,  C.  D.  1902,  101  O.  G.  447. 

101.  Held,  that  in  this  office  a  claim  which 
is  broadly  drawn  will  be  broadly  read  and 
that  if  a  narrow  meaning  is  desired  it  must 
be  secured  by  limitations  expressed  in  the 
claims.  Ex  parte  Cutler,  C.  D.  1906,  123  O.  G. 
6.5.5. 

102.  Held,  that  no  better  method  is  known 
for   securing  the  benefits  of  uniformity  and 


certainty  in  the  construction  of  claims  and  at 
the  same  time  giving  effect  to  the  undoubted 
intent  of  the  parties  drawing  them  than  to 
give  invariably  to  each  claim  the  broadest 
meaning  which  can  be  imposed  upon  it  with- 
out violence  to  the  language  used  therein.    Id. 

103.  The  reasonable  presumption  is  that  an 
inventor  intends  to  protect  his  invention 
broadly,  and  consequently  the  courts  have 
often  said  that  the  scope  of  a  claim  should 
not  be  restricted  beyond  the  fair  and  ordi- 
nary meaning  of  the  words  except  for  the 
purpose  of  saving  it  from  invalidity.  ♦An- 
drews v.  Nilson,  C.  D.  1906,  123  O.  G.  1667. 

104.  The  issue  of  an  interference  between 
an  application  and  a  patent  issued  during  the 
pendency  of  the  application  which  involves 
as  one  of  its  elements  a  "vibratory  strip" 
should  not  be  construed  as  limited  to  a  vibra- 
tory strip  having  non-magnetic  properties  sim- 
ply because  the  patentee  who  first  made  the 
claim  shows  a  vibratory  strip  having  that 
characteristic.  The  reasonable  presumption  is 
that  the  inventor  intends  to  protect  his  inven- 
tion broadly.    *Id. 

105.  Where  a  claim  had  been  construed  to 
involve  the  unmistakable  distinctions  between 
an  applicant's  device  and  the  device  of  the 
reference,  but  the  claim  does  not,  in  fact,  ex- 
press these  distinctions  by  its  terms.  Held, 
that  the  claim  should  not  be  regarded  as  fur- 
ther limited  than  its  language  requires.  Podle- 
sak  and  Podlesak  v.  Mclnnerney,  C.  D.  1906, 
123  O.  G.  1989. 

106.  No  better  method  of  construing  claims 
is  perceived  than  to  give  them  in  each  case 
the  broadest  interpretation  which  they  will 
support  without  straining  the  language  in 
which  they  are  couched.    Id. 

107.  Held,  that  a  claim  to  a  printing-press 
comprising  three  printing-couples  arranged  in 
parallel  planes  is  properly  readable  upon  a 
structure  wherein  two  of  the  couples  are  ar- 
ranged in  one  plane  and  the  third  couple  in 
another  plane  parallel  to  the  first,  the  claim 
not  specifying  that  each  couple  shall  be  in  a 
different  plane  from  each  of  the  others.  Bech- 
man  v.  Southgate,  C.  D.  1906,  123  O.  G.  2309. 

108.  Where  an  applicant's  claims  to  a  trim- 
mer for  sewing-machines  make  no  mention  of 
a  presser-foot,  a  difference  in  structure  em- 
bodying a  particular  form  of  presser-foot 
which  is  not  clearly  pointed  out  in  the  record 
will  not  be  assumed.  *In  re  McNeil  v.  Sturte- 
vant,  C.  D.  1907,  126  O.  G.  3425. 


CLAIMS,  XX,  (b)-(e). 


83 


109.  Although  the  patent  shows  only  a  sin- 
gle thread  machine,  Held,  that  a  double-thread 
machine  having  differences  of  form,  but  no 
substantial  difference  of  parts  or  of  func- 
tions, is  an  infringement,  d  Wilcox  &  Gibbs 
Sewing  Machine  Co.  v.  The  Merrow  Machine 
Co.,  C.  D.  1898,  8.5  O.  G.  1078. 

HO.  The  claims  of  the  patent  should  be 
construed,  where  they  reasonably  may  be,  to 
cover  the  entire  invention  of  the  patentee,  and 
where  a  patent  contains  several  claims,  some 
of  which  are  limited  to  details,  the  others 
are  prima  facie  not  to  be  restricted  by  in- 
sisting that  they  contain  as  necessary  elements 
the  details  which  are  specifically  covered  by 
other  claims,  d  Bresnahan  et  al.  v.  Tripp 
Giant  Leveller  Company,  C.  D.  1900,  92  O. 
G.  2.508. 

111.  Where  in  a  magazine  for  a  gun  one 
form  of  the  device  has  a  gate  provided  with 
a  notch  cut  directly  in  its  top,  whereas  an- 
other form  has  a  spring-actuated  plate  di- 
rectly attached  to  the  gate  and  provided  with 
a  notch  for  the  same  purpose.  Held,  that  a 
claim  including  a  "gate  having  a  guide-notch" 
is  not  limited  to  either  form,  but  is  broad 
enough  to  cover  both.     Ex  parte  Scott,  C.  D. 

1901,  95  O.  G.  268.3. 

112.  The  fact  that  the  invention  oversteps 
the  boundary  of  pre-existing  knowledge  both 
as  to  structure  and  scientific  principles  war- 
rants a  liberal  view  of  the  scope  of  the  de- 
scriptive specifications  rather  than  a  narrow 
and   restrictive  one.     *Stone  v.   Pupin,   C.  D. 

1902,  100  O.  G.  1113. 

113.  A  limited  construction  will  not  be  put 
upon  the  terms  of  a  claim  where  it  appears 
that  the  art  is  comparatively  new  and  the 
terms  used  have  not  acquired  a  fixed  and 
definite  meaning  therein.  *Lindmark  v.  Hodg- 
kinson,  C.  D.  1908,  m  O.  G.  228. 

(b)  By  Sfecification. 

114.  The  second  claim  apparently  extends 
to  the  art  of  mixing  all  molten  metals ;  but 
the  claim  of  a  patent  must  always  be  explain- 
ed by  and  read  in  connection  with  the  speci- 
fication, and  when  so  considered  this  claim 
clearly  includes  metal  from  blast-furnaces.  It 
is  not  rendered  void  by  the  possibility  of  its 
including  cupola  metal.  **Carnegie  Steel 
Company,  Limited  v.  Cambria  Iron  Company, 
C.  D.  1902,  99  O.  G.  1866. 

115.  In  the  light  of  the  circumstances  sur- 
rounding the  issuance  of  the  patent  the  words 


of  limitation  contained  in  the  claim  must  be 
given  due  effect  and  the  elements  entering 
into  the  combination  must  be  construed  to 
refer  to  elements  having  substantially  the 
form  and  constructed  substantially  as  de- 
scribed in  the  specification  and  shown  in  the 
drawing.  **Singcr  Manufacturing  Company 
V.  Cramer,  C.  D.  1904,  108  O.  G.  1869. 

116.  In  making  his  claim  the  inventor  is 
at  liberty  to  choose  his  own  form  of  expres- 
sion, and  while  the  courts  may  construe  the 
same  in  view  of  the  specifications  and  the 
state  of  the  art  they  may  not  add  to  or  detract 
from  the  claim.  *Cimiotti's  Unhairing  Co.  v. 
American  Fur  Refining  Co.,  C.  D.  1905,  116  O. 
G.  1452. 

117.  An  inventor  must  describe  what  he 
conceives  to  be  the  best  mode  of  constructing 
his  invention ;  but  he  is  not  confined  to  that 
if  his  claims  are  broad,  particularly  where  he 
states  in  his  specification  that  means  other 
than  the  means  shown  may  be  employed. 
**Continental  Paper  Bag  Company  v.  Eastern 
Paper  Bag  Company,  C.  D.  1908,  136  O.  G. 
1297. 

(c)  By  Stale  of  Art. 

118.  The  claims  of  a  patent  must  be  con- 
strued in  the  light  of  the  state  of  the  art  as 
it  existed  at  the  date  of  the  patent,  c  St.  Louis 
Corset  Company  v.  Williamson  Corset  and 
Brace  Company  et  al.,  C.  D.  189S,  82  O.  G.  188. 

(d)  Limited  by  Their  Terms. 

119.  Where  an  element  is  excluded  in  the 
claim  of  a  patent.  Held,  that  the  patentee  is 
not  at  liberty  to  show  that  it  is  immaterial 
in  order  to  make  out  a  case  of  infringement. 
*Lane  v.  Levi,  C.  D.  1903,  104  O.  G.  1898. 

(c)  Limited  by  Amendment  in  Patent  Office. 

120.  When  the  specification  clearly  and  fully 
sets  forth  the  advantages  of  using  an  alter- 
nating instead  of  a  direct  current,  it  cannot  be 
held  that  when  the  limitation  to  the  use  of  an 
alternating  current  was  inserted  in  the  claim 
it  was  intended  to  or  does  in  fact  apply  to 
the  use  of  any  current  broadly.  Bullier  v. 
Willson.  C.  D.  1899,  87  O.  G.  180. 

121.  A  claim  as  allowed  in  the  patent  must 
be  read  and  interpreted  with  reference  to  the 
rejected  claims  and  to  the  prior  state  of  the 
art,  and  cannot  be  construed  to  cover  either 
that  which  was  rejected  by  the  patent  office 


84 


CLAIMS,  XX,   (e). 


or   disclosed   by   prior   devices.     **HubbeI   v. 
United  States,  C.  D.  1900,  93  O.  G.  1124. 

122.  Where  a  difference  between  claims  as 
made  and  as  allowed  consists  of  mere  changes 
of  expression  having  substantially  the  same 
meaning,  such  changes  made  to  meet  the  views 
tf  the  examiner  ought  not  to  be  permitted  to 
defeat  a  meritorious  claimant.  While  not  al- 
lowed to  revive  a  rejected  claitn  by  a  broad 
construction  of  the  claim  allowed,  yet  the 
patentee  is  entitled  to  a  fair  construction  of 
the  terms  of  his  claim  as  actually  granted. 
**Hubbel  V.  United  States,  C.  D.  1900,  93  O. 
G.  1124. 

123.  If  a  claim  to  a  combination  be  re- 
stricted to  specified  elements,  all  must  be  re- 
garded as  material,  and  limitations  imposed 
by  the  inventor,  especially  such  as  were  intro- 
duced into  an  application  after  it  had  been 
persistently  rejected,  must  be  strictly  con- 
strued against  the  inventor  and  in  favor  of 
the  public,  and  looked  upon  as  in  the  nature  of 
disclaimers.     **Id. 

124.  Where  an  application  for  a  patent  con- 
tains one  process  claim  including  the  use  of 
"heat"  as  one  step  and  a  second  claim  includ- 
ing a  "blast  of  heat"  and  the  applicant  cancels 
and  abandons  the  second  claim  upon  the  ob- 
jection that  the  claims  were  substantially  the 
same.  Held,  that  the  patentee  cannot  insist  that 
the  first  claim  covering  the  use  of  heat  broad- 
ly is  limited  to  a  blast  of  heat.  **U.  S.  Repair 
and  Guaranty  Co.  v.  Assyrian  Asphalt  Co.,  C. 
D.   1902.  98  O.  G.   582. 

125.  It  is  not  within  the  rightful  power  of 
the  courts  to  enlarge  or  restrict  the  scope  of 
patents  which  by  mistake  were  issued  in  terms 
too  narrow  or  too  broad  to  cover  the  invention 
however  manifest  the  fact  and  extent  of  the 
mistake  may  be  shown  to  have  been.    **Id. 

126.  Where  Kitselman  acquiesced  in  the  re- 
jection of  broad  claims  by  the  patent  office  in 
view  of  prior  patents,  Held,  that  he  cannot 
now  reasonably  claim  a  construction  of  his 
claims  which  would  protect  his  machine  as  a 
pioneer.  **Kokomo  Fence  Machine  Company 
v.  Kitselman,  C.  D.  1903,  103  O.  G.  1417. 

127.  In  view  of  the  prior  art  and  of  what 
passed  in  the  patent  office  the  claims  in  the 
patent  to  Kitselman  must  be  limited  in  their 
scope  to  the  actual  combination  of  essential 
parts  as  shown  and  cannot  be  construed  to 
cover  other  combinations  of  elements  of  dif- 
ferent construction  and  arrangement.     **Id. 

128.  Where  the  margin  of  patentability  in 
the  claim  is  narrow  and  the  applicant  because 


of  rejections  amended  it  to  include  certain  de- 
tails of  construction  in  order  to  secure  an  al- 
lowance. Held,  that  those  details  cannot  be  re- 
garded as  immaterial.  *Blackford  v.  Wilder, 
C.  n.  1903,  104  O.  G.  o78. 

129.  The  proceedings  in  the  patent  office 
leading  to  the  grant  of  Cramer's  patent  con- 
sidered and  Held,  that  it  was  the  purpose  of 
the  patent  office  to  limit  the  patent  to  the  par- 
ticular device  of  treadle-bar  and  bearing  de- 
scribed and  shown  when  employed  in  com- 
bination with  a  particular  form  of  vertical 
cross-brace.  **Singer  Mfg.  Co.  v.  Cramer, 
C.   U.   1904,  108  O.  G.   1869. 

130.  Where  after  rejection  a  claim  is 
amended  and  allowed,  it  must  be  read  and  in- 
terpreted with  reference  to  the  rejected  claim, 
*Computing  Scale  Company  of  America  v. 
The  Automatic  Scale  Company,  C.  D.  1905, 
119  O.  G.  ir)86. 

131.  Where  the  patent  office  rejected  a  claim 
as  not  patentable  in  view  of  the  prior  art,  but 
suggested  that  if  the  limitation  "depending" 
were  made  at  a  certain  point  the  claim  would 
be  patentable,  and  the  applicant,  acquiescing, 
makes  the  amendment.  Held,  that  the  patent- 
ability of  the  claim  depends  upon  whether 
there  is  invention  in  making  the  part  "depend- 
ing."   *Id. 

132.  Where  an  applicant  before  the  patent 
office  acquiesces  in  the  ruling  that  his  claim  is 
not  patentable  without  amendment,  he  cannot 
be  heard  to  question  the  ruling  thereafter, 
and  it  is  immaterial  whether  it  was  right  or 
wrong.     *Id. 

133.  No  limitation  upon  the  claims  by  pro- 
ceedings in  the  Patent  office  nor  any  abandon- 
ment of  any  part  of  the  invention  is  to  be  pre- 
sumed, but  must  be  shown  by  clear  and  con- 
vincing proof.  *Computing  Scale  Company  of 
America  v.  Automatic  Scale  Company,  C.  D. 
190.-),   119  O.   G.   1586. 

134.  While  the  courts  are  zealous  to  protect 
an  inventor  to  the  full  extent  of  the  contribu- 
tion which  he  has  made  to  the  art,  they  must 
give  due  weight  to  any  estoppel  which  he  has 
created  by  anything  done  either  prior  or  sub- 
sequent to  the  issue  of  his  patent  which  pre- 
vents him  from  claiming  his  invention  in  its 
entirety.     *Id. 

135.  Where  an  inventor  seeking  a  broad 
claim  which  is  rejected,  in  which  rejection  he 
acquiesces,  substitutes  therefor  a  narrower 
claim,  he  cannot  be  heard  to  insist  that  the 
construction  of  the  claim  allowed  shall  cover 
that    which    had    been     previously     rejected. 


CLAIMS— CLASSIFICATION— COMBINATION,    (f). 


85 


(Corbin  Cabinet  Lock  Company  v.  Eagle  Lock 
Company,  C.  D.  1893,  612,  65  O.  G.  1066,  150 
U.  S.  38-40,  and  cases  there  cited.)  **Com- 
puting  Scale  Company  of  America  v.  The 
Automatic  Scale  Company,  C.  D.  1907,  127  O. 
G.  849. 

136.  Patents  are  grants  made  in  considera- 
tion of  discoveries  which  "promote  the  prog- 
ress of  science  and  the  useful  arts"  (Const., 
art.  1.,  sec.  8),  and  they  are  to  be  construed 
liberally,  so  as  to  effect  their  real  intent,  sub- 
ject to  the  settled  rule  that  inventors  be  held 
to  the  form  of  claim  which  they  have  accepted 
under  objections  from  the  patent  office,  rf  Bos- 
sert  Electric  Const.  Co.  v.  Pratt  Chuck  Co., 
Bossert  Electric  Const.  Co.  v.  Sprague  Elec- 
tric Co.,  C.  D.  1910,  159  O.  G.  747. 

137.  "It  is  settled  by  the  repeated  decisions 
of  the  supreme  court  and  of  this  court  that, 
when  an  inventor  seeking  a  patent  for  a  broad 
claim  acquiesces  in  a  rejection  of  the  same  by 
the  patent  office  and  substitutes  therefor  a  nar- 
rower one,  he  will  not  be  heard  to  insist  that 
the  construction  of  the  claim  allowed  shall 
include  that  which  has  been  rejected;  also,  that 
a  claim  as  allowed  under  such  circumstances 
must  be  construed  with  reference  to  the  re- 
jected claims  and  the  prior  state  of  the  art, 
and  will  not  be  so  interpreted  as  to  cover 
either  what  was  rejected  by  the  patent  office 
or  disclosed  by  prior  devices."  d  Boss  Mfg. 
Co.  V.  Thomas,  C.  D.  1911,  162  O.  G.  1183. 

(f)  Forced. 

138.  The  practice  of  imposing  upon  claims 
by  construction  meanings  which  are  not  clear- 
ly set  forth  by  their  terms  is  to  be  condemned. 
Ex  parte  Cutler,  C.  D.  1906,  123  O.  G.  655. 


CLASSIFICATION   OF   INVENTIONS. 

!•  Upon  the  question  whether  the  class  of 
coin-controlled  apparatus  or  the  class  of  ma- 
chines to  which  that  apparatus  is  applied 
should  take  the  claims  for  the  combination 
of  the  coin-controlled  apparatus  with  that  ma- 
chine, Held,  that  to  the  class  of  coin-con- 
trolled apparatus  should  be  assigned  all  pat- 
ents and  applications  which  contain  any  claim 
for  the  coin-controlled  device,  or  for  the 
combination  of  such  devices  with  the  appa- 
ratus or  machine  to  which  it  is  applied,  or  for 
any  structure  of  that  apparatus  which  would 
be  useful  only  in  a  coin-controlled  device. 
Ex  parte  Cassler,  C.  D.  1900,  90  O.  G.  446. 


2.  Held,  further,  that  if  such  a  case  con- 
tains, in  addition  to  the  matter  above  speci- 
lied,  any  claim  for  the  specific  construction 
of  the  machine  to  which  the  coin-controlled 
apparatus  is  applied  and  which  would  not  be 
limited  in  its  use  to  the  coin-controlled  appa- 
ratus, it  should  be  divided  out,  and  if  made 
the  subject  of  another  application  should  be 
classified  with  that  class  of  machines  to 
which  the  coin-controlled  apparatus  is  applied 
Id. 

3.  Held,  further,  that  if  a  claim  reads  "In 
a  coin-controlled  apparatus,  a  telephone,"  for 
example,  followed  by  a  specific  statement  of 
the  construction  of  the  telephone,  such  a  claim 
should  be  classified  with  telephones  and  not 
with  coin-controlled  apparatus,  as  under  the 
court  decisions  the  introductory  phrase  is  not 
an  element  of  the  combination  and  does  not 
limit  the  claim  to  such  apparatus.     Id. 

4.  Held,  further,  that  if  this  practice  were 
followed  the  class  of  coin-controlled  appara- 
tus would  be  kept  clear  of  all  claims  cover- 
ing per  se  the  construction  of  the  machine  to 
which  the  coin-controlled  apparatus  is  applied, 
and  the  classes  to  which  such  machines  are 
assigned  would  also  be  kept  clear  of  claims 
involving,  broadly  or  specifically,  a  coin- 
controlled  device.  Under  this  practice  appli- 
cation would  be  divided  on  structural  lines 
and  the  decision  of  Miller  v.  Eagle  Mfg.  Co. 
(C.  D.  1894,  147,  66  O.  G.  845)  would  not  pro- 
hibit such  division.     Id. 

5.  As  the  question  of  classification  rests 
entirely  with  this  office  and  is  within  the 
discretion  of  the  chief  of  the  classification 
division,  to  whom  the  examiner  refers  the 
case  if  he  has  any  doubt  as  to  the  propriety 
of  its  classification,  a  petition  for  the  trans- 
fer of  an  application  from  one  examining 
division  to  another  will  be  dismissed.  Ex 
parte  Stevenot,  C.  D.  1904,  111  O.  G.  1939. 


COMBINATION  IN  RESTRAINT   OF  TRADE. 

1-  Where  in  a  previous  litigation  (National 
Harrow  Co.  v.  Hench,  C.  D.  1897,  743,  81  O. 
G.  1612)  it  was  held,  that  the  organization 
of  the  complainant,  the  assignment  to  it  of 
the  patents,  and  the  license  from  the  com- 
plainant permitting  the  assignors  to  continue 
to  make  and  sell  harrows  under  the  patents 
so  assigned  were  all  steps  in  a  general  scheme 
to  create  a  monopoly  and  that  the  transaction 
or  combination  was  unlawful  in  its  concep- 
tion and  purpose  as  a  whole  and  in  all  of  its 


86 


COMITY. 


parts,  and  the  present  bill  is  based  upon  the 
theory  that,  holding  the  legal  title  to  the  pat- 
ent in  controversy,  the  complainant  can  sue 
the  owners  of  the  equitable  title  not  as  li- 
censes, but  as  infringers,  Held,  that  the  as- 
signment of  the  patent  was  but  one  step  in 
the  combination  and  the  license  was  another 
step;  that  both  were  necessary  to  carry  out 
the  illegal  scheme;  that  in  the  prior  suit  the 
complainant  declared  upon  the  license,  now  it 
declares  upon  the  assignment,  and  that  both 
arc  invalid  under  the  prior  judgment,  the  one 
as  much  as  the  other,  c  National  Harrow 
Company  v.  Hench  et  al.,  C.  D.  1898,  82  O.  G. 
1420. 

2.  Further,  where  it  was  contended  that  the 
assignment  of  the  patent  was  a  distinct  and 
separate  transaction  and  that  the  bill  could 
be  supported  upon  the  assignment  alone,  which 
was  an  innocent  proceeding  in  itself.  Held, 
that  the  prior  decision  treated  this  with  the 
other  steps  as  part  of  one  illegal  scheme,    c  Id. 


COMITY. 

1-  Although  the  defendants  in  a  case  may 
not  be  the  same  or  in  privity  with  the  defend- 
ants in  another  case,  Held,  that  as  a  general 
rule,  and  especially  in  patent  cases,  the  deci- 
sion of  the  court  in  one  circuit  upon  final 
hearing  with  respect  to  the  issues  determined, 
if  based  upon  substantially  the  same  state  of 
facts,  should  be  followed  by  another  court 
unless  it  should  clearly  appear  that  there  was 
manifest  error  in  the  first  decision,  d  Beach 
V.  Hobbs  et  al.,  C.  D.  1899,  87  O.  G.  1960. 

2.  Where  a  protest  was  entered  in  the  Ger- 
man patent  office  to  the  grant  of  a  claim  for 
a  method  for  making  steel  bars  for  tools  by 
combining  two  bars  of  different  grades  of 
steel  so  that  the  superior  steel  is  inserted  in 
a  bar  of  inferior  steel,  on  the  ground  that 
the  method  was  already  known,  and  the  pro- 
test was  overruled,  Held,  that  the  action  of 
the  German  office  can  have  no  influence  upon 
the  determination  of  the  present  case,  as  there 
is  no  evidence  that  the  references  before  the 
patent  office  here  were  before  the  German 
office.  *Bedford  et  al.  v.  Duell,  Commission- 
er of  Patents,  C.  D.  1899,  87  O.  G.  1611. 

3.  Comity  is  not  a  rule  of  law,  but  one  of 
practice,  convenience,  and  expediency.  It  is 
something  more  than  courtesy,  which  implies 
only  deference  to  the  opinion  of  others,  since 
it  has  a  substantial  value  in  securing  uniform- 


ity of  decision  and  discouraging  repeated  liti- 
gation of  the  same  question;  but  its  obliga- 
tion is  not  imperative.  **Mast,  Foos  &  Com- 
pany V.  Stover  Manufacturing  Company,  C. 
D.  1900,  91  O.  G.  1239. 

4.  Comity  persuades,  but  it  does  not  com- 
mand. It  declares  not  how  a  case  shall  be 
decided,  but  how  it  may  with  propriety  be 
decided.  It  recognizes  the  fact  that  the  pri- 
mary duty  of  every  court  is  to  dispose  of 
cases  according  to  the  law  and  the  fact — to 
decide  them  right.  In  doing  so  the  judge  is 
bound  to  determine  them  according  to  his 
own  convictions.     **Id. 

5.  It  is  only  in  cases  where  in  a  judge's  mind 
there  may  be  a  doubt  as  to  the  soundness  of 
his  views  that  comity  comes  in  play  and  sug- 
gests a  uniformity  of  ruling  to  avoid  confu- 
sion until  a  higher  court  has  settled  the  law. 
It  demands  of  no  one  that  he  shall  abdicate 
his  individual  judgment,  but  only  that  defer- 
ence shall  be  paid  to  the  judgments  of  other 
co-ordinate  tribunals.  It  applies  only  to  ques- 
tions which  have  been  actually  decided  and 
which  arose  under  the  same  facts.     **Id. 

6.  Comity  has  no  application  to  questions 
not  considered  by  the  prior  court  or,  in  pat- 
ent cases,  to  alleged  anticipating  devices  which 
were  not  laid  before  that  court.    ♦*Id. 

7.  The  obligation  to  follow  the  decisions  of 
other  courts  in  patent  cases  increases  in  pro- 
portion to  the  number  of  courts  which  have 
passed  upon  the  question,  and  the  concordance 
of  opinion  may  have  been  so  general  as  to 
become  a  controlling  authority.  So,  if  a  prior 
adjudication  has  followed  a  final  hearing 
upon  pleadings  and  proofs  greater  weight 
should  be  given  to  it  than  if  it  were  made 
upon  a  motion  for  a  preliminary  injunction. 
**Id. 

8.  Held,  that  a  final  decree  for  the  defend- 
ant in  one  circuit  in  a  suit  upon  a  patent  upon 
the  ground  of  non-infringement  entitled  the 
defendant  to  continue  the  business  of  making 
and  selling  throughout  the  United  States  the 
article  which  he  had  theretofore  been  making 
and  selling  without  molestation  by  the  com- 
plainant through  the  patent  in  suit  **KessIer 
v.  Eldred,  C.  D.  1907,  128  O.  G.  1690. 

9.  Held,  that  said  decree  makes  a  suit  by 
the  complainant  against  any  of  the  defend- 
ant's customers  for  alleged  infringement  of 
the  patent  sued  upon  a  wrongful  interference 
with  defendant's  business.    **Id. 

10.  In  a  suit  in  equity  to  enjoin  the  in- 
fringement  of    certain    patents   where    it   ap- 


CONTEMPT— CONTINUING  APPLICATIONS,  I. 


87 


peared  that  the  question  of  their  validity  had 
been  decided  adversely  by  the  United  States 
Circuit  Court  of  Appeals  for  the  Third  Cir- 
cuit and  that  that  decision  had  been  followed 
by  two  other  courts  in  cases  where  the  real 
parties  in  interest  were  the  same,  Held,  that 
the  court  below  properly  applied  the  doctrine 
of  comity  in  the  absence  of  some  new  and 
material  defense,  and  its  decree  dismissing 
the  bill  of  complaint  affirmed.  *Brill  et  al. 
V.  The  Washington  Railway  and  Electric  Co., 

C.  D.  1908,  134  O.  G.  1563. 

11.  The  question  involved  having  been  de- 
cided by  the  courts  of  appeals  for  the  fourth 
and  eighth  circuits,  "in  which  decisions  we 
fully  concur,  we  do  not  deem  it  necessary  to 
discuss  the  propositions  advanced  by  appel- 
lant in  this  appeal.  (Brill  v.  Wash.  Ry.  &  El. 
Co.,  C.   D.   1908,  377,   134   O.  G.   1573,  30  App. 

D.  C.  255.)"  *J.  A.  Scriven  Company  v.  The 
W.  H.  Towles  Manufacturing  Company  et  al., 
C.  D.  1909,  140  O.  G.  510. 

12.  The  principle  of  comity  under  which 
one  court  suspends  all  action  in  a  case  where 
another  court  has  assumed  jurisdiction  of  the 
subject  should  be  given  proper  recognition  in 
the  patent  office.  Palestine  Hebrew  Wine 
Company  v.  Carmel  Wine  Company,  C.  D. 
1909,   142  O.  G.  287. 


CONTEMPT  OF  COURT. 

1.  Where  a  party  was  adjudged  guilty  of 
contempt  for  violating  an  injunction  against 
the  infringement  of  a  patent  and  was  re- 
quired to  pay  a  tine,  half  of  which  was  to  go 
to  the  United  States  and  half  to  the  complain- 
ant, Held,  that  the  fine  payable  to  the  United 
States  was  in  vindication  of  the  authority 
of  the  court,  and  therefore  the  judgment  of 
the  circuit  court  was  reviewable  by  the  court 
of  appeals  by  writ  of  error.  **In  re  The 
Christensen  Engineering  Company,  C.  D.  1904, 
110  O.  G.  2237. 

2.  Where  an  order  imposing  a  fine  for  vio- 
lation of  an  injunction  is  substantially  one 
to  reimburse  the  party  injured  by  the  dis- 
obedience, although  called  one  m  a  contempt 
proceeding,  it  is  to  be  regarded  as  merely 
an  interlocutory  order  and  to  be  reviewed 
only  on  appeal  from  the  final  decree ;  but  a 
different  rule  applies  where  the  fine  is  puni- 
tive and  in  vindication  of  the  authority  of  the 
court.     **Id. 


CONTINUING  APPLICATIONS. 
(See  DivisiONAi,  Appi,ications ;  Cross-Refer- 

ENCES.) 

I.  In  General. 
II.  Rir.HT  TO  Inspect,  Etc. 

I.  In  General. 

1.  Where  an  application  is  allowed  and  for- 
feited and  a  new  application  is  filed  for  the 
same  thing.  Held,  that  the  second  case  is  a 
continuation  of  the  first  and  that  notice  of 
the  first  case  should  be  included  in  the  sec- 
ond. Ex  parte  Taylor,  C.  D.  1905,  114  O.  G. 
126.>. 

2.  Where  an  application  was  filed  covering 
the  subject-matter  shown  and  claimed  in  a 
forfeited  application  by  the  same  applicant. 
Held,  that  there  was  no  error  by  the  examiner 
in  placing  notice  of  the  forfeited  case  in  the 
second  case  and  that  letters  referring  to  the 
first  case  will  not  be  expunged  from  the  rec- 
ord.   Id. 

3.  .\n  application  filed  within  one  year  after 
the  grant  of  a  patent  disclosing  the  subject- 
matter  of  such  application  is  not  a  continu- 
ation of  the  application  on  which  such  patent 
was  granted  and  is  not  entitled  to  the  benefit 
of  the  date  of  such  prior  application.  .\1- 
though  the  claims  of  the  second  application 
were  made  in  the  prior  application,  on  which 
the  patent  was  granted,  and  could  have  been 
divided  out  therefrom,  and  the  date  of  the 
prior  application  could  have  been  thus  se- 
cured, when  the  patent  was  granted  the  ap- 
plication was  merged  in  the  patent,  the  pro- 
ceeding w'as  closed,  and  there  was  nothing  to 
be  continued.  *In  re  Spitteler  and  Krische, 
C.  D.  1908,  134  O.  G.  1301. 

4.  The  rule  which  permits  a  divisional  ap- 
plication to  relate  back  to  the  filing  date  of 
the  original,  which  also  discloses  its  subject- 
matter,  as  long  as  it  remains  open  in  the  pat- 
ent office  is  a  very  liberal  one,  that  sometimes 
works  hardship  upon  intermediate  inventors, 
and  it  ought  not  to  be  extended  to  cases  not 
clearly  within  it.    *Id. 

5.  .An  application  disclosing  and  claiming 
subject-matter  disclosed  in  a  patent  granted 
prior  to  the  filing  of  such  application  can  not 
be  considered  as  a  continuance  of  the  prior 
application,  since  after  the  application  has 
eventuated  into  a  patent  there  is  nothing  left 
pending  before  the  patent  office  upon  which 
it  could  act  or  to  which  the  later  application 


88 


CONTINUING  APPLICATIONS,  II— CONTRACTS,  I. 


could  attach.  (Citing  Spitteler  and  Krische, 
C.  D.  1908,  374,  134  O.  G.  1301,  31  App.  D.  C. 
271 ;  Smith  v.  Goodyear  Dental  Vulcanite  Co., 
C.  D.  1877,  171,  11  O.  G.  246,  93  U.  S.  487,  and 
Cain  V.  Park,  C.  D.  1899,  278,  86  O.  G.  797, 
14  App.  D.  C.  43,  distinguished.)  *Wain- 
wright  V.  Parker,  C.  D.  1909,  142  O.  G.  1115. 

6.  Where  a  substantial  part  of  the  disclo- 
sure in  an  application  is  the  same  as  that' of 
an  earlier  case.  Held,  that  the  application  may 
be  termed  a  continuation  of  such  case  as  to 
all  subject-matter  which  is  common  to  the 
two.  Ex  parte  Kruse,  C.  D.  1910,  157  O.  G. 
208. 

7.  Where  an  application  was  abandoned  in 
favor  of  a  later  application,  Held,  that  there- 
after matter  not  originally  shown  in  the  sec- 
ond application  cannot  be  entered  therein  by 
amendment,  although  shown  in  the  prior  ap- 
plication. Ex  parte  Hagey,  C.  D.  1911,  173  O. 
G.  1081. 

II.  Right  to  Inspect,  Etc. 

8.  Where  an  application  is  filed  as  a  substi- 
tute for  another  and  the  first  application  is 
abandoned.  Held,  that  before  allowance  an  in- 
dorsement should  be  placed  upon  the  file- 
wrapper  of  the  second  case  indicating  that  it 
is  a  continuation  of  the  abandoned  case.  Ex 
parte  Lewis  and  Unger,  C.  D.  1903,  106  O.  G. 
543. 

9.  Where  an  application  is  filed  as  a  sub- 
stitute for  another,  the  first  application  con- 
stitutes a  part  of  the  proceedings  leading  to 
the  grant  of  a  patent  on  the  second  applica- 
tion and  should  not  be  concealed  from  the 
public  after  the  patent  is  granted.     Id. 

10.  When  a  patent  is  granted,  all  proceed- 
ings leading  to  its  grant  should  be  public 
property,  and  the  office  should  not  under  its 
rule  of  secrecy  permit  the  applicant  to  con- 
ceal any  part  of  those  proceedings.    Id. 

11-  Where  the  application  upon  which  a 
patent  is  granted  was  a  continuation  of  an 
earlier  application,  Held,  that  the  patent 
should  indicate  the  fact  to  the  public,  for 
otherwise  it  would  contain  a  false  suggestion 
as  to  the  date.    Id. 

12.  Where  a  patent  is  granted  on  an  appli- 
cation filed  as  a  substitute  or  a  continuation 
of  an  application  subsequently  abandoned. 
Held,  that  the  proceedings  in  the  abandoned 
application  are,  in  fact,  a  part  of  the  proceed- 
ings which  led  to  the  grant  of  the  parent,  and 
upon  the  grant  of  this  patent  the  rule  of  se- 


crecy no  longer  applies  to  these  proceedings, 
and  copies  of  the  abandoned  application 
should  be  furnished  upon  request.  In  re 
Doman,  C.  D.  1905,  115  O.  G.  804. 

13.  Where  a  patent  is  granted  on  an  appli- 
cation filed  as  a  substitute  for  an  application 
subsequently  abandoned,  Held,  that  the  record 
made  in  the  abandoned  application  should  be 
as  much  open  to  the  inspection  of  the  pub- 
lic as  the  record  in  the  patented  file,  and  cop- 
ies of  the  abandoned  application  should  be 
furnished  upon  request.    Id. 

14.  Where  a  request  has  been  made  for 
copies  of  an  application  of  a  defeated  party 
to  an  interference  which  has  become  aban- 
doned after  the  claims  involved  in  the  inter- 
ference were  rejected  as  the  result  of  the  de- 
cision or  priority  of  invention,  and  the  judge 
trying  the  cause,  resulting  from  a  suit  for 
infringement  of  the  patent,  has  certified  that 
a  copy  of  the  abandoned  application  would  be 
admitted  in  evidence,  and  the  request  to  ob- 
tain copies  of  the  application  for  the  purpose 
of  defense  has  been  duly  served  upon  the 
applicant  and  no  objection  is  offered.  Held, 
that  the  request  will  be  granted.  In  re  Bene- 
dict and  Morsell,  C.  D.  1905,  116  O.  G.  874. 


CONTRACTS. 


I.  In  General. 
II.  Illegal. 

I.  In  General. 

1.  Where  the  complainants  filed  a  bill  to 
restrain  the  respondents  from  manufacturing 
truck-frames  for  moving  vehicles,  or  parts  of 
truck-frames,  when  made  of  pressed  metal, 
in  violation  of  an  agreement  between  the  par- 
ties, the  clause  of  the  contract  upon  which  the 
complainants  rely  being  in  these  words :  "It 
is  further  agreed  that  the  parties  of  this  sec- 
ond part  will  not  engage  during  the  life  of 
the  agreement  in  the  manufacture  of  truck- 
frames  for  moving  vehicles,  or  any  part  of 
such  frames,  when  made  of  pressed  metal," 
the  complainants'  contention  being  that  by  this 
clause  of  the  agreement  the  defendants  were 
prohibited  from  manufacturing  parts  of  truck- 
frames  when  such  parts  were  made  of  pressed 
metal.  Held,  that,  reading  the  controverted 
clause  in  the  light  of  its  context,  with  due 
consideration  of  the  motives  leading  to  and 
the  object  to  be  accomplished  by  the  agree- 
ment and  giving  to  it  that  practical  construc- 
tion which  both  parties  have  put  upon  it,  it 


COMBINATION  IN  RESTRAINT  OF  TRADE— COMITY. 


cannot  be  construed  as  prohibiting  the  de- 
fendants from  manufacturing  pressed-metal 
parts  for  any  other  truck-frames  than  the 
pressed  metal  truck-frames  which  the  com- 
plainants are  engaged  in  putting  on  the  mar- 
ket, d  Fox  Solid  Pressed  Steel  Company  v. 
The  Schoen  Manufacturing  Company,  C.  D. 
1898,  82  O.  G.   1421. 

2.  An  interest  in  the  proceeds  of  a  patent 
may  be  transferred  by  contract ;  but  the  in- 
terest so  acquired  is  not  the  right  or  interest 
of  an  inventor  upon  which  a  patent  can  be 
obtained.  *Tyler  v.  Kelch,  C.  D.  1902,  98 
O.  G.  1282. 

3.  Where  T.  executed  a  release  to  K.  of  all 
claim  to  the  invention  for  the  sum  of  $75  and 
alleges  in  his  testimony  that  this  release  was 
of  his  right  as  the  true  inventor  and  not  of 
a  mere  pecuniary  interest  in  the  invention  and 
it  appears  that  the  invention  is  a  very  valuable 
one.  Held,  that  to  accept  T.'s  statement  would 
be  to  indulge  a  supposition  contrary  to  all 
rational  conduct  of  men  understanding  the 
nature  of  the  business  in  which  they  were  en- 
gaged.    *Id. 

11.  IllEcai,. 

4-  Held,  that  certain  contracts  in  this  case 
were  not  in  violation  of  the  act  of  congress 
prohibiting  combination  in  the  form  of  trust 
or  conspiracy  in  restraint  of  trade.  **E. 
Bement  &  Sons  v.  National  Harrow  Company, 
C.  D.  1902,  101  O.  G.  887. 

5.  Assuming  that  the  Attorney-General  of 
the  United  States  is  the  only  person  who  can 
bring  an  action  under  the  act  of  congress 
providing  that  every  contract  combination  in 
the  form  of  trust  or  conspiracy  in  restraint 
of  trade  is  illegal  and  punishable  by  fine  and 
imprisonment,  yet  any  person  sued  upon  such 
contract  may  set  up  its  illegality  as  a  com- 
plete defense  to  the  suit.    **Id. 

6.  A  private  individual  when  sued  upon  a 
contract  may  set  up  as  his  defense  that  it  is 
void  because  in  violation  of  an  act  of  con- 
gress and  when  proved  it  is  a  valid  defense 
to  anv  claim  made  under  the  contract.    ♦*Id. 


COPYRIGHT. 

I.  In  General. 
II.  Assignment  and  License. 

III.  Copyrightable  Subjects. 

IV.  NON-COPYRICHTABLE    SUBJECTS. 


V.  InfrincE-ment. 
VI.  International. 
VII.  Notice. 

VIII.  Publication,    Exhibition    and     Sale, 
Etc. 
IX.  Property  Rights. 

I.  In  General. 

1.  It  is  the  settled  law  of  this  country  and 
England  that  the  right  of  an  author  to  a 
monopoly  of  his  publication  is  determined  by 
the  copyright  act,  which  superseded  the  com- 
mon law.  •♦Holmes  v.  Hurst,  C.  D.  1899, 
99  O.  G.  189. 

2.  The  right  secured  by  the  copyright  act  is 
not  a  right  to  the  use  of  certain  words,  be- 
cause they  are  the  common  property  of  the 
human  race,  nor  is  it  the  right  to  ideas  alone, 
since  in  the  absence  of  means  to  communicate 
them  they  are  of  value  to  no  one  but  the 
author;  but  the  right  is  to  that  arrangement 
of  words  which  the  author  has  selected  to  ex- 
press his  ideas.    **Id. 

3.  At  common  law  the  exclusive  right  to 
copy  existed  in  the  author  until  he  permitted 
general  publication.  The  statute  created  a 
new  property  right,  giving  to  the  author  after 
publication  the  exclusive  right  to  multiply 
copies  for  a  limited  period.  **Caliga  v.  Inter 
Ocean  Newspaper  Company,  C.  D.  1910,  I.'jO 
O.  G.  828. 

4.  But  a  single  vahd  copyright  can  be  ob- 
tained for  the  same  subject-matter,  and  where 
an  artist  after  depositing  in  the  prescribed 
office  a  photograph  of  a  painting,  accompanied 
by  a  description  thereof,  deposits  another 
photograph  of  the  painting,  accompanied  by  a 
different  description,  the  second  copyright  is 
void.     **Id. 

II.  Assignment  and  License. 

5.  The  word  "assigns"  in  section  4952,  Re- 
vised Statutes,  as  amended  March  3,  1891  (26 
Stat.  L.  1106,  c.  565,  U.  S.  Comp.  St.  1901,  p. 
3400),  is  not  used  as  descriptive  of  the  char- 
acter of  the  estate  which  the  "author,  inven- 
tor, designor  or  proprietor"  may  acquire.  The 
statute  was  intended  to  give  to  the  assigns  of 
the  original  owner  of  the  right  to  copyright 
an  article  the  right  to  take  out  the  copyright 
secured  by  the  statute  independently  of  the 
ownership  of  the  article  itself.  **.-\merican 
Tobacco  Co.  v.  Werckmeister,  C.  D.  1908,  133 
O.  G.  1433. 


90 


CONTEMPT  OF  COURT— CONTINUING  APPLICATIONS,  1. 


6.  An  instrument  providing  that  "I  hereby 
transfer  the  copyright  in  my  picture  'Chorus' 
to  the  Photographische  Gesellschaft,  Berlin 
(The  Berhn  Photographic  Company)  for  the 
sum  of  £200,  London,  April  2,  1894,"  signed 
by  the  author  of  the  painting,  Held,  to  consti- 
tute a  complete  transfer  of  the  property  right 
of  copyright  existing  in  the  picture,  there 
being  no  evidence  of  any  intention  on  the  part 
of  the  author  to  retain  any  further  interest 
in  the  copyright.     **Id. 

7.  An  author  may,  before  publication,  as- 
sign the  right  or  privilege  of  taking  a  copy- 
right independent  of  the  transfer  of  the  copy- 
rightable thing  itself.     **Id. 

8.  Under  section  4952  of  the  Revised  Stat- 
utes as  amended  by  the  act  of  March  3,  1891 
(26  Stats.  L.  1106,  ch.  565,  U.  S.  Comp.  Stats. 
1091,  p.  3406),  providing  that  the  "author,  in- 
ventor, designer  or  proprietor  of  any  book, 
map,  chart,  *  *  *  painting  *  *  *  and  the  ex- 
ecutors, administrators  and  assigns  of  any 
such  person  shall,  upon  complying  with  the 
provisions  of  this  chapter,  have  the  sole  lib- 
erty of  printing,  reprinting,  publishing,  com- 
pleting, copying,  executing,  finishing  and  vend- 
ing the  same,"  etc.,  the  word  "assigns"  in- 
cludes one  who  receives  a  transfer,  not  neces- 
sarily for  the  thing  which  is  copyrighted,  but 
of  the  right  to  multiply  copies  of  it,  and 
such  right  does  not  depend  alone  upon  the 
statute,  but  is  a  right  derived  from  the  orig- 
inator of  the  copyrightable  thing  and  secured 
to  the  assignee  of  his  right.  **Bong  v.  The 
Alfred  S.  Campbell  Art  Company,  C.  D.  1909, 
144  O.  G.  277. 

9.  If  the  author  or  proprietor  of  a  copy- 
rightable thing  be  a  citizen  or  subject  of  a 
country  with  which  this  country  has  no  copy- 
right relations  and  by  reason  of  which  author 
cannot  secure  copyright  protection  in  this 
country,  the  assignee  of  such  author  cannot 
obtain  valid  copyright  protection,  although 
under  no  disability  as  far  as  his  citizenship  is 
concerned.     **Id. 

III.  CoPYRir.HTABLE  Subjects. 

10.  By  "articles  of  manufacture,"  referred 
to  in  section  3  of  the  copyright  act,  is  meant 
all  vendible  commodities  produced  by  hand, 
machinery,  or  art.  The  word  "vendible"  in- 
dicates that  by  "commodities"  is  to  be  under- 
stood commodities  in  a  commercial  sense. 
So  used  this  word  means  "any  movable  and 
tangible  thing  that  is  produced  or  used  as  a 


subject  of  barter  and  sale."    Ex  parte  Bowles, 
C.   D.   1901,   97  O.  G.  2308. 

H-  Chromolithographs  used  to  advertise  a 
circus  come  within  the  protection  of  the  copy- 
right law.  A  picture  is  none  the  less  a  pic- 
ture and  none  the  less  a  subject  of  copyright 
that  it  is  used  for  an  advertisement.  **Bleis- 
tein  et  al.  v.  Donaldson  Lithographing  Com- 
pany, C.  D.  1903,  102  O.  G.  1553. 

12.  Paintings  and  engravings  may  promote 
the  progress  of  the  useful  arts,  although  they 
are  not  for  a  mechanical  end.  The  constitu- 
tion does  not  limit  the  useful  to  that  which 
satisfies  immediate  bodily  needs.     **Id. 

13.  The  copyright  act  referring  to  the  fine 
arts  does  not  mean  that  ordinary  posters  are 
not  good  enough  to  be  considered  within  its 
scope.  If  they  command  the  interest  of  the 
public,  they  have  a  commercial  value,  and  it 
cannot  be  said  that  they  have  no  esthetic  and 
educational  value.    **Id. 

14.  Pictures  are  none  the  less  the  subject 
of  copyright  because  they  represent  actual 
groups  or  visible  things.  Such  a  picture  is 
the  personal  reaction  of  an  individual  upon 
nature,  and  personality  always  contains  some- 
thing unique.     **Id. 

15.  The  antithesis  of  "works  connected 
with  the  fine  arts"  is  not  works  of  little  merit 
or  of  humble  degree  addressed  to  the  less 
educated  classes,  but  is  "prints  or  labels  de- 
signed to  be  used  for  any  other  articles  of 
manufacture."     **Id. 

IV.   NoN-CoPyRICHTABLE    SUBJECTS. 

16.  An  optical  prism  device,  pressed  to  shape 
in  plastic  glass,  for  modifying  light-rays  in  a 
scientific  or  technical  character.  Held,  not  of 
the  class  intended  to  be  covered  by  section  5, 
subparagraph  (1)  of  the  copyright  act  of 
March  4,  1909,  providing  for  the  protection  of 
"drawings  or  plastic  works  of  a  scientific  or 
technical  character,"  the  word  "scientific"  re- 
ferring to  the  use  for  which  the  article  is  de- 
signed rather  than  to  the  manner  of  its  pro- 
duction, a  Brock  v.  National  Electrical  Supply 
Co.,  C.  D.  1911,  166  O.  G.  985. 

V.  Infringement. 

17.  The  copyright  of  a  musical  composi- 
tion which  is  published  in  the  form  of  sheet- 
music  is  not  infringed  by  a  perforated  roll  of 
paper  designed  to  be  used  in  connection  with 
an  automatic  piano-player  in  reproducing  the 
music    recorded    in    the    copyrighted    sheets. 


CONTINUING  APPLICATIONS,  II. 


91 


since  such  perforated  roll  is  not  a  "copy" 
within  the  meaning  of  the  copyright  statutes. 
**White-Smith  Music  Publishing  Company  v. 
Apollo  Company,  C.  D.  1908,  133  O.  G.  762. 

18.  After  judgment  of  forfeiture  of  in- 
fringing copies  of  a  copyrighted  painting 
under  section  4903  of  the  Revised  Statutes 
(U.  S.  Comp.  St.  1901,  p.  3414)  a  separate  ac- 
tion cannot  be  maintained  to  recover  the  pen- 
alty prescribed  in  said  section  for  every  in- 
fringing copy  of  the  copyrighted  painting 
found  in  the  infringer's  possession  or  sold  by 
him,  since  such  section  contemplates  but  a 
single  action  in  the  nature  of  replevin,  in 
which  may  be  had  both  a  forfeiture  and  a  re- 
covery of  penalties.  **Werckmeister  v.  Amer- 
ican Tobacco  Company,  C.  D.  1908,  133  O.  G. 
2279. 

19.  The  infringing  copies  of  a  copyrighted 
painting  need  not  be  found  in  the  infringer's 
possession  in  order  to  render  him  liable  for 
the  penalty  of  ten  dollars  imposed  by  United 
States  Revised  Statutes  (sec.  496.J).  United 
States  Compiled  Statutes,  1901  (p.  3414),  "for 
any  copy  of  the  same  in  his  possession,  or  by 
him  sold  or  exposed  for  sale."  **The  Amer- 
ican Lithographic  Co.  v.  Werckmeister,  C.  D. 
1911,  169  O.  G.  1187. 

VI.  Intern.\tional. 

20.  Under  section  13  of  the  act  of  March 
3,  1891  (26  Stats.  L.  1106,  ch.  563),  which  gives 
the  right  of  copyright  to  a  citizen  or  subject 
of  a  foreign  state  or  nation  when  such  state 
or  nation  "is  a  party  to  an  international  agree- 
ment which  provides  for  reciprocity  in  the 
granting  of  copyright,  by  the  terms  of  which 
agreement  the  United  States  of  America  may 
at  its  pleasure  become  a  party  to  such  agree- 
ment," and  provides,  further,  that  "the  ex- 
istence of  either  of  the  conditions  aforesaid 
shall  be  determined  by  the  President  of  the 
United  States  by  proclamation,"  a  citizen  of 
a  foreign  state  which  is  a  party  to  an  inter- 
national agreement  to  which  the  United  States 
may  become  a  party  is  not  entitled  to  copy- 
right protection  in  this  country  unless  and 
until  the  President  of  the  United  States,  by 
proclamation,  has  determined  whether  the 
necessary  conditions  exist.  ♦♦Bona  v.  The 
Alfred  S.  Campbell  Art  Co.,  C.  D.  1909,  144 
O.  G.  277. 

VII.  Notice. 

21.  Where  after  a  book  had  been  copy- 
righted certain  parts  thereof   were   pubhshed 


subsequently  without  notice  of  such  copy- 
right, Held,  that  such  publication  without  no- 
tice vitiated  the  copyright.  ♦♦Mifflin  et  al.  Dut- 
ton  et  al.,  C.  D.  1903,  104  O.  G.  1658. 

22.  Where  an  article  bearing  an  untruthful 
notice  of  copyright  was  imported  into  the 
United  States,  the  notice  having  been  impress- 
ed on  the  article  in  a  foreign  country  prior 
to  the  passage  of  amended  section  4903,  Re- 
vised Statutes,  Held,  that  the  penal  provisions 
of  original  section  4963,  Revised  Statutes, 
have  no  extraterritorial  operation,  and  the 
defendant  was  not  liable.  Flash  v.  Conn,  109 
U.  S.  376.  ♦♦McLoughlin  v.  Raphael  Tuck  & 
Sons  Co.,  Limited,  C.  D.  1903,  107  O.  G.  1063. 

23.  Section  4963,  Revised  Statutes,  provides 
for  a  penalty  for  importation  and  sale  in  the 
United  States  of  an  article  bearing  an  untruth- 
ful notice  of  copyright,  provided  that  the 
"act  shall  not  apply  to  any  importation  of  or 
sale  of  such  goods  or  article  brought  into  the 
United  tates  prior  to  the  passage  hereof." 
Held,  that  no  liability  attaches  to  one  who 
imported  an  article  into  the  United  States 
bearing  an  untruthful  notice  of  copyright  be- 
fore the  passage  of  the  act  though  the  article 
was  sold  after  its  passage.    ♦♦Id. 

24.  The  requirement  of  the  act  of  June  18, 
1874,  chapter  301,  section  1,  18  Statutes  78 
(Rev.  Stat.  sec.  4962),  that  "no  person  shall 
maintain  an  action  for  the  infringement  of 
his  copyright"  unless  the  required  notice  shall 
be  inserted  in  the  several  copies  of  every  edi- 
tion published  does  not  extend  to  publications 
abroad,  and  the  owner  of  a  work  copyrighted 
in  this  country  may  restrain  the  publication 
thereof  by  another  who  has  imported  for  pur- 
poses of  reproduction  copies  published  by 
such  owner  abroad  without  such  notice. 
♦♦United  Dictionary  Company  v.  G.  &  C.  Mer- 
riam  Company,  C.  D.  1908,  133  O.  G.  515. 

25.  Section  4962  of  the  Revised  Statutes 
as  amended  by  act  of  June  18,  1874,  chapter 
301  (18  Stat.  L.,  78,  U.  S.  Comp.  St.  1901, 
p.  3411),  providing  "that  no  person  shall 
maintain  an  action  for  the  infringement  of 
his  copyright  unless  he  shall  give  notice  there- 
of by  inserting  in  the  several  copies  of  every 
edition  published  *  ♦  ♦  by  inscribing  upon 
some  visible  portion  thereof,  or  of  the  sub- 
stance on  which  the  same  shall  be  mounted, 
"the  notice  of  copyright,  has  not  for  its  ob- 
ject to  require  the  inscription  upon  the  orig- 
inal painting,  map,  etc.,  but  only  upon  those 
published  copies  concerning  which  it  is  de- 
signed  to   convey   information    to   the   public 


93 


CONTRACTS,  I,  II— COPYRIGHT,  I. 


which  shall  limit  its  use  and  circumscribe  the 
rights  of  the  purchaser.  ♦* American  Tobacco 
Co.  V.  Werchmeister,  C.  D.  1908,  133  O.  G. 
1433. 

VIII.  Publication,   Exhibition   and   Sale, 
Etc. 

26.  The  serial  publication  of  a  book  in  a 
monthly  magazine  prior  to  any  steps  taken  to- 
ward securing  a  copyright  is  such  a  publica- 
tion of  the  same  within  the  meaning  of  the 
act  of  February  .3,  1831,  as  to  vitiate  a  copy- 
right of  the  whole  book  obtained  subsequently, 
but  prior  to  the  publication  of  the  book  as  an 
entity.  **HoImes  v.  Hurst,  C.  D.  1899,  89  O. 
G.  189. 

27.  If  the  several  parts  of  a  publication  had 
been  once  dedicated  to  the  public  and  the 
monopoly  of  the  author  thus  abandoned,  it 
cannot  be  reclaimed  by  collecting  such  parts 
together  in  the  form  of  a  book.    **Id. 

28.  If  an  author  permits  his  intellectual 
production  to  be  published,  either  serially  or 
collectively,  his  right  to  a  copyright  is  lost 
as  effectively  as  the  right  of  an  inventor  to  a 
patent  upon  an  invention  which  he  deliberate- 
ly abandons  to  the  public,  and  this,  too,  irre- 
spective of  his  actual  intention  to  make  such 
abandonment.     **Id. 

29.  The  word  "book"  as  used  in  the  statute 
is  not  to  be  understood  in  its  technical  sense 
of  a  bound  volume,  but  any  species  of  pub- 
lication which  the  author  selects  to  embody 
his  literary  production.  There  is  no  distinc- 
tion between  the  publication  of  a  book  and  the 
publication  of  the  contents  of  such  book, 
whether  such  contents  be  published  piecemeal 
or  en  bloc.     **Id. 

30.  There  is  no  fixed  time  within  which  an 
author  must  apply  for  copyright,  so  that  it  be 
"before  publication,"  and  if  the  publication  of 
the  parts  serially  be  not  a  publication  of  the 
book  a  copyright  might  be  obtained  after  the 
several  parts,  whether  published  separately  or 
collectively,  had  been  in  general  circulation 
for  years.  This  cannot  be  within  the  spirit 
of  the  copyright  act.     **Id. 

31.  Where  it  appears  that  certain  chapters 
of  a  book  had  been  published  in  a  magazine 
which  had  been  copyrighted  by  the  publishers 
thereof  and  that  subsequently  the  whole  book 
was  copyrighted  by  the  author  and  it  does  not 
appear  that  the  magazine  publishers  had  the 
authority  or  assent  of  the  author  of  the  book 
to  copyright  it,  Held,  that  under  the  circum- 


stances the  copyright  on  the  magazine  did  not 
afford  protection  to  that  part  of  the  book 
which  was  published  therein.  ♦*Mifflin  et  al. 
v.  R.  H.  White  Company,  C.  D.  1903,  104  O. 
G.  ]G.-)6. 

32.  The  right  of  copyright  being  purely 
statutory,  the  public  may  justly  demand  that 
the  person  claiming  a  monopoly  of  publica- 
tion shall  pursue,  in  substance  at  least,  the 
statutory  method  of  securing  it.     ♦♦Id. 

33.  Where  it  appeared  that  a  number  of 
chapters  of  a  book  had  been  published  before 
any  steps  were  taken  to  obtain  a  copyright. 
Held,  that  the  parts  so  published  became  pub- 
lic property.  ♦♦Mifflin  et  al.  v.  Dutton  et  al., 
C.   D.  1903,  104  O.  G.  16.58. 

34.  The  exhibition  of  a  painting  at  a  pub- 
lic gallery  by  the  author  prior  to  copyrighting 
the  same  does  not  deprive  him  or  his  assigns 
from  subsequently  securing  a  valid  copyright 
where  the  same  was  expressly  entered  at  the 
gallery  with  copyright  reserved.  ♦♦American 
Tobacco  Co.  v.  Werckmeister,  C.  D.  1908,  133 
O.  G.  1433. 

IX.  Property  Rights. 

35.  Property  in  copyright  is  the  creature 
of  the  federal  statute  passed  in  the  exercise 
of  the  power  vested  in  congress  by  the  Fed- 
eral Constitution  in  Article  I,  section  8,  "to 
promote  the  progress  of  science  and  useful 
arts  by  securing  for  limited  times  to  authors 
and  inventors  the  exclusive  right  to  their  re- 
spective writings  and  discoveries."  (See 
Wheaton  v.  Peters,  8  Pet.  591,  656;  Holmes 
V.  Hurst,  174  U.  S.  82 ;  Banks  v.  Manchester, 
128  U.  S.  244,  252;  Thompson  v.  Hubbard, 
131  U.  S.  123,  151.)  ♦♦American  Tobacco 
Company  v.  Werckmeister,  C.  D.  1908,  133 
O.  G.  143.3. 


CORRECTION    OF    PATENTS. 

(See  Reissue.) 

1.  It  is  the  practice  of  the  office  to  issue 
certificates  of  correction  only  for  the  purpose 
of  making  the  patent  as  issued  correspond  to 
the  record  of  the  case  and  not  for  the  pur- 
pose of  correcting  mistakes  of  an  applicant. 
Ex  parte  Burson,  C.  D.  1899,  87  O.  G.  698. 

2.  Where  the  office  in  amending  a  claim 
literally  followed  the  directions  given  by  an 
applicant.  Held,  if  there  is  any  mistake  or  am- 
biguity  in   the   claim   it   cannot   be   said   that 


COPYRIGHT,  II,  III. 


93 


such  mistake  was  incurred  through  the  fault 
of  the  office,  and  certificate  of  correction 
should  be  refused.    Id. 

3.  Certificates  of  correction  of  patents  are 
issued  only  for  the  purpose  of  making  the 
patent  when  issued  correspond  to  the  records 
of  the  office.  Ex  parte  Rosback,  C.  D.  1899, 
89  O.  G.  705. 

4.  Where  the  office  failed  to  change  the 
title  of  invention  as  requested  by  applicant 
and  the  patent  was  returned  to  the  office  for 
correction.  Held,  that  it  was  proper  to  correct 
the  error  in  the  patent  by  a  certificate  of  cor- 
rection and  that  the  office  should  not  be  put 
to  the  expense  of  reissuing  the  patent.  In  re 
Condict,  C.  D.  1900,  93  O.  G.  551. 

5.  Rule  170  provides  for  correcting  a  pat- 
ent by  a  certificate  of  correction,  and  it  is 
believed  that  the  rule  is  valid  and  that  the 
commissioner  has  authority  to  correct  such  a 
mistake  as  was  made  in  the  printing  of  this 
patent  by  certificate  of  correction.     Id. 

6.  Where  the  word  "advance"  was  by  a 
typographical  error  printed  in  the  claim  of  a 
patent  "adverse"  and  it  appears  from  an  ex- 
amination of  the  entire  case  that  the  mean- 
ing of  the  claim  is  not  changed,  Held,  that 
a  certificate  of  correction  will  be  indorsed 
upon  the  patent,  but  that  the  office  will  refuse 
to  go  to  the  expense  of  reissuing  it.  Ex 
parte  Alexander,  C.  D.  1902,  98  O.  G.  2364. 

7.  This  office  will  correct,  by  reissue,  mis- 
takes made  by  it  affecting  the  scope  or  legal 
effect  of  a  patent ;  but  where  the  mistake  is 
not  such  as  would  change  the  construction 
given  to  the  patent  or  deprive  the  patentee  of 
any  of  the  protection  intended  to  be  accord- 
ed him  by  the  patent  the  trouble  and  expense 
of  a  reissue  are  not  warranted.     Id. 

8.  An  obvious  error,  or  one  which  although 
not  obvious  would  not  change  the  meaning 
or  effect  of  the  patent,  needs  no  correction, 
and  a  certificate  of  correction  is  sufficient  to 
avoid  any  possibility  of  mistake.     Id. 

9.  A  mistake  in  printing  shown  by  the  rec- 
ords will  be  corrected  by  a  certificate  indorsed 
upon  the  patent,  but  the  office  will  not  hold 
itself  responsible  for  errors  in  the  printing  of 
signatures  that  are  not  clearly  and  legibly 
written.  Ex  parte  Keen  and  Williams,  C.  D. 
1902,  101   O.  G.  1372. 

10.  Where  in  the  grant  of  a  patent  the 
letter  C  was  by  mistake  substituted  for  the 
letter  G  in  the  assignee's  name.  Held,  that  a 
certificate  of  correction  indorsed  upon  the 
patent  is  sufficient  and  that  a  new  patent  will 


not  be  issued  merely  to  correct  that  error. 
Ex  parte  Garton-Daniels  Company,  C.  D.  1902, 
101  O.  G.  2569. 

II-  The  legal  effect  of  a  patent  is  not  aflfect- 
ed  by  a  mere  misnomer  of  the  applicant,  since 
the  true  name  may  be  proved,  and  it  is  well 
settled  that  the  misspelling  of  a  name  is  un- 
important if  the  resemblance  to  the  true  name 
is  sufficient  for  identification.     Id. 

12.  While  it  has  been  said  by  the  courts  that 
the  commissioner  has  no  authority  to  change 
the  legal  effect  of  a  patent  by  a  certificate  of 
correction.  Held,  that  the  commissioner  has 
authority  to  correct  a  mere  clerical  error 
plainly  shown  by  the  records  of  the  office.    Id. 

13.  The  right  to  correct  a  clerical  mistake 
clearly  disclosed  by  the  record  is  a  necessary 
power  in  the  administration  of  every  depart- 
ment, and  this  right  is  not  taken  away  from 
the  commissioner  by  the  provision  for  re- 
issue in  cases  where  the  mistake  is  of  such 
a  character  as  to  render  the  patent  inopera- 
tive or  invalid.    Id. 

14.  Where  the  applicant  asks  that  an  amend- 
ment be  inserted  after  the  word  "and"  on  a 
certain  line  and  that  word  appears  twice  on 
the  line,  Held,  that  a  certificate  of  correction 
will  not  be  indorsed  upon  the  patent  merely 
because  the  office  did  not  make  the  insertion 
after  the  particular  word  "and"  intended  by 
the  applicant.  The  mistake  was  the  appli- 
cant's failure  to  be  definite.  Ex  parte  Curtiss, 
C.  D.  1903,  105  O.  G.  500. 

15.  Where  the  office  does  what  the  appli- 
cant asks,  the  mistake,  if  any,  must  be  regard- 
ed as  the  applicant's,  and  it  will  not  be  cor- 
rected at  the  expense  of  the  office.     Id; 

16.  The  failure  of  the  office  to  detect  and 
require  the  correction  of  errors  made  by  the 
applicant  cannot  be  considered  mistakes  by 
the  office  calling  for  correction  at  its  expense. 
The  mistake  is  primarily  that  of  the  appli- 
cant.    Id. 

17.  Where  in  printing  a  trade-mark  certifi- 
cate of  registration  the  applicant's  name  is 
made  to  conform  to  the  signature  to  the  af- 
fidavit and  statement.  Held,  that  no  correc- 
tion will  be  made  upon  an  allegation  of  a 
mistake  in  the  name.  E.x  parte  Strobcl  & 
Wilken  Co.,  C.  D.  1903,  105  O.  G.  2058. 

18.  Where  by  a  clerical  error  a  canceled 
paragraph  of  the  specification  is  printed  in 
the  patent.  Held,  that  a  certificate  of  correc- 
tion will  be  indorsed  upon  the  patent  and 
that  the  patent  will  not  be  reissued.  Ex  parte 
Barrv,  C.  D.  1904,  112  O.  G.  2095. 


94 


COPYRIGHT,  IV-VII. 


19.  Where  a  patent  was  granted  to  the  in- 
ventor in  accordance  with  the  practice  of  the 
office  in  force  at  the  time,  Held,  that  a  certifi- 
cate of  correction  will  not  be  indorsed  upon 
the  patent  showing  that  it  should  have  been 
granted  to  the  assignee  merely  because  it  is 
now  the  practice  to  issue  patents  in  similar 
cases  to  assignees.  There  was  no  mistake, 
but  a  change  of  practice.  Ex  parte  Rundle, 
C.  D.  1905,  116  O.  G.  593. 


CROSS  REFERENCES. 

(See   Continuing  Applications;    Divisional 
Applications.) 

1.  Where  a  clear  understanding  of  the  mode 
of  operation  of  the  invention  claimed  cannot 
be  had  without  a  knowledge  of  an  attachment 
to  be  used  with  it,  Held,  that  the  attachment 
should  be  shown  and  described  and  that  it  is 
not  sufficient  to  refer  to  another  pending  ap- 
plication for  a  disclosure  of  it,  said  pending 
application  not  being  a  part  of  the  known  art 
and  may  never  become  a  patent.  Ex  parte 
Scott,  C.  D.  1901,  95  O.  G.  2683. 

2.  Where  an  application  was  prosecuted  to 
allowance,  but  was  allowed  to  become  aban- 
doned, and  thereafter  a  new  application  was 
filed  for  the  same  invention  and  containing 
the  allowed  claims,  Held,  that  there  should  be 
a  reference  in  the  new  application  to  the 
abandoned  application.  Ex  parte  Britt,  C.  D. 
1905,  116  O.  G.  298. 

3.  Where  the  actions  leading  to  the  allow- 
ance of  the  claims  which  appear  in  a  pending- 
case  are  not  in  the  record  of  that  case,  but 
in  the  record  of  a  prior  abandoned  application 
by  the  same  party,  Held,  that  there  should 
be  some  reference  to  the  original  case,  so 
that  when  the  patent  issues  the  public  shall 
be  informed  as  to  the  proceedings  leading  to 
the  allowance  of  the  claims.     Id. 

4.  The  actions  leading  to  the  allowance  of 
the  claims  form  a  part  of  the  proceedings  in 
regard  to  those  claims  whether  they  appear  in 
the  application  under  consideration  or  in  a 
prior  abandoned  application.     Id. 

5.  The  requirement  that  a  new  application 
shall  contain  a  reference  to  a  prior  applica- 
tion for  the  same  invention  filed  by  the  same 
inventor  is  not  limited  to  those  cases  in  which 
the  two  applications  are  copending  and  con- 
tinuous. (Ex  parte  Lewis  and  Unger,  C.  D. 
1903,  303,  106  O.  G.  543,  construed.)     Id. 


6.  Where  two  applications  filed  by  different 
inventors  are  owned  by  the  same  party  and 
the  assignee  wishes  to  refer  in  one  case  to 
the  other.  Held,  that  there  is  nothing  in  the 
rule  that  applications  are  preserved  in  secrecy 
which  would  make  the  reference  improper. 
Ex  parte  Kellogg,  C.  D.  1906,  120  O.  G.  2754. 

7.  Reference  should  not  be  made  in  one  ap- 
plication to  another  for  a  disclosure  of  a  fea- 
ture of  the  invention,  since  each  application 
should  be  complete  within  itself.     Id. 

8.  A  cross  reference  to  a  copending  appli- 
cation which  does  not  include  the  serial  num- 
ber and  date  of  filing  of  such  application. 
Held,  insufficient.  Ex  parte  Summers,  C.  D. 
1910,  160  O.  G.  1039. 


DAMAGES  AND  PROFITS. 

I.    ACCOVNTING. 

II.  Estimation  and  Measure  of. 

(a)  In  General. 

(b)  Fees  and  Royalties. 
III.  Master's  Report. 

I.  Accounting. 

1.  Where  the  lower  court  held  all  claims  of 
the  patent  to  be  valid  and  infringed,  but  the 
accounting  was  based  upon  the  infringement 
of  claim  5  and  that  claim  is  found  on  appeal 
to  be  invalid,  Held,  that  the  decision  below 
must  be  reversed  and  the  case  remanded  for 
proceedings  in  accordance  with  this  opinion. 
**Busch  V.  Jones  et  al.,  C.  D.  1902,  99  O.  G. 
229. 

II.  Estimation  and  Measure  of. 
(a)  In  General. 

2.  An  inventor  is  liable  for  the  entire  profits 
made  by  the  manufacture  and  sale  of  an  ar- 
ticle containing  the  patented  device  where  it 
appears  that  but  for  the  patented  feature  the 
article  would  not  have  been  salable,  rf  Wales 
V.  Watcrbury  Manufacturing  Company,  C.  D. 
1900,  01  O.  G.  2571. 

(b)  Fees  and  Royalties. 

3.  Where  a  company  agreed  in  considera- 
tion of  the  sale  of  it  by  F.  of  all  his  interest 
in  an  invention  for  which  two  applications 
for  patent  were  pending  in  the  patent  office  to 
pay  him  royalty  on  each  device  manufactured 
and  to  use  due  diligence  in  manufacturing  and 


COPYRIGHT,  VIII. 


95 


selling,  and  the  company's  attorney  took 
charge  of  the  prosecution  of  the  applications, 
and  the  manufacture  of  the  device  was  begun 
and  it  was  extensively  advertised,  but  subse- 
quently M.,  an  officer  of  the  company,  ob- 
tained a  patent  for  a  device  effecting  the  same 
purpose  as  that  of  F.,  whereupon  the  company 
ceased  to  make  the  latter's  device  and  substi- 
tuted that  of  M.,  and  one  of  F.'s  applications 
after  being  allowed  was  placed  in  interfer- 
ence with  other  applications  and  was  aban- 
doned by  the  failure  of  the  attorney  to  prose- 
cute it  and  the  other  application  was  allowed 
to  become  forfeited  by  failure  of  the  company 
to  pay  the  final  government  fee,  and  mean- 
while the  company  became  the  owners  of  an- 
other patent  claimed  to  dominate  the  de- 
vices of  both  F.  and  M.  under  which  it  con- 
tinued to  manufacture  the  device  of  M.,  and 
on  the  failure  of  the  company  to  make  any 
returns  or  render  any  account  F.  instituted 
proceedings  for  an  accounting.  Held,  that  a 
decree  holding  F.  entitled  to  royalty  from 
the  company  for  the  devices  manufactured 
under  M.'s  patent,  as  well  as  for  those  pro- 
fessedly manufactured  under  its  contract  with 
him,  and  directing  a  reference  to  the  auditor 
for  a  statement  of  such  account  should  be  af- 
firmed. *Eclipse  Bicycle  Company  v.  Farrow, 
C.  D.  1900,  93  O.  G.  1312. 

III.  Master's  Report. 

4.  Where  a  master's  report  was  made  prior 
to  the  decision  in  the  case  of  Tuttlc  v.  Claflin 
(C  D.  1896,  602,  77  O.  G.  973),  and  it  was 
agreed  on  all  sides  that  this  is  "a  closely 
analogous  case,"  Held,  that  it  is  only  fair  to 
the  master  and  just  to  all  parties  to  refer 
the  accounting  again  to  the  master  that  he 
may  follow  the  rule  of  Tuttle  v.  Claflin  and 
take  such  further  action  as  he  may  deem 
proper.  e  Hohorst  v.  Hamburg- .\merican 
Packet  Company  et  al.,  C.  D.  1898,  82  O.  G. 
897. 

5.  The  features  which  made  the  case  of 
Tuttle  V.  Claflin  (C.  D.  1896,  602,  77  O.  G. 
973),  unique  are  not  present  in  this  case.  The 
case  contains  no  evidence  upon  which  a  com- 
putation of  profits  can  be  properly  made,  and 
the  exceptions  to  the  master's  report  in  this 
case  are  overruled,    c  Id. 


a  patent  without  a  claim  to  it,  and  while  this 
presumption  may  under  certain  circumstances 
be  overcome  by  having  a  copending  application 
claiming  it,  it  is  not  overcome  by  an  appli- 
cation which  does  not  and  was  not  intended 
to  claim  it,  merely  because  the  claims  are  in- 
serted therein  long  after  the  patent  on  the 
other  case  issues.  Jones  v.  Larter,  C.  D.  1900, 
92  O.  G.  383. 

2.  If  the  inventor  who  as  against  others 
is  entitled  to  a  patent  chooses,  he  may  aban- 
don the  invention  to  the  public  by  a  full  dis- 
closure without  making  claim  to  it,  and  when 
he  does  so  no  one  else  can  acquire  the  right 
to  obtain  a  patent  upon  it.  Ex  parte  Grosse- 
lin,  C.  D.  1901,  97  O.  G.  2977. 


DELAY. 


1.  The  rule  that  where  a  suspension  has  been 
granted  pending  the  final  determination  of 
a  motion  and  the  party  receiving  an  adverse 
action  acts  within  a  reasonable  time  there- 
after will  be  held  to  have  preserved  his  rights 
is  equitable  and  a  good  one  for  general  appli- 
cation where  further  action  cannot  properly 
be  taken  until  the  matter  at  issue  is  settled; 
but  it  should  not  be  applied  to  relieve  a  party 
from  the  effects  of  his  own  negligence  and 
delay.  Whipple  v.  Sharp,  C.  D.  1902,  98  O. 
G.  225. 

2.  Where  an  action  is  required  to  be  taken 
within  a  certain  time  after  a  decision,  the 
date  of  the  decision  and  not  the  date  of  the 
receipt  of  a  notice  of  it  is  what  governs.    Id. 

3.  Where  the  applicant  fails  to  receive  a 
reply  from  this  office  to  an  action  taken  by 
him,  it  is  his  duty  to  make  an  investigation 
earlier  than  eight  months  after  the  action. 
Ex  parte  Piper,  C.  D.  1905,  115  O.  G.  1063. 


DEDICATION  OF  INVENTION  TO  PUBLIC. 

!•  The  presumption  of  a  dedication  to  the 
public  is  raised  by  a  disclosure  of  matter  in 


DEMURRER. 

1.  In  a  suit  under  section  4915,  Revised 
Statutes,  to  obtain  the  registration  of  the 
words  "Old  Lexington  Club"  as  a  trade- 
mark a  demurrer  was  filed  alleging  that  the 
mark  is  invalid.  Held,  that  the  invalidity  of 
the  mark  is  not  obvious  and  that  the  demurrer 
should  be  overruled,  c  The  Old  Lexington 
Club  Distillery  Company  v.  Kentucky  Distil- 
leries and  Warehouse  Company,  C.  D.  1909, 
148  O.  G.  1346. 

2.  Where  the  mark  shown  in  the  registra- 
tion  whose  cancelation  is  sought  consists  of 


96 


CORRECTION  OF  PATENTS. 


the  words  "Crown  Aster"  for  "canned  fruits, 
canned  vegetables,  pork  and  beans,  jam,  pre- 
serves, and  marmalades"  and  the  applicant 
for  cancelation  merely  alleges  that  it  had 
adopted  the  mark  "Hotel  Astor"  for  coffee 
prior  to  the  date  of  adoption  of  the  mark 
"Crown  Astor"  by  the  registrant  and  had  used 
it  continually  ever  since,  Held,  that  the  show- 
ing of  damage  is  not  sufficient,  and  a  demur- 
rer to  the  application  for  cancelation  was 
properly  sustained.  B.  Fischer  &  Co.  v.  A. 
F.  Beckmann  &  Co.,  C.  D.  1909,  149  O.  G. 
1120. 


I. 

II. 

III. 

IV. 


VI. 


VII. 

VIII. 

IX. 

X. 

XI. 
XII. 

XIII. 


XIV. 
XV. 


DESIGNS. 

In  Gener.\u. 

Appeal  and  Petition. 

Construction  oi'  Statutes. 

Limited    to    a    Single    Invention    or 

Modification. 
P.\tentable  Subject  Matter. 

(a)  In   General. 

(b)  Machines. 
Patentability   and   Invention. 

(a)  In   General. 

(b)  Function   or  .Mechanical   Utility. 

(c)  Effect  on  Ordinary  Observer. 
Infringement. 

Claims. 

Description  in   Specification. 

Drawings. 

Internal  Construction. 

Design   and  Mechanical  Application 

on  Same  Disclosure. 
Interference. 

(a)  In  General. 

(b)  Reduction  to  Practice. 
Public  Use  and  Sale. 
Test  of  Identity. 


I.  In  General. 

1.  Designs  have  relation  to  external  ap- 
pearance merely  and  are  not  concerned  with 
internal  structure.  Feder  v.  Poyet,  C.  D. 
1899,  89  O.  G.  1343. 

2.  As  much  inventive  genius  is  required  to 
support  a  design  patent  as  a  mechanical  patent. 
(Smith  v.  Saddle  Co.,  C.  D.  1893,  324,  63  O. 
G.  912 ;  Northrup  v.  Adams,  C.  D.  1877,  322,  12 
O.  G.  430,  2  Ban.  &  Ard.  r,67.  and  Foster  v. 
Crossin,  C.  D.  1891,  304,  .'■.4  O.  G.  111.'),  44  Fed. 
Rep.  62,  cited.)  rf  Westinghouse  Electric  and 
Manufacturing  Company  v.  Triumph  Electric 
Company,  C.  D.  1900,  90  O.  G.  603. 


3.  A  new  and  ornamental  design  will  be 
found  in  an  article  of  manufacture  when  there 
can  be  found  in  such  article  a  new  appear- 
ance created  by  inventive  process  and  serving 
the  purpose  of  embellishment.  Ex  parte 
Knolhe,  C.  D.  1903,  42,  102  O.  G.  1294. 

4.  Where  criticism  was  made  that  the  type 
were  not  shown,  but  only  the  kind  of  printed 
matter  produced,  Held,  that  the  answer  there- 
to is  that  the  conventional  drawing  accepted 
by  the  patent  office  for  years  has  been  fur- 
nished and  that  the  absence  of  description  is 
authorized  by  the  patent  office  rules.  *In  re 
Schraubstadtcr,  C.  D.  1906,  120  O.  G.  1167. 

5.  Where  small  differences  existed  in  the 
applicant's  design  over  the  references,  which 
differences  would  appear  greater  to  an  expert 
than  to  the  average  observer,  Held,  neverthe- 
less, that  the  design  was  not  patentable,  be- 
cause the  differences  did  not  rise  to  the  dig- 
nity of  invention.    *Id. 

6.  Where  it  is  held  that  the  device  disclosed 
does  not  constitute  proper  subject-matter  for 
a  design  patent,  the  examiner  should  reject 
the  claim  for  that  reason,  and  from  such 
action  appeal  lies  to  the  examiners-in-chief. 
Ex  parte  Adams,  C.  D.  1898,  84  O.  G.  311. 

II.  Appeal  and  Petition. 

7.  Where  a  petition  was  taken  to  the  com- 
missioner praying  that  the  examiner  be  ad- 
vised that  applicant's  article  can  be  protect- 
ed under  the  design  statute  and  that  the  said 
application  should  be  allowed  unless  the  design 
be  found  to  be  fully  anticipated,  Held,  that 
this  is  a  question  which  goes  to  the  merits  of 
the  case  and  is  appealable  to  the  examiners- 
in-chief.  Ex  parte  Groves,  C.  D.  1899,  89  O. 
G.  1671. 

8.  Where  the  commissioner  was  asked  by 
petition  to  advise  the  examiner  what  is  or  is 
not  a  competent  reference,  Held,  that  this  is  a 
question  not  to  be  settled  by  petition.  The 
examiner  in  the  first  instance  is  the  judge 
of  the  pertinency  of  the  reference  or  ground 
of  rejection.  The  commissioner  may  differ 
with  him,  and  when  the  case  comes  to  him  on 
appeal  he  may  properly  make  that  difference 
of  opinion  known ;  but  he  is  not  authorized 
in  an  irregular  way  to  coerce  the  independent 
judgment   of   the   examiner.      Id. 

9.  Where  it  was  prayed  that  the  examiner 
be  instructed  that  originality  and  utility  are 
proper  grounds  to  justify  the  grant  of  design 
patent   to  the  applicant.  Held,  that   this   is  a 


CROSS  REFERENCES. 


97 


question  of  merit  which  is  appealable  to  the 
examiners-in-chief   in   the   first  instance.     Id. 

10.  Where  an  applicant  claimed  a  design  for 
inner  and  outer  tubes  forming  the  fire-walls 
between  the  inner  and  outer  flame  of  a  hy-dro- 
carbon-burner,  and  the  examiner  required  him 
to  amend  his  case  to  set  up  a  single  definite 
article  of  manufacture  and  not  two  articles, 
on  petition  to  the  commissioner,  Held,  that 
the  question  presented  is  one  involving  the 
merits  of  the  claim  rather  than  its  form,  and 
that  therefore  it  is  not  reviewable  on  peti- 
tion. (Ex  parte  Brower,  4  O.  G.  450;  ex 
parte  Smith,  C.  D.  1807,  170,  81  O.  G.  969; 
ex  parte  Tallman,  C.  D.,  1898,  10,  82  O.  G. 
337;  ex  parte  Brand,  C.  D.  1898,  62,  83  O.  G. 
747,  and  ex  parte  Kapp,  C.  D.  1898,  108,  83 
O.  G.  1993,  modified.)  Ex  parte  Sherman  and 
Harms,  C.  D.  1899,  89  O.  G.  2067. 

11.  Where  an  applicant  asks  for  a  design 
patent  covering  a  certain  form  of  device,  the 
office  cannot  properly  refuse  to  act  upon  the 
merits  of  the  case  and  require  him  to  sub- 
stitute therefor  a  claim  to  some  other  article, 
as  to  do  so  would  deprive  him  of  the  statu- 
tory right  of  appeal  to  the  examiners-in- 
chief,  to  the  commissioner,  and  to  the  court 
of  appeals.    Id. 

12.  The  holding  that  two  or  more  elements 
covered  by  a  single  claim  should  be  divided 
is  in  effect  a  holding  that  such  claim  cannot 
be  allowed,  and  is  such  a  refusal  of  the  claim 
as  entitles  applicant  to  a  review  of  that  action 
by  the  several  tribunals  mentioned  in  the 
statutes,  since  it  is  based  upon  the  subject- 
matter  covered,  and  not  the  mere  form  of  the 
claim.    Id. 

13.  To  require  division  between  the  ele- 
ments covered  by  a  claim  of  the  kind  under 
consideration  is  analogous  to  requiring  divi- 
sion between  the  elements  covered  by  an  al- 
leged combination  claim  in  a  mechanical  ap- 
plication. It  has  been  repeatedly  held,  in  such 
cases  that,  although  the  claim  covers  a  mere 
aggregation  and  not  a  true  combination,  di- 
vision between  the  elements  covered  by  it 
should  not  be  insisted  upon,  but  the  claim 
should  be  rejected.     Id. 

14.  Held,  that  an  appeal  in  a  design  appli- 
cation should  not  be  forwarded  to  the  ex- 
aminers-in-chief until  all  formal  objections 
have  been  removed.  Ex  parte  Mygatt,  C.  D. 
1904,  111  O.  G.  2493. 

15.  Held,  that  the  requirement  for  the 
omission  of  the  reference-letters  from  the 
drawing  of  a  design  application  follows  from 

7 


the  requirement  for  the  cancelation  of  the 
descriptive  matter  wherein  these  reference- 
letters  are  used.  Ex  parte  Lloyd,  C.  D.  1904, 
112  O.  G.  251. 

16.  The  requirement  that  unnecessary  mat- 
ter be  canceled  from  the  drawing  and  specifi- 
cation of  a  design  case  is  a  mere  ruling  as 
to  the  form  of  the  application  and  is  not  ap- 
pealable to  the  examiners-in-chief.  Ex  parte 
Mygatt,  C.  D.  1903,  118  O.  G.  1685. 

17.  Where  an  applicant  for  a  design  patent 
presents  a  claim  and  the  patent  office  rules 
that  the  applicant  cannot  have  the  claims  pre- 
sented and  can  have  no  claim  but  a  suggested 
one.  Held,  that  such  ruling  is,  in  effect,  a  re- 
jection of  the  claim  presented  and  when  twice 
refused  is  appealable  to  the  examiners-in- 
chief  under  section  4909  of  Revised  Statutes. 
*In  re  Mygatt,  C.  D.  1906,  121  O.  G.  1670. 

18.  Held,  that  the  question  whether  the  de- 
scription in  a  design  case  is  a  proper  one  is 
not  reviewable  by  the  court  of  appeals  except 
in  an  extraordinary  case.    *Id. 

III.  Construction  of  Statutes. 

19.  The  purpose  of  congress  in  authorizing 
the  granting  of  patents  for  designs  was  to 
give  encouragement  to  the  decorative  arts.  It 
contemplated  not  so  much  utility  as  appear- 
ance. *Westinghouse  Electric  &  Mfg.  Co.  v. 
Triumph  Electric  Co.,  C.  D.   1900,  90  O.  G. 

603. 

20.  By  the  act  of  1870,  which  was  a  revi- 
sion as  well  as  an  amendment  of  the  patent 
laws,  the  word  "useful"  in  the  design  statute 
was  transferred  from  the  office  of  qualifying 
patterns  and  prints  to  that  of  qualifying 
shapes  or  configurations  of  matter,     d  Id. 

21.  The  term  "useful"  was  inserted  in  the 
design  statute  merely  out  of  abundant  cau- 
tion to  indicate  that  things  which  were  vicious 
and  had  a  tendency  to  corrupt,  and  in  this 
sense  were  not  useful,  were  not  to  be  covered 
by  the  statute,    d  Id. 

22.  The  word  "useful"  in  the  design  law 
has  reference  to  appearance  rather  than  to 
the  mechanical  function  of  the  device.  The 
design  must  not  be  vicious  or  have  a  tendency 
to  corrupt,  but  its  usefulness  resides  in  the 
pleasing  and  attractive  appearance  produced 
by  it.  (Wcstinghouse  Co.  v.  Triumph  Co.,  C 
D.  1900,  219,  90  O.  G.  C03,  97  Fed.  Rep.  99.) 
Ex  parte  Tournier,  C.  D.  1900,  90  O.  G.  1948. 

23.  Design  patents  refer  to  appearance,  not 
functional  utility,  and   their  object   is  to  en- 


98 


DAMAGES  AND  PROFITS,  I,  II,  (a),  (b).  III. 


courage  works  of  art  and  decoration  which 
appeal  to  the  eye,  to  the  esthetic  emotions,  to 
the  beautiful.  The  term  "useful"  in  relation 
to  designs  means  adaptation  to  producing 
pleasant  emotions,  d  Rowe  v.  Blodgett  & 
Clapp  Co.,  C.  D.  1902,  98  O.  G.  1286. 

24.  The  amendment  to  the  design  law  ap- 
proved May  9,  1902,  in  which  the  word  orna- 
mental was  substituted  for  the  word  "useful," 
did  not  change  the  meaning  of  the  law,  but 
expressed  clearly  what  was  by  construction 
already  included  in  the  prior  law.  Ex  parte 
Knothe,  C.  D.  1903,   102  O.  G.  1294. 

25.  The  design  law  was  intended  to  afford 
protection  to  the  inventors  of  new  ornamental 
effects  produced  in  articles  of  manufacture, 
the  selection  being  a  choice  from  considera- 
tions of  appearance  determined  by  the  taste 
of  the  inventor  seeking  new  and  attractive 
appearances.     Id. 

IV.  Limited  to  a  Si.nt.le  Invention  or  Modi- 
fication. 

26.  Modifications  of  designs  do  not  exist 
and  should  not  be  shown  and  described  in  one 
patent.  When  an  inventor  has  produced  a 
design,  he  has  produced  a  single  shape  or  con- 
figuration, not  several.  Ex  parte  Hill  and 
Renner,  C.  D.  1898,  82  O.  G.  1988. 

27.  If  an  applicant  be  of  the  opinion  that 
two  or  more  shapes  are  one  and  the  same 
design,  he  should  sliow  only  one  such  shape 
in  his  application,  leaving  the  courts  to  de- 
termine whether  the  other  shapes  are  the 
same  design  as  that  shown  in  his  patent  and 
whether  they  infringe  such  shape  or  design. 
(Ex  parte  Petzold,  C.  D.  1891,  97,  .5.5  O.  G. 
16.52,  and  ex  parte  Hess  and  Hess,  C.  D.  1891, 
142,  56  O.  G.  1334.)      Id. 

28.  The  requirement  of  the  examiner  that 
applicant  restrict  the  application  to  one  or 
the  other  design  for  castings  for  a  bedstead 
rail-joint  affirmed.  Ex  parte  Brand,  C.  D. 
1898,  83  O.  G.  747. 

29.  The  fact  that  two  articles  are  used  to- 
gether does  not  make  them,  when  so  used, 
constitute  a  unitary  design,  but  the  result  is 
merely  an  aggregation  of  the  two  designs. 
(Ex  parte  Patitz,  C.  D.  1883,  101,  25  O.  G. 
980 ;  ex  parte  Haggard,  C.  D.  1897,  47,  80  O.  G. 
1126.)     Id. 

30.  In  view  of  the  fact  that  the  parts  are 
specially  designed  for  detachment  it  cannot 
be  held  that  the  two  together  constitute  a  uni- 


tary design  merely  because  they  may  be  used 
together.    Id. 

31.  A  design  must  be  a  single  unchangeable 
article  of  manufacture  and  must  not  be  made 
up  of  independent  detachable  parts.     Id. 

32.  Words  or  phrases  referring  to  or  de- 
scribing preferred  forms  or  modifications  of 
designs  should  not  be  permitted  in  an  appli- 
cation for  a  design.  Modifications  of  designs 
do  not  exist,  and  applicants  should  restrict 
their  drawing  and  description  to  one  design. 
Ex  parte  Jenks,  C.  D.  1898,  83  O.  G.  1513. 

33.  Where  applicant  shows  and  describes  a 
pair  of  tongs  consisting  of  two  members  of 
the  same  shape  or  configuration  pivoted  to- 
gether, Held,  that  if  applicant  has  invented 
and  produced  anything  that  is  novel  it  is  not 
a  pair  of  tongs,  but  the  shape  or  configura- 
tion of  a  member  or  jaw  of  a  pair  of  tongs, 
and  the  description  and  claims  should  be  lim- 
ited accordingly.  Ex  parte  Kapp,  C.  D.  1898, 
83  O.  G.  1993. 

34.  Modifications  of  designs  do  not  exist, 
and  there  is  no  such  distinction  as  genus  and 
species  as  applied  to  design  patents.  (Ex  parte 
Eldon,  ante,  63,  83  O.  G.  748 ;  Ex  parte  Jenks, 
ante,  81,  83  O.  G.  1513.)  Ex  parte  Adams,  C. 
D.   1898,  83  O.  G.  1994. 

35.  On  petition  from  the  action  of  the  ex- 
aminer requiring  applicant  to  limit  the  title 
of  the  application — a  "design  for  banners, 
badges,  buttons,  and  other  decorative  devices 
and  display" — to  a  design  for  a  flag  or  ban- 
ner, the  thing  shown  and  described.  Held,  that 
applicant  should  confine  the  application  to 
what  he  has  produced  and  shown  and  de- 
scribed in  his  application,  leaving  to  the  courts 
the  question  as  to  whether  he  may  use  the 
design  on  any  other  article  than  a  banner  or 
flag  or  whether  any  other  party  using  it  on 
other  devices  would  infringe  his  design.  Ex 
parte  Amberg,  C.  D.  1898,  84  O.  G.  507. 

36.  On  petition  from  the  requirement  that 
applicant  remove  the  words  "Steady  Prog- 
ress" and  "Milwaukee"  from  the  description 
and  drawing  because  they  form  no  part  of 
the  design.  Held,  that  this  is  a  question  that 
affects  the  merits  of  the  design  and  should 
be  passed  upon  by  the  examiners-in-chief  be- 
fore it  is  brought  to  the  commissioner.     Id. 

37.  The  examiner  required  applicant  to 
limit  the  title  of  the  invention  and  the  descrip- 
tion and  claims  to  a  design  for  a  rug  or  car- 
pet instead  of  to  a  design  for  a  mat  or  rug. 
It  was  not  apparent  from  the  drawing  what 
was  intended  to  be  shown.    The  claims,  how- 


DEDICATION  OF  INVENTION  TO  PUBLIC  DESIGNS,  I. 


99 


ever,  were  drawn  to  cover  a  design  for  a  mat 
or  carpet.  Held,  that  applicant  should  hmit 
his  case  to  the  particular  thing  on  which  the 
design  has  been  produced,  whether  this  thing 
be  a  mat,  a  rug,  or  a  carpet,  leaving  the  courts 
to  decide  whether  these  things  are  equivalents 
or  whether  a  design  applied  to  one  would  be 
infringed  by  a  design  applied  to  either  one  of 
the  other  two.    Ex  parte  Hartman,  C.  D.  1S98, 

84  O.  G.  648. 

38.  Where  applicant's  design  was  a  pattern 
or  ornamentation  applied  to  an  article  of 
manufacture  and  was  not  a  shape  or  configu- 
ration of  the  article.  Held,  that  the  description 
should  be  limited  to  and  set  up  in  relation  to 
the  design  produced.     Id. 

39.  When  the  application  contained  three 
claims  covering  separately  the  design  for  the 
entire  bedstead,  the  headboard,  and  the  foot- 
board, Held,  that  the  applicant  was  properly 
required  to  limit  the  application  to  one  of 
those  claims.     Ex  parte  Wiessner,  C.  D.  1898, 

85  O.  G.  937. 

40.  Separate  claims  for  the  entire  design 
and  for  segregable  features  of  it  should  not 
be  permitted  in  one  application.    Id. 

41.  If  the  separate  claims  for  segregable 
features  cover  the  predominant  and  control- 
ling features  which  are  in  and  of  themselves 
suggestive  of  the  design  in  its  entirety,  they 
cover  in  effect  the  same  thing  as  a  claim  to 
the  entire  design  and  should  not  be  permitted 
in  the  same  application  with  the  claim  for  the 
entire  design.    Id. 

42.  The  monopoly  of  a  design  patent  is  con- 
fined to  the  particular  article  shown  and  de- 
scribed, and  the  sole  test  of  infringement  is 
the  similarity  in  appearance  of  the  infringing 
article,  therefore  to  allow  separate  claims  pur- 
porting to  set  forth  the  predominant  and  con- 
trolling features  which  would  be  suggestive 
of  the  design  in  its  entirety  would  be  for  this 
office  to  forestall  the  decision  of  the  courts 
as  to  what  would  be  regarded  as  an  infringe- 
ment and  is  not  proper  practice.     Id. 

43.  The  relation  of  genus  and  species  does 
not  exist  in  designs,  and  the  doctrine  of  com- 
bination and  subcombination  does  not  apply 
to  them.  In  comparing  two  designs  the  ques- 
tion is  always  one  of  indentity.  If  they  are 
not  in  appearance  the  same,  they  are  inde- 
pendent, since  one  cannot  be  subordinate  to 
the  other.     Id. 

44.  The  question  being  always  one  of  iden- 
tity, if  the  separate  claims  do  not  in  fact 
cover    the    predominant   and    controlling    fea- 


tures they  do  not  cover  the  same  entity  or  de- 
sign, but  cover  separate  and  distinct  designs 
which  may  properly  be  made  the  subject-mat- 
ter of  separate  design  patents.     Id. 

45.  The  only  apparent  reason  for  allowing 
claims  to  separate  parts  of  the  design  in  the 
same  application  with  a  claim  to  the  entire 
design  is  to  save  the  applicant  the  additional 
expense  and  trouble  of  filing  separate  appli- 
cations; but  if  one  part  is  permitted  to  be 
claimed  separately  it  follows  that  others  must 
also  be  permitted  and  there  would,  therefore, 
be  no  limit  to  the  number  of  separate  designs 
which  could  be  covered  by  one  patent.     Id. 

46.  There  being  no  such  correlation  and 
dependence  between  two  designs  as  sometimes 
exists  between  mechanical  inventions  there  is 
not  the  same  reason  for  permitting  two  of 
them  to  be  claimed  in  one  application.     Id. 

47.  The  public  is  not  learned  in  patent  law, 
but  judges  of  the  design  as  a  whole  without 
dissecting  or  analyzing  it,  and  to  permit  claims 
for  parts  that  belong  to  details  which  possess 
no  distinct  and  visible  resemblance  to  and 
create  in  the  mind  no  impression  of  the  whole 
design  would  be  to  set  traps  for  the  unskilled 
and  unwary.  This  is  against  public  interest 
and  should  not  be  permitted.  (Ex  parte 
Gerard,  C.  D.  1888,  37,  43  O.  G.  1235.)     Id. 

48.  Although  the  courts  may  not  regard  the 
joinder  of  claims  to  two  designs  in  one  pat- 
ent as  invalidating  the  patent,  but  may  sus- 
tain each  separately  as  if  covered  by  a  separate 
patent,  it  does  not  follow  that  it  is  the  duty  of 
the  office  to  allow  patents  in  that  form.    Id. 

49.  There  is  no  such  distinction  of  generic 
and  specific  in  design  patents  as  there  is  in 
mechanical  patents.  If  an  inventor  has  a 
generic  designs  capable  of  modification — that 
is,  a  design  made  up  of  a  small  number  of 
simple  elements  to  which  other  elements  may 
be  added  without  modification  of  the  essen- 
tial elements — he  should,  in  order  to  secure 
protection  for  the  generic  design,  show  the 
design  in  his  application  in  its  simplest  form. 
He  must  show  the  genus  stripped  of  additions. 
Feder  v.  Poyet,  C.  D.  1899,  89  O.  G.  1343. 

50.  Section  4929  of  the  Revised  Statutes, 
relating  to  patents  for  designs,  requires  that 
the  patent  shall  be  limited  to  a  single  design 
for  an  article  of  manufacture.  Ex  parte 
Schraubstadter,  C.  D.  1904,  110  O.  G.  201.5. 

51.  The  doctrine  of  genus  and  species  does 
not  apply  to  design  cases,  and  modifications 
of  a  desigii  do  not  exist.    Id. 


100 


DESIGNS,  II. 


52.  There  can  be  no  such  thing  as  generic 
and  specific  claims  in  design  cases,  and  in  all 
cases  the  examination  and  action  relate  to 
the  article  in  its  entirety.  E.\  parte  Kurz,  C. 
D.  1901,  113  O.  G.  221.). 

53.  It  is  well  settled  that  a  design  patent 
can  be  granted  only  upon  a  single  shape  or 
configuration,  and  not  upon  several,  and  that 
there  is  no  such  distinction  between  generic 
and  specific  design  patents  as  is  recognized 
in  mechanical  patents.  Ex  parte  Litic,  Jr.,  C. 
D.  1910,  160  O.  G.  1272. 

V.  Patentable  Subject  Matter. 
(a)  1)1  General. 

54.  The  holding  of  the  examiner  that  the 
device  docs  not  cover  proper  subject-matter 
for  a  design  patent  because  made  up  of  mov- 
able parts  relates  to  the  merits  and  is  appeal- 
able to  the  examincrs-in-chief.  (Ex  parte 
Sherman  and  Harms,  C.  D.  1899,  240,  89  O.  G. 
2067.)  Ex  parte  Hale,  C.  D.  1900,  92  O.  G. 
1137. 

55.  Where  there  is  nothing  attractive  about 
the  appearance  of  a  design  and  its  shape  does 
not  appeal  in  any  way  to  the  eye  or  serve  to 
commend  the  article  to  purchasers,  except  to 
indicate  that  it  is  the  product  of  the  patentee. 
Held,  that  it  is  not  patentable.  Designs  can- 
not be  considered  as  trade-marks,  d  Rowe  v. 
Blodgett  &  Clapp  Co.,  C.  D.  1902,  98  O.  G. 
1286. 

5G.  The  subject-matter  of  a  design  applica- 
tion relates  to  the  appearance  of  the  article 
and  not  to  its  mechanical  function.  It  is  im- 
material in  what  manner  the  invention  is  de- 
scribed in  such  an  application  or  what  the 
showing  is,  the  subject-matter  still  relates  to 
a  design.  Ex  parte  Waterman,  C.  D.  1902,  100 
O.  G.  233. 

57.  A  jar  or  can  of  ordinary  form  having  a 
novel  tapering  mouth  constructed  to  receive 
and  hold  the  cap  which  closes  it.  Held,  not 
proper  subject-matter  for  a  design  patent. 
Wright  V.  Lorenz,  C.  D.  1902,  101  O.  G.  664. 

(b)   Machines. 

58.  A  can-opener  provided  with  what  was 
described  in  the  application  as  a  "blade-hold- 
er," which  could  he  moved  along  an  opening 
in  the  body,  cannot  be  patented  as  a  design. 
The  design  law  was  never  intended  to  apply 
to    structures    having    movable    parts.        (Ex 


parte  Smith,   C.   D.   1897,   170,  81   O.  G.  969.) 
Ex  parte  Tallman,  C.  D.  1898,  82  O.  G.  337. 

59.  The  effect  of  a  movable  part  in  a  struc- 
ture which  is  the  subject  of  a  design  patent 
is  to  change  the  form  or  contour  of  the  struc- 
ture as  the  part  is  shifted.    Id. 

60.  The  several  articles  of  manufacture  of 
peculiar  shape  which  when  combined  pro- 
duce a  machine  or  structure  having  movable 
parts  may  each  separately  be  patented  as  a  de- 
sign ;  but  the  machine  itself  cannot  be  so  pat- 
ented. Ex  parte  Adams,  C.  D.  1898,  84  O. 
G.  311. 

61.  The  word  "useful"  placed  in  section 
4929  of  the  Revised  Statutes  by  amendment 
leaves  no  room  for  doubt  of  the  fact  that 
articles  intended  for  mechanical  use  can  prop- 
erly be  made  the  subjects  of  design  patents. 
Ex  parte  Steck,  C.  D.  1902,  98  O.  G.  228. 

62.  An  article  of  manufacture  designed  pri- 
marily for  the  performance  of  a  mechanical 
function  and  not  for  the  purpose  of  beauty 
may  please  the  taste  better  than  those  that 
have  gone  before  it,  or  it  may  not;  but  this  is 
not  controlling  so  long  as  the  shape  is  new 
and  is  the  result  of  inventive  thought.     Id. 

63.  Functional  utility  cannot  be  given  the 
same  consideration  and  effect  in  design  cases 
as  in  mechanical,  since  designs  are  judged  by 
their  appearance,  whereas  mechanical  inven- 
tions are  judged  by  the  functions  performed. 
In  a  design  there  must  be  novelty  in  appear- 
ance whether  or  not  new  functions  are  per- 
formed.    Id. 

64.  Under  the  express  provisions  of  the 
statute  a  design  patent  is  limited  to  "an  arti- 
cle of  manufacture,"  and  there  is  no  warrant 
in  the  law  for  granting  such  a  patent  upon 
a  machine  whose  parts  bear  certain  functional 
relations  to  each  other.    Id. 

65.  Aside  from  the  express  provision  of 
law  a  machine  made  up  of  movable  parts 
whose  change  in  position  changes  the  appear- 
ance of  the  device  could  not  be  patented  as  a 
design,  because  the  subject-matter  of  the  pat- 
ent would  not  be  definite  and  certain.     Id. 

66.  In  the  case  of  a  single  article  of  manu- 
facture there  may  be  some  relative  movement 
of  the  parts  without  changing  the  appearance 
of  the  article  or  taking  it  outside  of  the  de- 
sign law ;  but  nothing  which  amounts  to  a 
machine  can  come  within  the  law  whether  or 
not  the  motion  of  the  parts  materially  change.'! 
the  appearance  of  the  device  as  a  whole.     Id. 

67.  A  frame  of  a  water-tower  for  the  use 
of   fire   departments   consisting  of  the   frame 


DESIGNS,  III,  IV. 


101 


proper  and  a  hose-support  hinged  or  pivoted 
to  it  and  adapted  to  be  raised  to  a  vertical 
position,  Held,  to  constitute  a  machine  which 
is  not  patentable  as  a  design.     Id. 

VI.  Patentability  and  Invkntion. 
(a)  In  General. 

68.  It  is  not  a  valid  objection  to  a  design 
patent  that  some  of  the  constituents  of  the 
design  claimed  had  existed  in  the  prior  art. 
Old  figures  may  by  rearrangement  or  by  be- 
ing combined  with  new  parts  produce  a  novel 
effect,  c  Byram  v.  Friedberger,  C.  D.  1898, 
82  O.  G.  1420. 

69-  Originality  and  the  exercise  of  the  in- 
ventive faculty  are  as  essential  to  the  validity 
of  a  design  patent  as  a  mechanical  patent. 
(/Gary  Manufacturing  Company  v.  Neal  et  al., 
C.  D.  1900,  90  O.  G.  1930. 

70.  An  article  of  manufacture  is  not  pat- 
entable as  a  design  merely  because  there  is 
something  new  about  its  shape  so  that  it  can 
be  distinguished  from  other  articles.  Wright 
V.  Lorenz,  C.  D.  1902,  101  O.  G.  664. 

71.  The  design  law  is  not  to  encourage  mere 
changes  in  shape,  but  is  to  encourage  the  art 
of  decoration.  There  must  be  something  or- 
namental or  beautiful  about  the  design  to  en- 
title it  to  protection.  It  must  appeal  to  the 
esthetic  emotions.     Id. 

72.  A  design  for  a  belt-buckle  having  the 
corners  of  the  frame  and  the  tongue  made 
with  sharp  instead  of  rounded  edges.  Held, 
lacking  in  invention  and  not  patentable.  Ex 
parte  Knothe,  C.  D.  1903,  102  O.  G.  1294. 

73.  A  design  is  not  patentable  merely  be- 
cause it  can  be  distinguished  in  appearance 
from  prior  designs,  since  to  be  patentable  its 
creation  must  involve  an  exercise  of  the  in- 
ventive faculty.  Designs  are  not  protected 
on  the  theory  that  they  are  trade-marks.    Id. 

74.  The  doctrine  of  double  use  applies  to 
designs  as  well  as  mechanical  inventions  and 
has  an  even  wider  application  and  is  not  lim- 
ited to  the  selection  of  devices  in  the  same  or 
analogous  mechanical  arts,  since  relating  sole- 
ly to  shape  or  appearance  the  mechanic  in  pro- 
ducing a  design  may  avail  himself  of  old 
shapes  wherever  they  are  found  and  for  what- 
ever purpose  they  were  before  used.     Id. 

75.  A  design  for  a  shade-roller  provided 
with  a  ferrule  upon  its  end  having  a  groove 
around  the  circumference,  Held,  not  patent- 
ably  novel  in  view  of  a  shade-roller  in  which 


the  ferrule  is  secured  by  two  indentations  and 
in  view  of  a  ferrule  secured  to  a  handle  by 
forcing  the  lip  or  edge  into  a  groove  in  the 
handle.  Ex  parte  Hartshorn,  C.  D.  1903,  104 
O.  G.  139.5. 

76.  Designs  belong  to  the  fine  arts,  and  to 
be  patentable  it  is  as  essential  that  they  should 
be  products  of  inventive  genius  as  it  is  for 
inventions  possessing  mechanical  utility.     Id. 

77.  The  form  of  an  article  even  if  new 
does  not  entitle  it  to  design  protection  unless 
it  is  ornamental  and  produces  admiration  in 
its  contemplation.     Id. 

78.  The  function  of  the  design  to  be  pro- 
tected by  patent  is  to  appeal  to  the  esthetic 
taste  and  to  produce  pleasure  in  its  contem- 
plation.    Id. 

79.  Where  the  machine-bed  claimed  in  a 
design  application  differs  from  prior  beds,  but 
consists  of  old  parts  assembled  from  prior  de- 
vices. Held,  that  the  difference  in  form  would 
suggest  itself  to  any  workman  and  does  not 
involve  the  exercise  of  inventive  genius.  Ex 
parte  Hanson,  C.  D.  1903,  103  O.  G.  2038. 

80.  It  is  as  necessary  that  invention  should 
be  exercised  in  producing  the  subject-matter 
to  be  secured  by  a  design  patent  as  it  is  in  the 
production  of  the  subject-matter  of  a  mechan- 
ical patent.  The  creation  of  the  subject-matter 
must  involve  an  exercise  of  the  constructive 
imagination  beyond  that  which  may  be  expect- 
ed to  be  usually  employed  by  any  competent 
workman.  Ex  parte  Kern,  C.  D.  1903,  103  O. 
G.  2061. 

81.  Held,  that  the  appellant's  design  for  a 
hose-supporter  is  lacking  in  patentable  novelty 
in  view  of  his  own  prior  patent  and  also  in 
view  of  patents  granted  to  others  upon  de- 
vices differing  from  the  appelant's  only  in 
mechanical  details.  *In  re  Freeman,  C.  D. 
1904,  109  O.  G.  1339. 

82.  The  change  or  omission  or  addition  of 
a  few  minor  details  would  not  justify  the  mul- 
tiplication of  design  patents  even  though  the 
designs  may  readily  be  distinguished  from 
each  other  by  one  or  more  features.  Substan- 
tial differences  are  required  to  render  one  de- 
vice patentable  over  another  as  a  design.    *Id. 

83.  The  novelty  of  a  design  must  be  judged 
by  the  test  of  ornament,  and  while  the  final 
merit  of  ornamentation  may  depend  upon  the 
harmonious  blending  of  small  details  me- 
chanical differences  which  may  make  a  vast 
difference  in  the  operativeness  of  the  devices 
may  make  no  appreciable  difference  between 
the  devices  as  designs.    ♦Id. 


102 


DESIGNS,  IV. 


84.  The  test  of  patentable  novelty  in  the 
case  of  mechanical  inventions  and  in  the  case 
of  designs  is  different,  owing  to  the  different 
nature  of  the  two  things.  Detail  is  of  little 
consequence  in  designs,  and  it  may  be  all  im- 
portant in  mechanical  inventions.     *Id. 

85.  Where  the  applicant's  design  is  for  a 
font  of  Gothic  letters  characterized  by  minute 
ceriphs  and  Gothic  letters  are  shown  in  one 
reference  and  minute  ceriphs  upon  letters  sim- 
ilar to  the  Gothic  in  another  reference.  Held, 
no  invention  is  involved  in  placing  ceriphs 
upon  the  letters  of  the  first  reference  in  the 
same  manner  in  which  they  have  been  pre- 
viously applied  to  somewhat  similar  letters  in 
the  second  reference.  Ex  parte  Barnhart,  C. 
D.  190.'),  115  O.  G.  247. 

86.  In  affirming  the  rejection  of  a  design 
for  Gothic  letters  provided  with  minute 
ceriphs  upon  two  references,  one  showing  the 
Gothic  letters  and  the  other  showing  minute 
ceriphs  upon  letters  somewhat  similar  to 
Gothic,  Held,  that  the  ground  of  rejection 
here  is  not  aggregation,  but  lack  of  invention, 
by  reason  of  the  mere  obviousness  of  the 
changes  relied  upon  to  distinguish  over  prior 
designs.     Id. 

87.  Differences  upon  which  a  design  patent 
is  granted  must  involve  invention  and  be  di- 
rected to  the  ornamentation  of  the  device  to 
which  applied,  and  the  officer  or  tribunal  au- 
thorizing the  issue  of  the  patent  must  be  sat- 
isfied upon  both  of  these  points.  Ex  parte 
Schmohl,  C.  D.  190.J,  US  O.  G.  50,'>. 

88.  There  can  be  no  invention  in  the  appli- 
cation of  an  irregular  outline  to  letters  of 
one  style  when  this  has  already  been  done 
upon  letters  of  style  not  widely  different  un- 
less some  new  effect  of  ornamentation  is  se- 
cured.    Id. 

89.  Where  the  forms  of  certain  letters  in 
the  applicant's  font  differ  from  those  of  the 
reference  and  these  differences  are  easily  ob- 
servable and  might  alone  enable  the  fonts  to 
be  distinguished,  but  produce  no  variation  of 
the  ornamental  effect,  Held,  that  said  differ- 
ence.s  are  immaterial  to  the  patentability  of 
the  design.    Id. 

90.  Where  an  old  device  of  ornamentation 
has  been  used  in  an  old  way  and  the  orna- 
mental effect  of  such  use  is  the  same  as  that 
secured  in  the  prior  use  of  said  device,  Held, 
that  the  design  produced  is  not  the  result  of 
an  inventive  act.  Ex  parte  Schraubstadter,  C. 
D.  1905,  116  O.  G.  1185. 


91.  That  the  exercise  of  invention  is  re- 
((uircd  in  the  production  of  patentable  designs 
is  well  settled.     (Cases  cited.)     Id. 

92.  Where  the  essential  characteristics  of 
the  letters  of  the  font  are  found  in  the  pro- 
portions of  their  parts  and  in  the  waved  out- 
line thereof  and  the  proportions  of  the  parts 
are  not  substantially  novel  and  the  waved  out- 
line has  been  previously  applied  to  letters  not 
of  widely  different  style  and  proportions  from 
those  of  the  applicant.  Held,  that  the  appli- 
cant has  merely  made  an  adaptation  of  the 
waved  outline,  which  does  not  amount  to  in- 
vention.   Id. 

93.  Where  a  font  presents  peculiarities  in 
some  of  the  letters,  but  these  peculiarities  do 
not  bear  such  relation  to  the  font  as  a  whole 
as  might  distinguish  novelty  and  invention  in 
the  font,  even  though  such  qualities  could  be 
predicated  upon  these  peculiarities  for  the 
individual  letters  in  which  they  appear,  and 
the  letters  display  no  common  or  pervading 
characteristic  which  might  appeal  either  to  the 
ordinary  observer  or  to  the  trained  expert  as 
new  and  ornamental.  Held,  that  the  font  is  not 
patentable.    Id. 

94.  A  design  for  collapsible  tubes  differing 
from  a  patented  tube  merely  in  that  the  bot- 
tom is  rounded  instead  of  flat  and  there  is  a 
bead  near  the  top  contains  no  patentable  nov- 
elty. While  the  tubes  may  be  distinguished 
in  appearance,  no  invention  was  required  to 
make  the  changes.  Ex  parte  Lambert,  C.  D. 
1905,  119  O.  G.  1425. 

95.  Where  peculiarities  in  the  applicant's 
design  were  such  as  to  prevent  that  design 
from  being  regarded  in  the  trade  as  a  substi- 
tute for  the  design  shown  by  the  references. 
Held,  that  the  applicants'  design  was  never- 
theless not  patentable,  because  such  peculiari- 
ties did  not  rise  to  the  dignity  of  invention. 
In  re  Schraubstadter,  C.  D.  1900,  120  O.  G. 
1107. 

96.  Where  the  applicant's  design  was  for  a 
font  of  type  in  which  the  letters  had  a  waved 
outline.  Held,  that  aside  from  the  waved  out- 
line the  letters  seemed  to  be  of  a  very  ordi- 
nary style  and  that  to  add  a  waved  outline, 
which  was  old,  to  common  forms  of  letters 
did  not  involve  invention.     *Id. 

97.  A  design  patent  for  an  article  will  be 
granted  only  when  there  can  be  found  in  such 
article  a  new  appearance  created  by  inventive 
process  which  serves  the  purpose  of  embel- 
lishment. It  is  not  enough  that  the  design 
should  possess   features  of  utilitarian  attrac- 


DESIGNS,  VI,    (b). 


103 


tiveness  which  would  commend  it  to  persons 
familiar  with  the  art  because  of  its  functional 
value;  it  must  possess  an  inherent  beauty.  Ex 
parte  Bettendorf,  C.  D.  1907,  127  O.  G.  848. 

98.  Where,  as  in  the  art  of  printing,  the 
field  of  inventive  design  is  limited  to  modifi- 
cations of  detail  in  predetermined  forms  of 
letters,  and  an  inventor  has  succeeded  in  pro- 
ducing a  new  font  having  clearly  distinguish- 
ing characteristics  running  through  the  whole, 
and  the  esthetic  value  of  his  production  is 
confirmed  by  an  extensive  demand  for  the 
same,  it  is  believed  that  he  should  be  granted 
the  right  to  a  lawful  monopoly  of  the  results 
of  his  labor  for  the  limited  time  provided  by 
the  design  statutes.  Ex  parte  Smith  C.  D. 
1907,  130  O.  G.  1688. 

(b)  Function   or  Mechanical  Utility. 

99.  The  utility  of  a  design  invention  for  the 
performance  of  a  me'chanical  function  is  not 
of  the  essence  of  the  invention,  since  two  arti- 
cles may  clearly  so  different  in  shape  as  to 
properly  constitute  subject-matter  for  two 
separate  design  patents,  although  they  per- 
form the  same  mechanical  function  in  exactly 
the  same  way;  and  two  articles  may  be  so 
nearly  alike  as  to  constitute  the  same  design, 
but  may  at  the  same  time  perform  entirely 
different  mechanical  functions.  Id.  Ex  parte 
Tournier,  C.  D.  1900,  90  O.  G.  1948. 

100.  The  only  purpose  of  experimental  use 
of  mechanical  inventions  is  to  determine 
whether  or  not  the  device  is  so  constructed 
as  to  satisfactorily  perform  the  mechanical 
functions  intended ;  but  since  the  mechanical 
function  of  the  device  forms  no  part  of  a  de- 
sign invention  experimental  use  of  a  design 
is  not  necessary.    Id. 

101.  In  addition  to  the  mere  esthetical  or 
artistic  effect  of  the  design  upon  the  senses 
of  the  spectator  the  element  of  functional 
utility  may  be  considered  in  determining  the 
question  of  patentability ;  but  the  functional 
utility  is  not  to  be  regarded  as  a  controlling  or 
even  as  an  essential  element  in  a  patent  for 
a  design.  *In  re  Tournier,  C.  D.  1901,  94  O. 
G.  2106. 

102.  A  tapering  mouth  to  a  jar  made  in  a 
peculiar  way  to  receive  the  cover  is  not  an 
ornament  giving  to  the  article  an  attractive 
appearance,  but  is  merely  a  mechanical  con- 
struction to  perform  a  mechanical  function. 
Wright  V.  Lorenz,  C.  D.  1902,  191  O.  G.  664. 


103.  Design  Patent  No.  26,587,  granted  Feb- 
ruary 2,  1897,  to  Allen  H.  Rowe  for  a  horse- 
shoe-calk. Held,  invalid  because  the  shape  of 
the  device  was  designed  merely  to  enhance  its 
mechanical  utility  and  not  for  the  purpose  of 
display  or  ornament,  d  Rowe  v.  Blodgett  & 
Clapp,  C.  D.  1902,  98  O.  G.   1286. 

104.  The  new  appearance  which  entitles  a 
party  to  a  design  patent  may  be  superficially 
applied  or  it  may  rest  more  or  less  deeply  in 
the  structure  of  the  parts;  but  it  must  be  a 
creation  of  inventive  genius  accomplishing  the 
purpose  of  ornament  and  not  used  for  its 
functional  value.  Ex  parte  Knothe,  C.  D. 
190:i,   102   O.   G.   1294. 

105.  A  patentable  design  will  be  found 
weighed  and  valued  by  the  test  of  ornament 
and  it  will  not  be  found  in  those  articles 
whose  visible  forms  are  only  modeled  to  de- 
velop function.    Id. 

106.  The  design  law  does  not  concern  itself 
with  the  functional  value  of  the  elements 
which  may  be  in  sight,  and  it  is  not  the  exhi- 
bition of  elements  contributing  to  function, 
however  new,  which  was  intended  to  be  pro- 
tected as  a  design.    Id. 

107.  Forms  modeled  only  to  develop  func- 
tion may  receive  protection  under  section 
4886,  Revised  Statutes,  if  they  are  function- 
ally distinguishable  from  other  existing  forms, 
and  when  they  cannot  stand  this  test  they  are 
not  worthy  of  the  protection  of  the  patent 
law,  but  are  mere  changed  forms  changed  for 
no  useful  purpose.     Id. 

108.  Changed  forms  which  do  not  produce 
ornamental  effects  and  which  develop  no  new 
functions  do  not  promote  the  progress  of  the 
useful  arts  and  are  outside  of  the  constitu- 
tional power  of  congress  to  afford  protection 
to  them.     Id. 

109.  A  shade-roller  provided  with  a  ferrule 
held  in  place  by  a  circumferential  indentation. 
Held,  to  have  been  created  for  the  accomplish- 
ment of  a  mechanical  result  and  not  as  an  or- 
nament and  therefore  to  be  not  patentable  as 
a  design.  Ex  parte  Hartshorn,  C.  D.  190:?, 
104  O.  G.  1395. 

110.  A  design  may  properly  be  placed  upon 
a  device  having  mechanical  utility,  but  the  de- 
sign itself  is  not  founded  upon  that  utility. 
It  has  its  mechanical  utility  irrespective  of 
the  fact  that  it  is  embellished  with  a  design. 
Id. 

111.  A  design  for  a  hose-supporter  shown. 
Held,  unpatentable,  since  the  construction  is 
one  of  mechanical  utilitv  where  the  elements 


104 


DESIGNS,  VI,  (c),  VII. 


were  adopted  for  their  functional  value  and 
which  has  in  it  no  result  of  the  constructive 
imagination  ornamental  in  its  nature.  Ex 
parte  Freeman,  C.  D.  1903,  104  O.  G.  1396. 

112.  Any  peculiarity  of  appearance  due  to  a 
configuration  created  and  employed  for  the 
performance  of  a  mechanical  result,  such  as 
to  make  the  article  tit  the  place  where  it  is  to 
be  used,  must  be  eliminated  from  considera- 
tion in  determining  whether  the  article  con- 
stitutes an  ornamental  design  patentable  under 
the  design  law.  Ex  parte  Kern,  C.  D.  1903, 
105  O.  G.  2061. 

113.  Where  the  external  configuration  of 
an  article  was  adopted  simply  for  the  per- 
formance of  a  mechanical  function  and  the 
ornamental  design  placed  upon  the  central 
portion  of  it  was  old  in  other  devices,  Held, 
that  no  invention  was  involved  in  placing  the 
ornamental  design  upon  the  particular  article. 
Id. 

114.  Where  a  standard  old  in  another  art 
was  adopted  as  a  telephone  desk-standard  and 
there  was  added  to  it  an  arm  for  supporting 
the  telephone-receiver  and  such  changes  were 
made  as  to  adapt  it  to  its  new  use,  Held,  that 
the  changes  were  not  for  the  purpose  of  orna- 
ment, but  to  perform  the  mechanical  functions 
desired,  and  that  therefore  they  do  not  make 
the  device  patentable  as  a  design.  Ex  parte 
Nickel  and  Crane,  C.  D.  1904,  109  O.  G.  2441. 

115.  Where  the  changes  in  an  old  device  do 
not  and  were  not  intended  to  increase  the 
beauty  of  the  device,  but  merely  to  adapt  it 
to  perform  new  functions  when  used  for  a 
new  purpose,  Held,  that  if  there  is  invention 
present  meriting  patent  protection  it  is  a 
mechanical  invention  and  not  a  design  inven- 
tion.   Id. 

116.  A  design  cannot  be  made  the  subject 
of  a  second  patent  merely  because  it  has  been 
put  to  a  new  use,  since  the  question  of  use 
does  not  enter  into  consideration  in  designs. 
They  relate  solely  to  the  matter  of  appear- 
ance.   Id. 

117.  Where  in  designing  a  lamp  the  parts 
performing  mechanical  functions  are  changed 
in  form,  yet  these  changes  are  made  not  for 
the  purpose  of  obtaining  new  or  modified  func- 
tions, but  solely  for  the  purpose  of  obtaining 
a  new  and  ornamental  appearance,  and  it  ap- 
pears that  the  changes  in  appearance  are  not 
obvious,  but  were  the  result  of  the  exercise  of 
ingenuity,  rising  above  that  of  the  ordinary 
mechanic.    Held,    that    the    patent    should    be 


granted    for    a   new    and   useful    design.     Ex 
parte  Gray,  C.  D.  190,i,  114  O.  G.  543. 

118.  The  possession  of  features  having  cer- 
tain mechanical  advantages.  Held,  to  have  no 
bearing  upon  the  question  of  the  patentability 
of  a  design.  Ex  parte  Sherman,  C.  D.  1909, 
147  O.  G.  237. 

119.  In  considering  the  question  of  the  pat- 
entability of  a  design  utility  may,  in  a  close 
case,  be  given  some  consideration ;  but  the 
real  question  is  whether  there  is  such  original- 
ity shown  as  to  call  for  the  exercise  of  the 
inventive  faculty.  *In  re  Sherman,  C.  D. 
1010,   ]-,4  O.  G.  839. 

120.  A  design  which  is  distinguished  from 
the  prior  art  only  by  features  of  mechanical 
utility,  Held,  not  patentable.  Ex  parte  John- 
son, C.  D.  1910,  159  O.  G.  992. 

(c)  Effect  on  Ordinary  Observer. 

121.  Held,  that  the  conclusion  of  the  court 
in  Gorham  Co.  v.  White  (2  O.  G.  592,  14  Wall. 
511),  was  that  the  novelty  of  the  design  was 
to  be  determined  and  infringement  decided  by 
the  comparative  appearance  of  the  designs  in 
the  eyes  of  average  observers  and  was  not  to 
be  determined  by  such  appearance  to  the  eyes 
of  experts.  In  re  Schraubstadter,  C.  D.  1900, 
120  O.  G.  1167. 

122.  Where  contention  was  made  that  it  is 
impracticable  for  the  patent  offce  to  pass  on 
esthetic  values  and  that  the  proper  estimation 
of  the  applicant's  design  required  cultivated 
taste.  Held,  that  the  statutes  as  construed  by 
the  courts  intend  that  the  patentability  of  de- 
signs shall  be  determined  by  their  appeal  to 
the  eye  of  the  ordinary  man.    *Id. 

VII.  Infringement. 

123.  Letters  Patent  No.  26,533,  granted  Jan- 
uary 12,  1897,  to  Jacob  Frank,  for  a  design 
for  a  cap,  consisting  of  a  succession  of  dia- 
mond-shaped figures  encircling  the  rim  of  the 
cap,  together  with  a  single  rosette  attached  to 
the  rim  at  a  point  between  two  of  the  dia- 
mond-shaped figures,  is  not  infringed  by  a 
cap  having  a  different  style  of  rosette  and 
on  the  rim  rhombus-shaped  figures  which 
when  held  in  a  sloping  position  appear  to  be 
diamond-shaped,  the  general  effect  of  the  two 
designs  being  different,  c  Frank  et  al.  v. 
Hess  et  al.,  C.  D.  1898,  82  O.  G.  1566. 

124.  The  monopoly  covered  by  a  design  pat- 
ent must  be  confined  to  the  particular  design 
shown  and  described.     Id. 


DESIGNS,  VIII,  IX. 


105 


125.  In  considering  the  question  of  infringe- 
ment of  a  design  patent  the  method  of  pro- 
duction is  irrelevant.  The  subject  for  con- 
sideration is  not  the  process  of  creation,  but 
the  effect  produced  upon  the  eye  by  the  things 
created.  If  there  be  such  resemblance  be- 
tween them  as  to  deceive  a  purchaser,  induc- 
ing him  or  her  to  purchase  the  one  supposing 
it  to  be  the  other,  the  one  which  is  patented 
is  infringed  by  the  later  one.  It  is,  however, 
always  to  be  borne  in  mind  in  applying  this 
criterion  that  the  purchaser  referred  to  is  one 
who,  in  fact,  does  give  some  attention  to  de- 
sign, and  that  the  character  of  the  design  and 
of  the  fabrics  to  which  it  is  related  and  the 
extent  of  discriminative  examination  likely  to 
be  made  by  the  purchasers  thereof  are  to  be 
taken  into  account,  c  Byram  v.  Freidberger, 
C.  D.  1898,  82  O.  G.  1420. 

VIII.  Claims. 

126.  Where  a  claim  was  for  "a  design  for 
ornament  for  the  handle  of  a  tooth-brush," 
etc.,  and  the  examiner  required  that  the  inven- 
tion should  be  claimed  as  "a  design  for  the 
handle  of  a  tooth-brush,"  etc..  Held,  that  the 
examiner's  requirement  should  be  sustained, 
as  such  an  ornament  is  an  intangible  thing 
which  should  not  under  the  circumstances  and 
decisions  be  patented  as  a  design,  but  the  de- 
sign patent  should  be  granted  for  the  instru- 
ment which  applicant  has  invented  and  pro- 
duced. Ex  parte  Hewitson,  C.  D.  1899,  87  O. 
G.  315. 

127.  Held,  further,  that  although  applicant's 
design  is  produced  by  ornamentation  instead 
of  by  shape  there  is  no  more  reason  why  it 
should  be  claimed  as  a  design  for  an  orna- 
ment than  that  a  design  consisting  of  the  shape 
of  an  article  or  a  design  for  a  pattern  for 
carpet  should  be  claimed  as  a  design  for  the 
shape  or  pattern  instead  of  as  a  design  for  the 
article  shaped  or  a  design  for  the  carpet.    Id. 

128.  If  through  ignorance  or  mistake  an 
applicant  claims  in  a  design  application  sub- 
ject-matter for  which  a  design  patent  cannot 
under  the  statutes  be  granted,  the  claims 
must  be  rejected.  (Ex  parte  Proudfit,  C.  D. 
1876,  202,  10  O.  G.  585.)  Ex  parte  Waterman, 
C.  D.  1902,  100  O.  G.  233. 

129.  In  design  cases  the  question  of  patent- 
able novelty  relates  to  the  design  in  its  en- 
tirety without  regard  to  the  form  of  the 
claim,  and  therefore  a  change  in  the  claim  by 
amendment  cannot  delay  fmal  action  upon  the 


merits  of  the  case.    P^x  parte  Kurz,  C.  D.  1904, 
113  O.  G.  2215. 

130.  The  claim  in  a  design  case  should  be 
to  the  single  article  shown  and  should  not 
refer  to  that  article  in  the  plural,  thus  indica- 
ting that  the  claim  is  to  other  things  besides 
what  is  shown.  Ex  parte  Remington,  C.  D. 
1905,  114  O.  G.  761. 

131.  Where  the  claim  in  a  design  case  is 
for  the  "design  and  form"  shown.  Held,  that 
the  words  "and  form"  should  be  canceled.  Ex 
parte  Kahn,  C.  D.  1903,  110  O.  G.  2008. 

132.  In  design  cases  the  claim  covers  merely 
the  design  which  the  applicant  discloses,  and 
any  attempt  to  vary  the  scope  of  the  claim 
by  the  words  used  is  objectionable,  since  it  is 
likely  to  confuse  the  public.    Id. 

133.  The  preamble  to  the  claim  in  a  design 
case  should  be  restricted  to  the  words  "I 
claim."  Superfluous  words  should  be  omitted. 
Ex  parte  Weihman,  C.  D.  1903,  118  O.  G. 
2252. 

134.  Where  the  specification  of  a  design  ap- 
plication contains  a  description  of  certain  fea- 
tures of  the  design.  Held,  that  the  words 
"and  described"  should  be  included  in  the 
claim.  Ex  parte  Voncanon,  C.  D.  1910,  152 
O.  G.  487. 

IX.  Description  in  Specification. 

135.  Design  patents  should  disclose  all  and 
nothing  more  than  the  design,  which  the  pat- 
ent is  intended  to  cover,  and  the  specification 
should  recognize  the  fact  that  the  entire  thing 
disclosed  constitutes  the  design.  Ex  parte 
Adams.  C.  D.  189S,  83  O.  G.  1994. 

136.  The  law  requires  that  the  inventor  shall 
have  "produced"  a  design,  and  this  cannot  be 
done  without  producing  some  instrument  em- 
bodying the  peculiar  shape  or  configuration 
constituting  the  design.  It  is  the  instrument 
which  has  actually  been  produced  and  not  the 
bare  idea  of  shape  which  is  patentable.    Id. 

137.  In  design  patents  it  is  the  showing  of 
the  design  which  is  of  primary  importance, 
the  description  being  merely  auxiliary  to  the 
showing.  The  language  of  the  description 
cannot  be  used  to  give  to  the  design  a  generic 
meaning  which  would  include  designs  so  far 
different  from  the  design  shown  that  they 
would  not  be  mistaken  for  it.  (Ex  parte 
Traitel,  C.  D.  1883,  92,  25  O.  G.  783.)  Feder 
V.  Poyet,  C.  D.  1899,  89  O.  G.  1343. 

138.  Where  the  description  of  a  certain  part 
shown  in  the  drawing  states  that  it  may  have 


106 


DESIGNS,  IX,  X. 


any  shape  and  style  desired  and  this  part 
forms  a  material  part  of  the  design,  such  de- 
scription should  be  canceled,  as  it  implies  that 
there  may  be  modifications  of  the  design  il- 
lustrated, and  it  is  well  settled  that  such  mod- 
ifications do  not  exist.  Ex  parte  Burdick,  C. 
D.  1901,  97  O.  G.  1373. 

139.  A  claim  to  the  design  shown  and  de- 
scribed covers  it  in  its  entirety,  and  when  it 
is  decided  to  be  unpatentable  there  is  no  rea- 
son for  reopening  the  case  for  consideration 
because  of  an  amended  description.  Descrip- 
tive matter  may  emphasize  one  feature  or  an- 
other, but  cannot  change  the  design.  Ex  parte 
Hanson,  C.  D.  1903,  103  O.  G.  1417. 

140.  The  descriptive  material  in  a  design 
specification  should  be  reduced  to  a  minimum, 
or,  better  still,  entirely  eliminated,  since  it 
tends  to  confuse  rather  than  make  clear  the 
appearance,  which  is  the  new  thing  to  be  se- 
cured by  the  patent.  Ex  parte  Freeman,  C. 
D.   1903,   104   O.  G.  139G. 

141.  The  appearance  of  an  object  may  be 
perceived  immediately  upon  inspection  of  a 
picture  thereof,  and  it  is  futile  to  attempt  to 
describe  that  appearance  by  words.     Id. 

142.  There  can  be  no  place  in  a  design  pat- 
ent specification  for  such  descriptions  as  are 
intended  to  differentiate  between  material  and 
immaterial  elements,  the  test  of  which  is  the 
effect  produced  upon  the  eye  of  the  beholder. 
Id. 

143.  In  design  applications  it  is  merely  the 
appearance  of  the  article  which  is  sought  to 
be  patented.  The  drawing  accompanying  the 
application  would  clearly  show  every  feature 
of  the  design  contributing  to  such  appearance. 
When  the  ornamental  appearance  must  be 
seen  by  a  glance  at  the  drawing,  it  is  clearly 
superfluous  to  attempt  to  describe  this  ap- 
pearance in  the  specification.  Ex  parte  Lloyd, 
C.   D.  1904,  112  O.  G.  251. 

144.  A  picture  of  the  design  serves  to  con- 
vey a  greatly  more  adequate  idea  of  the  de- 
sign than  any  verbal  description  could  possibly 
do,  and  in  the  presence  of  the  picture  a  super- 
added verbal  description  is  generally  useless 
and  oftentimes  confusing.  *In  re  Freeman, 
C.  D.  1904,  109  O.  G.  1339. 

145.  The  ruling  that  the  descriptive  mate- 
rial in  the  specification  of  design  cases  should 
be  reduced  to  a  minimum  or  omitted,  Held,  to 
de  the  dictate  of  reason,  common  sense,  and 
common  experience.     *Id. 

146.  The  descriptive  material  in  a  design 
application  is,  in  the  presence  of  the  drawing. 


generally    useless    and    oftentimes    confusing. 
Kx  parte  Goldsmith,  C.  D.  1904,  110  O.  G.  309. 

147.  Where  the  component  parts  of  a  figure 
are  described  in  the  specification  in  detail. 
Held,  that  such  detailed  description  should 
be  canceled.     Id. 

148.  The  description  of  the  figure  of  the 
drawing  required  by  Rule  82  should  be  con- 
fined to  a  statement  whether  such  figure  is 
an  elevation,  plan,  or  perspective.     Id. 

149.  There  is  no  appeal  to  the  examiners-in- 
chief  from  the  action  of  the  examiner  of  de- 
signs requiring  the  cancelation  of  surplus  de- 
scription ;  but  the  matter  is  reviewable  on  pe- 
tition. Ex  parte  Mygatt,  C.  D.  1905,  117  O. 
G.  598. 

150.  Designs  relate  to  the  ornamental  ap- 
pearance of  the  article  and  have  nothing  to 
do  with  the  use  to  which  it  is  put,  the  func- 
tions which  it  performs,  or  its  mechanical 
construction,  and  therefore  these  matters 
should  not  be  described.    Id. 

151.  In  design  cases  description  of  matters 
which  are  clearly  shown  in  the  drawing  should 
be  dispensed  with,  since  it  is  surplusage  and 
is  calculated  to  mislead.     Id. 

152.  The  statement  in  a  design  case  that 
certain  features  of  the  article  shown  consti- 
tute no  part  of  the  design  claimed  is  objec- 
tionable and  will  not  be  permitted.  Ex  parte 
Remington,  C.  D.  1905,  114  O.  G.  701. 

153.  While  many  if  not  a  large  majority  of 
designs  can  be  sufficiently  disclosed  by  a  draw- 
ing and  a  claim  for  the  ornamental  design  as 
shown  is  in  general  the  better  form  of  claim, 
Held,  that  the  design  in  this  case  relates  to 
that  class  where  a  description  is  not  only 
proper,  but  necessary,  and  that  the  claim 
should  carry  a  description  of  the  salient  fea- 
tures of  the  design.  In  re  Mygatt,  C.  D.  1906, 
121  O.  G.  1676. 

154.  A  design  patent  for  a  textile  fabric, 
Held,  not  invalid  because  of  the  absence  there- 
from of  a  description  of  the  design  in  words. 
c  Cheney  Brothers  v.  Weinreb  and  Weinreb, 
C.  D.  1910,  157  O.  G.  1002. 

155.  "Of  course  I  do  not  mean  that  the  de- 
sign cannot  also  be  described  in  words,  but 
I  think  it  confusing  and  useless,  provided 
there  be  some  writing  to  indicate  upon  what 
character  of  goods  the  design  is  to  be  ap- 
plied."   c  Id. 

X.  Drawing. 

156.  In  design  patents  it  is  permissible  to 
show  the  essential  features  in   full  lines  and 


DESIGNS,  X-XIII,  (b). 


107 


the  remaining  parts  of  the  design  in  dotted 
lines.  Ex  parte  Adams,  C.  D.  1808,  83  O.  G. 
1994. 

157.  Tlie  drawing  and  description  of  an  ap- 
plication for  a  design  patent  should  not  show 
or  describe  features  which  form  no  material 
part  of  the  design.  Ex  parte  Burdick,  C.  D. 
1901,  97  O.  G.  1373. 

158.  The  parts  which  when  put  together 
form  the  design  which  is  the  subject  of  the 
application  should  not  be  separately  shown  in 
the  drawing,  since  such  illustration  leads  to 
confusion.  Ex  parte  Mygatt,  C.  D.  1902,  101 
O.  G.  6C1. 

159.  A  figure  of  the  drawing  in  a  design 
case  showing  the  interior  construction  of  the 
device.  Held,  properly  objected  to  by  the  ex- 
aminer. Ex  parte  Colton,  C.  D.  1903,  104  O. 
G.  1119. 

160.  The  drawing  accompanying  a  design 
application  should  clearly  show  every  feature 
of  the  design.  Ex  parte  Goldsmith,  C.  D. 
1904,  110  O.  G.  309. 

161.  In  a  design  application  the  drawing 
sufficiently  identifies  the  design  without  the 
aid  of  any  description.    Id. 

162.  The  drawing  in  design  cases  should 
show  the  article  as  it  appears  to  observers, 
and  therefore  cross-sectional  views  are  not 
permissible.  Ex  parte  Kohler,  C.  D.  1905,  116 
O.  G.  596. 

163.  The  drawing  in  a  design  case  should 
show  the  article  as  it  appears  to  observers  and 
should  not  include  a  panoramic  view  of  the 
ornaments  to  be  placed  thereon.  Ex  parte 
Wellman,  C.  D.  1905,  118  O.  G.  2252. 

164.  Where  certain  figures  of  the  drawing 
show  apparatus  for  making  an  article  and 
all  claims  to  such  apparatus  have  been  divided 
from  the  case  and  these  figures  do  not  aid 
in  obtaining  an  understanding  of  the  articles, 
Held,  that  these  figures  and  the  description 
of  the  apparatus  illustrated  therein  should  be 
canceled.  E.x  parte  Crecelius,  C.  D.  190."),  115 
O.  G.  1849. 

165.  When  in  an  application  for  a  design 
patent  for  a  glass  shade  the  edges  or  prisms 
which  form  the  upper  surface  of  the  shade 
are  not  merely  surface  ornamentation,  Held, 
that  the  examiner  properly  required  that  a 
view  of  the  article  as  seen  from  the  side  be 
added  to  the  drawing  which  contained  only  a 
top  and  a  bottom  plan  view.  Ex  parte  My- 
gatt, C.  D.  1911,  171  O.  G.  1257. 


XI.  Internal  Construction. 

166.  Design  inventions  have  reference  mere- 
ly to  the  external  appearance  of  the  article, 
and  therefore  a  figure  of  the  drawings  illus- 
trating its  interior  construction  is  not  only 
unnecessary,  but  is  likely  to  lead  to  confu- 
sion as  to  what  the  patent  covers.  Such  fig- 
ures should  be  canceled.  Ex  parte  Tucker, 
C.  D.  1901,  97  O.  G.  187. 

XII.  Desicn    and    Mechanical    Application 
ON  Same  Disclosure. 

167.  An  inventor  may  take  out  a  patent  for 
a  mechanical  construction  and  a  separate  pat- 
ent for  the  design  of  the  same  article,  and 
hence  the  mechanical  patent  is  immaterial  on 
the  question  of  anticipation  of  the  design  pat- 
ent, c  Flomerfelt  v.  Newwitter  et  al.,  C.  D. 
1898,  85  O.  G.  458. 

XIII.  Interference. 
(a)  In  General. 

168.  The  issue  in  the  present  case  being 
the  conventional  claim  for  the  design  shown 
and  described,  its  meaning  is  to  be  ascertained 
from  the  drawing  and  description  to  which 
it  refers.  Feder  v.  Poyet,  C.  D.  1899,  89  O.  G. 
1343. 

169.  If  there  is  doubt  as  to  the  meaning  of 
the  issue  and  one  party  has  a  patent  granted 
before  the  filing  of  the  other  party's  appli- 
cation, its  meaning  is  to  be  ascertained  from 
the  patent  as  well  in  design  as  in  mechanical 
cases.     Id. 

170.  Held,  that  the  designs  produced  by  F. 
prior  to  P.'s  filing  date  do  not  embody  the 
invention  in  issue,  and  therefore  priority 
awarded  to  P.    Id. 

(b)  Reduction  to  Practice. 

171.  Since  the  subjects  of  design  patents 
are  form  or  contour  and  surface  ornamenta- 
tion, it  is  physically  impossible  for  a  design 
to  exist  in  an  incomplete  condition;  but  if  it 
has  been  produced  at  all  it  is  complete  and 
entitles  the  producer  to  a  patent  at  that  time. 
Ex  parte  Tournier,  C.  D.  1900,  90  O.  G.  1948. 

172.  The  production  of  a  design  is  what 
corresponds  to  the  reduction  to  practice  of  a 
mechanical  invention,  since  its  utility  within 
the  meaning  of  that  term  as  applied  to  designs 
is  apparent  upon  mere  inspection.     Id. 


108 


DIVISION  OF  APPLICATION. 


173.  T!ie  production  of  an  article  embody- 
ing the  design  is  a  completion  of  the  invention 
and  corresponds  to  the  reduction  to  practice 
of  a  mechanical  invention,  since  a  design  re- 
lates merely  to  shape,  and  if  an  article  em- 
bodying it  has  been  produced  it  is  immaterial 
whether  or  not  it  has  been  used  practically  in 
a  mechanical  sense.  (Ex  parte  Tournier,  C. 
D.  1900,  37,  90  O.  G.  1948.)  *Tyler  v.  St. 
Amand,  C.  D.  1901,  94  O.  G.  1969. 

174.  Held,  that  a  leather  hinge  exhibiting 
the  shape  is  a  reduction  to  practice  of  a  de- 
sign for  a  hinge.  The  material  of  which  an 
article  is  made  and  its  size  are  immaterial  in 
design  cases,  since  a  design  made  of  glass  and 
used  as  a  paper-weight  or  an  ornament  would 
be  the  same  design  as  and  constitute  a  refer- 
ence for  an  article  of  the  same  shape  made 
of  metal  and  used  in  a  machine  to  perform  a 
mechanical  function.    *Id. 

175.  Held,  in  view  of  the  evidence,  that  St. 
Amand  completed  the  invention  before  Tyler 
took  the  matter  up,  and  therefore  the  decision 
of  the  acting  commissioner  affirmed.     *Id. 

176.  Where  the  design  shown  in  L.'s  appli- 
cation consists  of  the  back  of  a  brush  having 
an  ornamental  handle  and  border  with  a 
blank  space  in  the  center  of  the  back  and  the 
device  made  by  him  and  introduced  in  evi- 
dence embodies  the  same  features  and  in  addi- 
tion a  well-known  picture  in  the  blank  space. 
Held,  that  the  device  made  is  a  reduction  to 
practice  of  the  design  shown  in  the  applica- 
tion. Leigh  V.  Saart,  C.  D.  1902,  101  O.  G. 
603. 

177.  A  prior  mechanical  application  is  not  a 
constructive  reduction  to  practice  of  the  in- 
vention disclosed  in  a  later  design  application 
filed  by  the  same  party.  McArthur  v.  Gilbert, 
C.  D.  1904,  110  O.  G.  2509. 

178.  While  a  prior  mechanical  application  is 
not  a  constructive  reduction  to  practice  of  a 
design,  a  copy  of  such  application  may  be  in- 
troduced in  evidence  to  show  prior  conception. 
Id. 

XIV.  Public  Use  and  Sale. 

179.  The  doctrine  of  experimental  use  does 
not  apply  to  design  inventions;  but  any  use  of 
a  design  in  public  for  whatever  purpose  is 
public  use.  Ex  parte  Tournier,  C.  D.  1900,  90 
O.  G.  1948. 

180.  Where  a  design  for  an  attaching-plug 
for  electric  circuits  was  invented  and  produced 
as  a  complete  article  of  manufacture  and  as 
such  was  put  in  use  openly  in  the  shops  of  the 


company  more  than  two  years  prior  to  the 
tiling  of  the  application  without  the  slightest 
injunction  of  secrecy  upon  any  one.  Held,  that 
such  use  was  a  public  use  in  the  fullest  sense 
of  the  patent  law.  *In  re  Tournier,  C.  D. 
1901,  94  O.  G.  2166. 

181.  It  is  well  settled  that  the  statutory  bar 
of  public  use  applies  as  well  to  applications 
for  patents  for  designs  as  to  applications  for 
patents  for  mechanical  inventions;  but  there 
is  very  great  doubt  whether  time  for  experi- 
mental use  of  more  than  two  years  prior  to 
the  application  for  the  purpose  of  perfecting 
the  invention  should  be  allowed  in  design 
cases,  as  in  the  case  of  mechanical  inventions, 
without  affecting  the  validity  of  the  claim.  Id. 

182.  Even  if  it  is  conceded  that  experi- 
mental use  could  be  set  up  to  answer  the  ob- 
jection of  a  public  use  of  more  than  two  years 
prior  to  the  application  in  design  cases.  Held, 
that  the  proof  in  this  case  falls  far  short  of 
establishing  that  the  use  was  experimental. 
*Id. 

XV.  Test  of  Identity. 

183.  Notwithstanding  the  insertion  of  the 
word  "useful"  in  the  statute,  the  sole  test  of 
infringement  and  anticipation  in  design  cases 
is  similarity  in  appearance  such  as  would  de- 
ceive an  ordinary  observer  and  induce  him  to 
purchase  one  supposing  it  to  be  the  other. 
Ex  parte  Steck,  C.  D.  1902,  98  O.  G.  228. 

184.  Where  L.  has  produced  a  design  for 
the  back  of  a  brush  having  one  well-known 
picture  on  it,  Held,  that  S.  is  not  entitled  to 
a  patent  upon  a  design  differing  therefrom 
only  in  the  substitution  of  another  well-known 
picture.  Leigh  v.  Staart,  C.  D.  1903,  101  O.  G. 
GG3. 

185.  It  is  not  sufficient  that  the  designs  made 
by  the  parties  can  be  distinguished  so  long  as 
they  both  include  the  only  patentable  subject- 
matter.  Where  they  are  not  patentably  dif- 
ferent, only  the  first  is  entitled  to  a  patent. 
Id. 

186.  The  doctrine  of  double  use  applies  to 
designs,  and  the  substitution  of  one  well- 
known  and  independent  feature  for  another 
does  not  patentably  distinguish  two  designs. 
Id. 


DIVISION  OF  APPLICATION. 

I.  In  General. 
II.  Constitutionality  of  Revised  Statute 

4886. 


DIVISION  OF  APPLICATION,  I. 


109 


III.  Appeal  or  Petition. 

IV.  Citation  of  References. 

V.  Cancellation  ok  Part  oi-  Application. 
VI.  Oi'i'icE  Practice. 
VII.  Broad  and  Narrow  Claims. 

VIII.    COMIIINATION    ANE    SUBCOMlilNATlON. 

(a)  III  General. 

(b)  Division  Necessary. 

(c)  Division  not  Necessary. 
Classieication  in  Patent  Office. 

(a)  In  General. 

(b)  Division  Necessary. 

(c)  Division  not  Necessary. 
Different  Species. 

(a)  In  General. 

(b)  Division   Necessary. 

(c)  Division  not  Necessary. 
Processes. 
Process  and  Apparatus. 

(a)  In  General, 
(h)  Division  Necessary. 
(c)  Division  not  Necessary. 
Process  and  Product. 

(a)  Division  Necessary. 

(b)  Dii'ision  not  Necessary. 
Status    in    Arts;    Manufacture   and 

Sale;  Office  Classification,  Etc. 

(a)  Diz'ision  Necessary. 

(b)  Division  not  Necessary. 
Particular  Cases. 

(a)  Division  Necessary. 

(b)  Division  not  Necessary. 

I.  In  General. 

1.  Where  two  devices  are  independent  of 
each  other  and  they  do  not  mutually  con- 
tribute to  produce  a  single  result  and  the 
action  of  one  does  not  in  any  manner  modify 
or  affect  the  action  of  the  other,  Held,  that 
division  should  be  required.  Ex  parte  Wil- 
liams, C.  D.  1898,  83  O.  G.  1346. 

2.  When  the  independence  of  the  inventions 
is  clear,  division  should  be  made  before  any 
action  upon  the  merits.  Ex  parte  Rappleye, 
C.  D.  1898,  85  O.  G.  2096. 

3.  The  hydraulic  means  for  raising  and 
lowering  the  chair  is  a  mere  improvement  on 
old  devices,  and  does  not  in  any  manner  mod- 
ify the  operation  of  the  devices  covered  by 
the  other  claims,  and  therefore  should  be 
made  the  subject  of  separate  invention.  Ex 
parte  Wilkerson,  C.  D.  1S99,  87  O.  G.  .513. 

4.  Where  devices  are  independent  of  each 
other  and  do  not  mutually  contribute  to  pro- 
duce a  single   result,   and   the   action   of   one 


IX. 


X. 


XI. 
XII. 


XIII. 


XIV. 


XV. 


does  not  in  any  manner  modify  or  affect  the 
action  of  the  other,  they  should  not  be  per- 
mitted to  be  covered  by  one  application.  (Ex 
parte  Williams,  C.  D.  1898,  76,  83  O.  G.  1346, 
cited.)     Id. 

5.  Amended  Rule  41  applies  to  applications 
filed  prior  to  the  promulgation  of  the  rule  as 
well  as  to  those  filed  subsequently  thereto. 
Ex  parte  Farquhar  et  al.,  C.  D.  1899,  89  O.  G. 
706. 

6.  An  applicant  who  has  had  his  claims  con- 
sidered on  the  merits  before  the  requirement 
of  division  has  no  just  ground  for  complaint 
that  the  requirement  should  have  been  made 
earlier,  as  he  has  been  favored  by  the  office  to 
the  extent  that  he  has  been  given  an  action 
on  the  merits  of  all  of  his  claims  instead  of 
on  only  one  set  thereof,  as  would  have  been 
the  case  had  division  been  made  before  such 
action.     Id. 

7.  The  statute  has  always  been  regarded  as 
authorizing  a  rule  directing  when  more  than 
one  invention  may  be  comprehended  in  one 
patent.  That  a  discretion  in  this  particular 
is  vested  in  the  commissioner  is  recognized 
and  settled  in  numerous  decisions  of  the 
courts.  Ex  parte  Frasch,  C.  D.  1900,  91  O. 
G.  459. 

8.  Where  after  a  requirement  for  division 
the  applicant  presented  claims  which  in  the 
examiner's  opinion  covered  mere  aggregations 
of  the  independent  inventions.  Held,  that  the 
examiner  properly  refused  to  enter  them  until 
the  question  of  division  was  settled.  Ex  parte 
Brownell,  C.  D.  1901,  94  O.  G.  988. 

9.  In  an  application  covering  improvements 
in  grain-drills.  Held,  that  division  was  prop- 
erly required  between  claims  to,  first,  the 
force-feed;  second,  the  drill-teeth;  third,  the 
adjustable  rank-drill;  fourth,  the  hitch  or 
draft  devices;  fifth,  the  frame  parts,  and 
sixth,  the  clutch.  Ex  parte  Pelton,  C.  D.  190], 
9.')  O.  G.  633. 

10.  Although  it  may  be  assumed  that  each 
of  the  devices  tends  to  improve  the  grain- 
planting  device  as  a  whole.  Held,  that  it  does 
not  follow  that  they  are  dependent  upon  each 
other  and  mutually  contribute  to  produce  a 
single  result  within  the  meaning  of  Rule  41. 
Id. 

11.  A  requirement  for  division  is  not  an 
action  upon  the  merits  of  the  application,  but 
is  a  mere  matter  of  form  from  which  the 
party  has  no  right  of  appeal  to  the  examiners- 
in-chicf.     An  appeal  in  such  case  will  not  be 


116 


DIVISION  OF  APPLICATION,  I. 


forwarded.     Ex  parte  Frasch,  C.  D.  1002,  98 
O.  G.  1967. 

12.  A  requirement  for  division  and  a  re- 
quirement tliat  a  certain  one  of  the  independ- 
ent inventions  be  eliminated  from  the  case 
on  the  ground  that  the  apphcant  has  by  his 
actions  elected  to  retain  the  other  invention 
in  that  case  do  not  relate  to  the  merits  and 
are  not  appealable  to  the  examincrs-in-chief, 
but  relate  to  form  and  are  petitionable  to  the 
commissioner.  Ex  parte  Steinmetz,  C.  D.  1902, 
98  O.  G.  1967. 

13.  Held,  that  the  examiner  properly  re- 
fused to  forward  to  the  examincrs-in-chief 
an  appeal  from  his  action  requiring  division. 
Id. 

14.  Held,  that  division  was  properly  re- 
quired between  claims  for  a  record-cabinet 
and  claims  for  a  record-block  where  it  ap- 
pears that  the  cabinet  could  be  used  with  other 
blocks  and  the  blocks  could  be  used  in  other 
cabinets.  Ex  parte  Cavanagh  et  al.,  C.  D. 
1902,  98  O.  G.  2588. 

15.  Held,  that  division  was  properly  re- 
quired between  claims  to  a  sparking  igniter, 
claims  to  a  governor-valve,  claims  to  a  rclicf- 
valvc,  and  claims  to  the  general  structure  of 
a  gas-engine.  They  cover  separate  and  inde- 
pendent inventions.  Ex  parte  Tyler,  C.  D. 
1902,  100  O.  G.  686. 

16.  Where  the  examiner  requires  division 
between  process  and  apparatus  claims  and  be- 
tween claims  to  different  species  of  the  appa- 
ratus without  mentioning  the  particular  claims 
by  number,  and  the  applicant  amends  by  can- 
celing the  process  claims  and  asks  for  recon- 
sideration and  a  specific  statement  as  to  the 
apparatus  claims,  Held,  that  his  action  is 
proper  and  saves  the  case  from  abandonment. 
Ex  parte  Naef,  C.  D.  1902,  100  O.  G.  2601. 

17.  In  considering  division  the  question  is 
not  whether  the  devices  are  capable  of  use  to- 
gether and  in  disconnected  ways  tends  to  im- 
prove the  machine  of  which  they  form  a  part, 
but  is  whether  they  are  dependent  upon  each 
other  and  mutually  contribute  to  produce  a 
single  result.  Ex  parte  Burmeister,  C.  D. 
1902,  101  O.  G.  662. 

18.  Held,  that  division  was  properly  re- 
quired between  claims  to  antifriction  end- 
thrust  bearings  and  claims  to  bearings  to  re- 
duce lateral  friction  between  the  hub  and  the 
axle  although  both  may  be  used  in  one  device. 
They  are  independent  in  structure  and  opera- 
tion and  have  been  tnad?  independent  subjects 


of   invention.     Ex   parte   Stuver,   C.   D.   1902, 
101  O.  G.  1130. 

19.  Where  claim  1  is  drawn  to  cover,  first, 
an  old  construction  of  motor;  second,  the 
process  in  the  performance  of  which  the 
changed  motor  is  used,  and,  third,  certain 
changes  in  construction  of  the  old  motor  which 
are  necessary  for  the  perfected  operation  of 
the  new  device,  and  claim  2  covers  a  fan- 
motor  so  arranged  as  to  be  adapted  for  use 
with  currents  of  different  frequency  and 
which  when  operated  performs  the  process  set 
forth  in  claim  1,  }letd,  that  division  should  be 
required  between  them,  as  these  two  claims 
bear  the  relation  to  each  other  of  a  machine 
and  the  process  in  the  performance  of  which 
the  machine  is  used  and  are  not  related  to 
each  other  as  a  process  and  its  product.  Ex 
parte  Chapman,  C.  D.  1903,  102  O.  G.  820. 

20.  Held,  that  division  was  properly  re- 
quired between  a  composition  of  matter  and 
a  lightning-arrester  including  that  composi- 
tion as  an  element.  Ex  parte  Bennett,  C.  D. 
1903,   105  O.  G.   1262. 

21.  A  party  may  claim  a  process  and  the 
product  which  necessarily  results  therefrom 
in  a  single  application ;  but  he  cannot  claim 
in  addition  a  device  in  which  that  product 
merely  forms  an  element.    Id. 

22.  Where  an  amendment  is  filed  after  a 
requirement  for  division  which  introduces  no 
new  question  of  division,  but  attempts  to 
place  the  claims  in  allowable  condition,  cither 
as  to  form  or  merits,  or  attempts  by  substan- 
tial changes  to  avoid  the  necessity  for  divi- 
sion. Held,  that  the  amendments  should  be 
entered  and  acted  upon.  Ex  parte  Williams, 
C.   D.   1903,  105  O.  G.  1780. 

23.  Where  it  appears  that  because  of  a  dis- 
agreement between  the  inventor  and  his  as- 
signee the  assignee  believes  that  he  cannot 
cause  the  inventor  to  execute  a  new  applica- 
tion. Held,  not  a  sufficient  reason  to  warrant 
waiver  of  a  requirement  of  division,  which  is 
clearly  justified  by  the  practice  of  this  office 
in  its  rules  and  decisions  interpreting  the 
same.  Ex  parte  Davis,  C.  D.  1903,  105  O. 
G.  1783. 

24.  Where  the  claims  cover  inventions  which 
are  so  independent  that  each  requires  an  in- 
dependent search  to  determine  its  novelty. 
Held,  that  division  should  be  required.  Ex 
parte  Adams,  C.  D.  1903,  100  O.  G.  541. 

25.  Where  the  inventions  though  distinct 
are  dependent  upon  each  other,  and  the  field 
of  search  for  all  is  the  same  as  that  for  a  sin- 


DIVISION  OF  APPLICATION,  I. 


Ill 


gle  one,  Held,  that  ordinarily  there  is  no  rea- 
son for  requiring  division.     Id. 

26.  Where  an  application  has  been  allowed 
and  forfeited  and  the  requirement  for  division 
was  made  for  the  first  time  when  the  applica- 
tion was  renewed.  Held,  that  such  delayed 
action  indicates  that  there  is  some  doubt  as 
to  the  propriety  of  the  requirement  and  that 
such  doubt  should  be  resolved  in  favor  of 
the  applicant.  Ex  parte  Uhlig,  C.  D.  1903,  106 
O.  G.  .^)41. 

27.  A  requirement  for  division  will  not  be 
overruled  merely  because  it  is  made  for  the 
first  time  late  in  the  prosecution  of  the  case. 
Ex  parte  Lewis,  C.  D.  1904,  108  O.  G.  559. 

28.  Where  division  is  required  between  two 
or  more  sets  of  claims  covering  two  inde- 
pendent inventions,  Held,  that  the  applicant 
should  be  permitted  to  elect  which  invention 
he  desires  to  prosecute  and  that  he  should  not 
be  required  to  eliminate  from  his  application 
any  one  set  of  claims.  Ex  parte  Butcher,  C. 
D.  1904,  108  O.  G.  1587. 

29.  Held,  that  division  is  properly  required 
between  claims  for  the  method  of  making  a 
matrix  and  a  claim  for  an  article  cast  in  the 
matrix,  as  these  claims  cover  independent  in- 
ventions. Ex  parte  Jennens,  C.  D.  1904,  108 
O.  G.  1587. 

30.  A  requirement  for  division  will  not  be 
overruled  because  made  for  the  first  time  late 
in  the  prosecution  of  the  case.  Ex  parte 
Benke,  C.  D.  1904,  108  O.  G.  15S8. 

31.  Without  a  hard  and  fixed  rule  the  ac- 
tion of  the  patent  office  upon  the  question  of 
dividing  applications  for  patents  can  be  ac- 
commodated to  the  character  of  invention  and 
discretion  can  be  exercised,  and  when  exer- 
cised the  courts  will  not  review  it  except  in 
cases  of  clear  abuse.  *United  States  c.x  rel. 
Steinmetz  v.  Allen,  Commissioner  of  Patents, 
C.  D.  1904,  109  O.  G.  549. 

32.  Where  an  applicant  divides  his  applica- 
tion upon  a  requirement  of  the  office  and 
after  one  division  has  become  a  patent  some 
question  is  raised  whether  there  is  a  proper 
line  of  division  and  whether  the  second  case 
should  not  be  rejected  upon  the  patent,  Held. 
that  any  and  all  doubts  should  be  resolved 
in  favor  of  the  applicant.  The  office  should 
not  by  contradictory  rulings  deprive  the  ap- 
plicant of  substantial  rights.  Ex  parte  Davis, 
C.  D.  1904,  109  O.  G.  1068. 

33.  In  determining  whether  or  not  division 
should  be  required  the  question  to  be  decided 
is  not  whether  the  claims  would  be  sustained 


as  valid  if  granted  in  one  patent,  but  is  wheth- 
er the  inventions  claimed  are  related  and  de- 
pendent. Ex  parte  Frasch,  C.  D.  1904,  109 
O.  G.  1338. 

34.  The  courts  sustain  patents  covering  two 
or  more  independent  inventions;  but  it  does 
not  follow  that  this  office  must  permit  inde- 
pendent inventions  to  be  claimed  in  one  pat- 
ent. The  question  of  division  is  a  matter  left 
largely  to  the  discretion  of  the  patent  office. 
Id. 

35.  Where  division  is  required,  it  must  be 
settled  before  the  office  will  examine  the  mer- 
its of  each  separate  claim  to  determine  the 
question  of  patentability.  An  examination  of 
two  or  more  independent  inventions  will  not 
be  made  in  one  case.  Ex  parte  Pickles,  C.  D. 
1904,   109  O.   G.    1888. 

36.  Where  division  is  required  it  must 
be  settled  before  the  office  will  examine 
the  merits  of  each  separate  claim  to  determine 
the  question  of  patentability.  An  examination 
of  two  or  more  independent  inventions  will 
not  be  made  in  one  case.  Ex  parte  Snyder, 
C.  D.  1904,  110  O.  G.  2230. 

37.  The  application  of  the  rule  concerning 
the  requirement  of  division  to  a  given  case 
involved  an  exercise  of  judgment  and  dis- 
cretion in  every  case.  The  facts  of  each  case 
must  be  considered,  with  the  burden  upon  the 
applicant  who  asserts  that  two  statutory  in- 
ventions are  one  unitary  invention.  *In  re 
Frasch,  C.  D.  1906,  122  O.  G.  1048. 

38.  The  nature  of  the  claims  considered 
and  Held,  to  warrant  the  examiner's  require- 
ment for  division.  Ex  parte  Ramsey,  C.  D. 
1909,  146  O.  G.  721. 

39.  Where  the  requirement  for  division  was 
not  made  until  after  several  actions  on  the 
merits,  Held,  that  this,  being  a  benefit  rather 
than  detriment  to  the  applicant,  furnishes  no 
grounds  why  such  a  requirement,  which  is 
permitted  by  the  rules,  should  not  be  ad- 
hered to.     Id. 

40.  Where  in  respect  to  a  requirement  for 
division  between  article  and  process  claims 
an  applicant  canceled  the  process  claims  for 
the  express  purpose  of  obtaining  action  on 
the  merits  and  with  the  statement  that  pro- 
cess claims  would  later  be  reasserted.  Held. 
that  the  examiner  was  right  in  requiring  that 
the  process  claims  be  resubmitted,  if  at  all, 
before  action  on  the  merits,  although  under 
the  circumstances  he  might  have  considered 
the  cancelation  of  the  process  claims  final  and 
refused  therafter  to  consider  any  further  pro- 


112 


DIVISION  OK  APPLICATION,  II,  III. 


cess  claims.    Kx  parte  Scott  and  Deals,  C.  D. 
1909,   147  O.  G.  520. 

41.  Where  a  requirement  for  division  is 
made  there  is  no  objection  to  the  examiner 
acting  on  the  merits  of  all  the  claims.  Ex 
parte  Lantzkc,  C.  D.  1910,  156  O.  G.  357. 

II.  Constitutionality    of    Rkvisf.d    Statute 
4886. 

42.  Where  the  constitutionality  of  section 
4886,  Revised  Statutes,  is  attacked  because  it 
provides  that  inventions  or  discoveries  may 
be  either  arts,  machines,  manufactures,  or 
compositions  of  matter  and  because  presump- 
tively nn  two  of  these  subjects  are  one  inven- 
tion, it  is  a  sufficient  ansu'er  to  say  that  in- 
ventions have  been  thus  distinguished  con- 
tinuously since  1793  and  that  the  court  of  last 
resort  has  been  called  upon  to  consider,  from 
one  standpoint  or  another,  this  division  of 
inventions  and  has  frequently  recognized  the 
distinction  between  them  without  ever  inti- 
mating that  the  legislative  branch  of  the  gov- 
ernment had  exceeded  its  power  in  so  classi- 
fying inventions.  *In  re  Frasch,  C.  D.  1906, 
122  O.  G.  1048. 

III.  Appeal  or  Petition. 

43.  An  appeal  from  the  decision  of  the 
commissioner  of  patents  requiring  division 
between  process  and  apparatus  dismissed  for 
want  of  jurisdiction.  *In  re  Frasch,  C.  D. 
1902,  ion  O.  G.  1977. 

44.  The  requirement  for  division  is  not  a 
refusal  of  a  patent,  but  is  a  mere  interlocu- 
tory order  from  which  there  can  be  no  appeal. 
*Id. 

45.  The  right  to  appeal  to  the  court  of  ap- 
peals of  the  District  of  Columbia  from  a  de- 
cision of  the  commissioner  of  patents  is  lim- 
ited to  two  classes  of  cases:  first,  where  an 
application  for  patent  has  been  finally  denied, 
and,  second,  where  in  an  interference  proceed- 
ing there  has  been  a  final  determination  of 
the  question  of  priority  of  invention  between 
adverse  claimants.    *Id. 

4G.  The  commissioner  of  patents  is  em- 
powered by  law  to  establish  rules  to  regulate 
the  procedure  and  practice  in  his  office,  and 
the  requirement  that  certain  claims  be  pre- 
sented in  two  applications  instead  of  one 
comes  within  this  authority,  a  United  States 
ex  rel.  Steinmetz  v.  Allen,  Commissioner  of 
Patents,  C.  D.  1903,  102  O.  G.  231. 


47.  The  requirement  for  division  or  that 
certain  claims  be  presented  in  a  separate  ap- 
plication is  not  an  adverse  ruling  upon  the  ap- 
plicant's right,  but  is  a  mere  preliminary  re- 
quirement as  to  procedure.  *Unitcd  States, 
ex  rel.  Steinmetz  v.  Allen,  Commissioner  of 
Patents,  C.  D.  1903,  104  O.  G.  853. 

48.  The  decision  of  the  commissioner  that 
an  application  must  be  divided  is  final  and 
conclusive,  and  the  applicant  is  bound  to  make 
the  division  as  required.     *Id. 

49.  The  question  of  division  being  a  matter 
of  form  and  procedure,  the  power  over  it  is 
vested  in  the  commissioner  as  the  head  of  the 
office,  and  his  determination  thereof  is  final 
and  is  not  reviewable  by  any  authority.     *Id. 

50.  Where  the  claims  of  an  application  for 
patent  have  not  been  acted  upon  as  to  their 
merits,  but  the  applicant  has  been  required  to 
present  them  in  two  applications  instead  of 
one.  Held,  that  the  claims  have  not  been  re- 
jected within  the  meaning  of  the  law  and  the 
rules  and  that  the  applicant  is  not  entitled  to 
appeal  to  the  examiners-in-chief.  o  United 
States  ex  rel.  Steinmetz  v.  Allen,  Commis- 
sioner of  Patents,  C.  D.  1903,  102  O.  G.  231. 

51.  The  statute  authorizing  an  appeal  when 
claims  have  been  twice  rejected  means  that 
the  claims  must  have  been  considered  on  their 
merits  and  found  to  be  not  patentable,    a  Id. 

52.  Where  the  patentability  of  the  claims  is 
not  in  question,  but  merely  the  manner  of 
their  presentation  to  the  patent  office.  Held, 
that  the  action  of  the  office  is  interlocutory 
and  deprives  the  applicant  of  no  substantial 
right  which  would  entitle  him  to  appeal,    a  Id. 

53.  To  constitute  a  rejection  of  the  claims 
in  the  meaning  of  the  statute,  the  action  must 
amount  in  legal  effect  to  an  adverse  decision 
in  respect  to  the  merits  of  the  claim  and  be 
of  a  character  to  defeat  the  right  to  a  patent 
therefor  unless  reversed  on  appeal.  *United 
States,  ex  rel.  Steinmetz  v.  Allen,  Commis- 
sioner of  Patents,  C.  D.  1903,  104  O.  G.  853. 

54.  A  requirement  by  the  examiner  for  the 
division  of  an  application  is  not  an  action 
from  which  an  appeal  may  be  taken  to  the 
c.xaminers-in-chief.     *Id. 

55.  A  requirement  for  division  of  an  ap- 
plication is  to  be  regarded  as  a  rejection  and 
is  appealable  to  the  examiners-in-chief  in  the 
first  instance.  Ex  parte  Frasch,  C.  D.  1904, 
109  O.  G.  1338. 

56.  Held,  that  a  requirement  by  the  primary 
examiner  for  division  is  appealable  to  the  ex- 
aminers-in-chief although  a  distinction  can  be 


DIVISION  OF  APPLICATION,  IV. 


113 


made  between  his  ruling  upon  that  question 
and  one  on  the  merits,  if  we  regard  the  merits 
to  mean  invention,  novelty,  or  the  like. 
**United  States  ex  rel.  Steinmctz  v.  Allen, 
Commissioner  of  Patents,  C.  D.  1904,  100  O. 
G.  549. 

57.  The  question  whether  a  design  applica- 
tion covers  two  or  more  inventions  is  a  ques- 
tion of  division,  which  is  to  be  determined  on 
appeal  in  the  first  instance  by  the  examiners- 
in-chief.  (United  States  ex  rel.  Steinmetz  v. 
Allen,  ante,  703,  109  O.  G.  549.)  Ex  parte 
Schraubstadter,  C.  D.  1904,  110  O.  G.  2015. 

58.  Where  the  unity  of  the  inventions 
claimed  by  the  petitioner  is  not  denied,  he 
has  the  right  to  join  them  in  one  application, 
and  where  the  primary  examiner  in  such  case 
denies  that  right.  Held,  that  the  examiner's 
action  is  a  rejection  of  the  application  and 
entitles  petitioner  to  an  appeal  to  the  exam- 
iners-in-chief under  section  4909,  Revised 
Statutes.  **United  States  ex  rel.  Steinmetz 
v.  Allen,  Commissioner  of  Patents,  C.  D. 
1904,  109  O.  G.  549. 

59.  Where  the  ruling  is  such  that  the  ap- 
plicant must  yield  and  give  up  the  right 
claimed,  or  if  he  does  not  yield  he  will  not  be 
heard  at  all  and  may  subsequently  be  regard- 
ed as  having  abandoned  his  application,  Held, 
that  such  ruling  must  be  considered  as  final 
and  appealable.    ♦*Id. 

60.  The  decision  Steinmetz  v.  Allen,  has  an- 
nounced no  new  principle  controlling  the  de- 
termination of  the  question  whether  inven- 
tions are  independent  and  should  be  divided, 
but  has  merely  announced  that  the  question  is 
appealable  to  the  examiners-in-chief  in  the 
first  instance.    Id. 

61.  Petition  from  the  examiner's  require- 
ment for  division  of  an  application  dismissed, 
since  it  is  appealable  in  the  first  instance  to 
the  examiners-in-chief.  Ex  parte  Emerson, 
C.  D.  1904,  109  O.  G.  1609. 

62.  A  party  is  not  entitled  to  retain  separate 
claims  to  two  specific  forms  of  the  invention 
in  one  case ;  but  the  question  whether  the 
claims  cover  different  species  is  reviewable 
in  the  first  instance  by  the  examiners-in-chief 
upon  appeal.  Ex  parte  Creamer  and  Knowl- 
ton,  C.  D.  1904,  111  O.  G.  1040. 

63.  A  requirement  for  division  will  not  be 
reviewed  on  petition,  but  only  on  appeal  to 
the  examiners-in-chief.  Ex  parte  Richardson, 
C.  D.  1904,  112  O.  G.  1751. 

64.  An  examiner's  requirement  for  division 
will  not  be  reviewed  except  upon  appeal  to  the 


examiners-in-chief.     Ex   parte   Tuttlc,    C.    D. 
1904,  113  O.  G.  1967. 

65.  Where  the  examiner  requires  division 
and  rules  that  the  case  should  be  limited  to 
one  particular  invention  because  of  the  ap- 
plicant's election.  Held,  that  an  appeal  may  be 
taken  to  the  examiners-in-chief  to  determine 
whether  the  requirement  for  division  was 
right.  Ex  parte  Lawler,  C.  D.  1904,  113  O.  G. 
1967. 

66.  Where  the  examiner  requires  division 
and  states  therefor  with  clearness,  his  action 
will  not  be  reviewed  on  petition  upon  the  alle- 
gation that  the  reasons  given  by  him  are  in- 
sufficient. Ex  parte  Wallace,  C.  D.  1905,  118 
O.  G.  1686. 

67.  Prosecution  of  an  application  after  a  re- 
quirement for  division  should  take  the  form 
either  of  an  appeal  to  the  examiners-in-chief 
or  compliance  with  the  requirement.  Ex 
parte  Wallace,  C.  D.  1906,  125  O.  G.  992. 

68.  Where  the  examiner  based  his  require- 
ment for  division  upon  proper  grounds,  the 
question  of  whether  the  examiner  is  right  in 
his  requirement  is  a  matter  for  consideration 
on  appeal  by  the  examiners-in-chief  before 
action  is  made  upon  the  patentability  of  the 
claims.  Ex  parte  Grain,  C.  D.  1907,  130  O. 
G.  2372. 

69.  The  fact  that  as  an  aid  to  applicant  in 
electing  how  he  will  divide  the  examiner  cited 
patents  showing  the  prior  art  and  volunteered 
the  opinion  that  the  claims  are  for  aggrega- 
tions does  not  change  the  practice  and  does 
not  warrant  the  assumption  that  the  examin- 
er's action  amounts  to  a  refusal  to  examine 
the  case  on  the  ground  that  the  claims  cover 
aggregations.    Id. 

70.  A  requirement  by  the  primary  examiner 
for  division  is  appealable  to  the  examiners- 
in-chief  and  will  not  be  reviewed  on  petition. 
Ex  parte  Lantzke,  C.  D.  1910,  156,  O.  G.  257. 

IV.  CiT.\TioN  OF  References. 

71.  In  requiring  division  the  citation  of  such 
references  and  other  information  as  will  en- 
able the  applicant  to  divide  intelligently  is  not 
intended  to  involve  an  extended  search  into 
the  art,  but  merely  such  cursory  examination 
as  will  enable  the  examiner  to  cite  such  ref- 
erences as  he  is  aware  of  at  that  time.  Ex 
parte  Albert,  C.  D.  1901,  96  O.  G.  426. 

72.  Where  in  requiring  division  the  exam- 
iner without  citing  any  references  has  given 
his  reason  for  regarding  the  invention  classi- 


114 


DIVISION  OF  APPLICATION,  V,  VI. 


fiable  in  his  division  as  lAipatentable  and  lias 
not  refused  to  cite  references,  Held,  that  it  is 
to  be  presumed  that  he  knows  of  no  refer- 
ences. A  petition  that  he  be  required  to  cite 
them  should  be  denied.     Id. 

73.  It  is  the  practice  for  the  examiners  in 
requiring  division  to  cite  such  references  and 
give  such  information  as  to  the  state  of  the 
art  as  they  possess  without  making  any  ex- 
tended examination,  so  as  to  aid  the  applicant 
in  making  his  election;  but  it  is  not  the  prac- 
tice to  make  a  regular  action  upon  the  merits. 
Ex  parte  Reid,  C.  D.  1901,  96  O.  G.  2060. 

74.  A  composition  to  be  used  for  destroy- 
ing dental  nerves  is  an  independent  invention 
from  the  process  of  using  it.  Ex  parte 
Tschirner,  C.  D.  1001,  97  O.  G.  187. 

75.  In  requiring  division  the  examiner  will 
furnish  such  references  and  other  information 
as  will  enable  the  applicant  to  divide  intelli- 
gently. Order  published  in  83  O.  G.  301.  Ex 
parte  MacKaye,  C.  D.  1903,  103  O.  G.  888. 

76.  A  cursory  examination  is  not  an  action 
on  the  merits.  A  cursory  examination  con- 
sists in  the  citation  of  any  re/erences  of  which 
the  examiner  may  have  knowledge  at  the 
time  the  requirement  of  division  is  made  or 
which  he  can  readily  find.  If  the  examiner  is 
not  aware  of  any  pertinent  references,  a  state- 
ment of  that  fact  is  sufficient.    Id. 

77.  Where  a  requirement  of  division  is 
made,  the  most  pertinent  references  readily 
available  should  be  cited  in  order  that  the 
applicant  may  be  able  to  intelligibly  divide  his 
application.  Ex  parte  Moorhead,  C.  D.  1908, 
133  O.  G.  1586. 

78.  Where  division  is  required,  the  nearest 
references  to  each  of  the  inventions  claimed 
which  can  be  readily  found  by  the  examiner 
should  be  cited.  Ex  parte  Bratt,  C.  D.  1910, 
152  O.  G.  958. 

V.  Cancrllation  of  Part  of  Application. 

79.  Where  an  application  covering  improve- 
ments in  the  magazine  of  a  gun  is  filed  as  a 
division  of  an  application  upon  the  cartridge- 
clip  and  it  appears  that  the  magazine  and  clip 
each  have  features  designed  to  co-operate 
when  the  clip  is  being  placed  in  position,  Held, 
that  the  applicant  should  not  be  required  to 
cancel  from  the  second  case  all  description 
and  illustration  of  the  clip.  Ex  parte  Scott, 
C.  D.  1901,  95  O.  G.  2683. 

80.  Where  division  is  required  between  a 
machine  and  the  article  made  by  it  and  the 


claims  are  limited  to  the  article.  Held,  draw- 
ings and  description  of  the  machine  which  are 
unnecessary  to  a  complete  disclosure  of  the 
article  render  the  disclosure  prolix  and  should 
be  canceled.  Ex  parte  King,  C.  D.  1902,  99  O. 
G.  1169. 

81.  Whether  certain  figures  should  remain 
in  the  drawing  depends  upon  the  question 
whether  the  state  of  the  art  is  such  as  to  ren- 
der it  necessary  to  limit  the  claims  to  the 
form  of  the  device  shown  in  the  other  figures. 
Ex  parte  Engel,  C.  D.  1906,  121  O.  G.  1011. 

VI.  Office  Practice. 

82.  Where  an  application  is  held  to  cover 
two  distinct  inventions,  but  has  claims  on  al- 
leged combinations  of  those  inventions  which' 
are  held  to  be  mere  aggregations,  Held,  that 
division  should  not  be  insisted  upon  until  the 
question  of  aggregation  is  determined.  Ex 
parte  Feucht,  C.  D.  1899,  88  O.  G.  2066. 

83.  Where  the  independence  of  the  inven- 
tions is  clear,  it  is  the  usual  practice  not  to 
act  on  the  merits  of  the  case  when  the  re- 
quirement of  division  is  made  in  the  first  ac- 
tion. The  most  that  is  usually  done  is  to  cite 
patents  after  a  cursory  examination  in  order 
to  show  that  the  requirement  of  division  has 
been  correctly  made.  Ex  parte  Goldman,  C. 
D.  1902,  100  O.  G.  234. 

84.  If  the  examiner  desires  to  make  a  com- 
plete action  on  the  merits  of  the  case  in  the 
same  letter  in  which  division  has  been  re- 
quired, there  is  no  objection  to  his  doing  so; 
but  it  should  be  made  clear  in  said  action  that 
the  whole  case  has  been  considered  on  its 
merits  and  that  not  only  those  claims  which 
are  specifically  rejected  have  been  considered, 
but  all  of  the  others  as  well.    Id. 

85.  Where  in  requiring  division  the  exam- 
iner rejects  some  of  the  claims  upon  refer- 
ences, but  does  not  make  it  plain  that  he  has 
given  a  full  action  upon  the  merits.  Held,  that 
a  final  rejection  given  in  the  next  letter  is 
premature  and  that  the  applicant  is  thereafter 
entitled  to  amend.     Id. 

86.  Held,  that  when  the  independence  of  the 
inventions  is  clear  the  requirement  for  divi- 
sion will  be  made  before  any  action  upon  the 
merits,  and  when  the  independence  of  the  in- 
ventions is  not  clear  the  requirement  may  be 
made  at  any  time  before  the  final  action.  Ex 
parte  Alminana,  C.  D.  1902,  100  O.  G.  1331. 

87.  In  requiring  division  every  effort  should 
be  made  by  the  office  to  have  the  requirement 


DIVISION  OF  APPLICATION,  VII-VIII,  (b). 


lis 


so  complete  as  to  avoid,  if  possible,  raising  the 
question  at  a  later  date.  In  case  the  examiner 
having  charge  of  the  apph'cation  entertains  any 
doubt  as  to  what  line  of  division  should  be 
dravvfn  among  claims  which,  if  retained,  would 
go  to  another  division  he  should  refer  the  ap- 
plication to  the  examiner  of  that  division  for 
information  on  that  point,  who  should  ren- 
der the  necessary  assistance  forthwith.  Ex 
parte  Brown,  C.  D.  1911,  171  O.  G.  213. 

VII.  Broad  and  Narrow  Claims. 

88.  Where  certain  claims  are  drawn  to  an 
umbilical-truss  structure  and  other  claims  are 
not  so  limited,  but  nevertheless  cover  the 
unitary  structure  of  the  invention.  Held,  that 
the  device  covered  by  all  the  claims  is  a  sin- 
gle invention  and  division  between  the  broad 
and  narrow  claims  should  not  be  required. 
Ex  parte  Alminana,  C.  D.  1902,  100  O.  G. 
1331. 

89.  Where  one  set  of  claims  is  broad  enough 
to  include  a  map  showing  railroad  routes  and 
a  time-table  showing  the  same  routes  and  an- 
other set  of  claims  is  specific  to  the  time-table. 
Held,  that  all  the  claims  may  be  presented  in 
one  application  and  division  should  not  be 
required.  Ex  parte  MacKayc,  C.  D.  1903,  103 
O.  G.  888. 

VIII  Combinations  and  Subcombinations. 
(a)  In  General. 

00.  The  words  "coin-releasable  mechanism" 
are  not  sufficient  to  carry  a  claim  the  other 
element  of  which  relate  to  a  game  apparatus 
into  a  group  of  claims  each  directed  to  such 
apparatus.  Such  words  are  merely  a  state- 
ment of  the  fact  that  a  coin-releaser  may  be 
used  with  the  game  apparatus.  Ex  parte 
Matthews,  C.  D.  1898,  82  O.  G.  1091. 

91-  Held,  that  if  a  case  contain  a  claim  for 
a  combination  of  a  coin-controlled  device, 
broadly  or  specifically  stated,  with  any  ma- 
chine to  which  it  is  applied,  a  claim  for  the 
same  combination,  differing  only  in  setting 
forth  a  specific  construction  of  the  machine  to 
which  the  coin-controlled  apparatus  is  applied, 
should  not  be  allowed  in  that  application  or 
in  any  other  unless  the  specific  form  of  such 
machine  is  not  merely  an  improvement  in  the 
machine,  but  actually  enters  into  the  new  com- 
bination affecting  the  action  of  the  coin-con- 
trolled apparatus.  Ex  parte  Casler,  C.  D.  1900, 
90  O.  G.  446. 


92.  Held,  further,  that  when  an  application 
contains  claims  for  a  coin-controlled  appa- 
ratus, in  combination  with  a  machine  to  which 
said  apparatus  is  applied,  and  also  claims 
broadly  for  means  for  setting  that  apparatus 
in  operation,  in  combination  with  the  appa- 
ratus, and  the  only  means  shown  for  setting 
the  apparatus  in  operation  is  the  coin-con- 
trolled means,  all  the  claims  should  remain 
in  the  same  application  and  the  case  be  classi- 
fied under  coin-controlled  apparatus.     Id. 

93.  It  is  not  broadly  true  that  in  all  cases 
where  a  party  makes  and  is  entitled  to  a  com- 
bination claim  he  is  also  entitled  in  the  same 
case  to  claim  as  many  subcombinations  or  spe- 
cific elements  in  that  combination  as  he  de- 
sires. Ex  parte  Johnson,  C.  D.  1900,  93  O. 
G.  123.-. 

94.  Where  the  claims  aggregate  independ- 
ent inventions,  the  proper  treatment  is  a  re- 
jection for  that  reason  and  not  a  requirement 
for  division.  Ex  parte  Mansfield  and  Hayes, 
C.   D.   1902,  98  O.   G.  2303. 

95.  Where  a  case  includes  separate  claims 
to  independent  inventions  and  also  claims  to 
combinations  of  the  two,  Held,  that  it  is  not 
necessary  to  settle  the  question  as  to  the 
legitimacy  of  the  combinations  before  the 
question  of  division  can  be  intelligently  de- 
termined.   Id. 

96.  A  combination  claimed  may  constitute 
an  independent  invention  from  the  specific  ele- 
ments separately  claimed  which  enter  into 
that  combination.     Id. 

97.  The  recent  practice  of  rejecting  aggre- 
gation claims  preparatory  to  requiring  division 
between  other  claims  in  the  case  will  not  be 
followed  hereafter ;  but  the  question  of  divi- 
sion will  be  first  settled.  (Ex  parte  Feucht, 
C.  D.  1899,  178,  88  O.  G.  2066,  and  similar  de- 
cisions overruled.)     Id. 

98.  The  rejection  of  aggregation  claims  pre- 
paratory to  requiring  division  between  other 
claims  without  an  examination  of  the  prior 
art  amounts  to  piecemeal  action  upon  the 
merits  of  the  case,  and  that  is  contrary  to  the 
well-settled  policy  of  the  office.     Id. 

(b")  Division  Necessary. 

99.  Where  no  particular  adaptability  is 
found  to  exist  between  a  game  apparatus  and 
a  coin-controlled  apparatus,  claims  for  both 
should  not  be  permitted  in  a  single  application. 
Ex  parte  Mathews,  C.  D.  1898,  82  O.  G.  1691. 


116 


DIVISION  OF  APPLICATION,  VIII.  (b). 


100.  When  an  applicant  had  no  claim  cov- 
ering the  fundamental  organization  of  the 
bicycle,  but  each  claim  was  drawn  to  an  im- 
provement on  some  specific  part  of  it — viz., 
first,  the  crank-shaft  covered  by  claim  1;  sec- 
ond, the  handlc-bar-stcm  clamp  covered  by 
claim  2;  third,  the  whccl-hub  formation  cov- 
ered by  claim  3 ;  fourth,  the  axle-whccl  and 
cone  formation  covered  by  claim  4;  fifth,  the 
seatpost  clamp  covered  by  claim  .5 ;  sixth,  the 
crown-fork  formation  covered  by  claims  6  and 
7,  and,  seventh,  the  handle  bar  grip  covered 
by  claims  8  and  9,  Held,  that  these  separate 
improvements  are  distinct  and  independent  in- 
ventions, which  should  be  presented  in  sep- 
arate applications.  (Ex  parte  Willcox  and 
Borton,  C.  D.  188S,  144,  45  O.  G.  4,5.'>;  ex  parte 
Stearnes,  C.  D.,  1890  49,  50  O.  G.  1768,  ex 
parte  Cook,  C.  D.  1890,  81,  51  O.  G.  1620;  ex 
parte  Speckbauch,  C.  D.  1891,  36,  54  O.  G. 
126,-,;  ex  parte  Burgess,  C.  D.  1897,  64,  80  O. 
G.  1759;  ex  parte  Rose,  62  MS.  Dec.  366,  and 
Session  v.  Romadka,  C.  D.  1884,  340,  28  O. 
G.  721,  cited.)  Ex  parte  Healey,  C.  D.  1898, 
84  O.  G.  1281. 

101.  Held,  that  division  was  properly  re- 
quired between  claims  to  a  fortune-telling  ap- 
paratus and  a  claim  which  includes  as  part  of 
its  combination  coin-actuated  mechanism.  Ex 
parte  Richter,  C.  D.  1898,  85  O.  G.  1908. 

102.  The  exigencies  of  office  classification 
have  rendered  it  expedient  to  draw  a  line  of 
distinction  between  coin-actuated  apparatus 
of  all  kinds  when  the  construction  of  such 
apparatus  is  independent  of  or  indifferent  to 
the  coin-actuating  agency  and  those  construc- 
tions in  which  the  coin-actuating  agency  or 
mechanism  is  made  an  integral  part  of  the 
device.     Id. 

103.  Where  the  specific  elements  or  sub- 
combinations in  a  general  combination  are 
useful  in  other  relations  and  are  mere  improve- 
ments on  independent  devices  which  have  ac- 
quired a  distinct  status  in  art  and  classifica- 
tion they  cannot  properly  be  retained  in  the 
same  case  as  the  combination  claim.  Ex  parte 
Johnston,  C.  D.  1900,  92  O.  G.  1235. 

104.  Division  was  properly  required  between 
the  claims  which  cover  a  particular  structure 
of  "percolator-cartridge"  for  use  in  a  coffee- 
filter  for  making  drip-coffee  and  claims  cov- 
ering combinations  between  the  cartridge  and 
the  particular  filter,  for  the  reason  that  each 
of  the  inventions  is  independent  of  the  other 
in  that  they  possess  the  capacity  for  separate 


use.     Ex  parte  Brown,  C.   D.   1902,  99  O.  G. 
2320. 

105.  Held,  that  division  was  properly  re- 
quired between  a  combination  including  a 
buoy  as  one  of  the  elements  and  a  claim  to  a 
specific  form  of  buoy  where  that  buoy  is  ca- 
pable of  use  in  other  relations.  Ex  parte 
Moriarty,  C.  D.  1002,  99  O.  G.  2549. 

106.  Division  was  properly  required  between 
claims  for  a  lawn-mower  mechanism  one  of 
the  elements  of  which  is  a  clutch  and  the 
claims  for  the  specific  clutch  construction.  A 
clutch  is  a  distinct  and  independent  invention 
from  the  mechanism  in  which  it  is  used  as 
an  element.  Ex  parte  Adams,  C.  D.  1902,  100 
O.  G.  453. 

107.  Held,  that  division  was  properly  re- 
quired between  claims  to  a  spring-motor  and 
claims  to  that  motor  in  combination  with  a 
fan.  Ex  parte  Hoyt,  C.  D.  1902,  100  O.  G. 
2177. 

108.  Held,  that  division  should  be  required 
between  claims  to  the  general  gas-engine 
structure  and  specific  claims  covering,  re- 
spectively, a  self-lubricating  journal-box,  a 
lubricator  for  a  crank-pin,  a  crank-pin,  a 
speed-regulating  device,  a  valve  capable  of 
use  in  any  engine  structure.  Ex  parte  Tyler, 
C.  D.  1902,  100  O.  G.  2177. 

109.  Held,  that  division  was  properly  re- 
quired between  claims  to  specific  mechanism 
for  producing  coffee  and  claims  to  a  combina- 
tion of  any  means  for  producing  coffee  with 
specific  mechanism  for  measuring  the  coffee 
produced  and  preserving  its  aroma.  Ex  parte 
Schofield,  C.  D.  1902,  101  O.  G.  1S.30. 

110.  Division  was  properly  required  between 
claims  to  the  general  construction  of  copy- 
holders and  claims  including  the  specific  con- 
struction of  a  clamp  to  be  used  upon  copy- 
holders since  clamps  are  recognized  as  consti- 
tuting independent  subject-matter  of  inven- 
tion and  sale.  Ex  parte  Williamson,  C.  D. 
1902,   101   O.  G.  2571. 

111.  A  specific  form  of  clamp  is  a  different 
invention  from  the  general  copy-holder  con- 
struction and  remains  a  different  invention 
whether  mounted  for  use  upon  a  copy-holder 
or  not.  A  claim  including  it  in  combination 
with  a  copy-holder  is  no  less  a  claim  for  the 
clamp.     Id. 

112.  Division  required  between  claims  cov- 
ering a  motor-vehicle  and  claims  covering  the 
steam-power  apparatus  for  use  in  a  motor- 
vehicle.  Ex  parte  Tyson,  C.  D.  1902,  101  O. 
G.  3105. 


DIVISION  OF  APPLICATION,  VIII,  (c). 


117 


113.  Held,  that  division  was  properly  re- 
quired between  claims  to  the  general  construc- 
tion of  a  pump  and  claims  to  a  gear-wheel 
having  a  particular  construction  of  bearing 
and  lubricating  device.  Ex  parte  Hall  and 
Fraser,  C.  D,  1903,  lOf)  O.  G.  74.3. 

114.  Division  may  be  required  between 
claims  to  the  general  combination  and  claims 
to  a  subcombination  where  it  is  apparent  that 
the  subcombination  is  a  separate  and  inde- 
pendent invention  from  the  general  combina- 
tion.    Id. 

115.  Held,  that  division  was  properly  re- 
quired between  claims  which  cover  a  combina- 
tion of  parts  in  a  refrigerator  and  claims  to  a 
door-frame  which  is  shown  in  a  refrigerator, 
but  which  is  adapted  for  use  in  other  rela- 
tions. Ex  parte  Stevenson,  C.  D.  1903,  lO.-j 
O.  G.  744. 

116.  Held,  that  the  general  combination  in 
a  voting-machine,  key-locking  mechanism 
which  may  be  used  in  such  machine,  and 
mechanism  for  independent  voting  constitute 
three  independent  inventions  and  should  be 
claimed  in  separate  applications.  Ex  parte 
Benke,  C.  D.  1904,  108  O.  G.  1588. 

117.  Key-locking  mechanism  and  independ- 
ent-voting mechanism  have  been  made  sub- 
jects of  invention  independent  of  the  general 
improvements  in  voting-machines  and  are  use- 
ful in  other  relations.  They  therefore  con- 
stitute independent  inventions.     Id. 

(c)  Division  Not  Necessary. 

118.  An  applicant  cannot  in  one  case  have 
claims  limited  to  two  species  of  his  invention, 
but  he  may  have  combination  and  subcom- 
bination claims  which  are  embodied  in  all  of 
those  species.  Ex  parte  Moore,  C.  D.  1898, 
8.5  O.  G.  152. 

119.  Division  should  not  be  required  be- 
tween a  claim  to  a  combination  of  elements 
in  a  grinding-machine  and  a  claim  for  an  at- 
tachment to  be  used  in  that  machine  for  grind- 
ing curved  surfaces  when  it  does  not  appear 
that  such  attachments  have  acquired  a  dis- 
tinct status  in  art  and  manufacture,  and  are 
separately  classified  in  this  ofiice.  Ex  parte 
Bancroft  and  Thome,  C.  D.  1900,  90  O.  G. 
1539. 

120.  Where  an  attachment  when  in  place 
forms  with  the  other  elements  a  complete  or- 
ganized machine,  all  of  the  parts  of  which  co- 
operate to  grind  curved  surfaces.  Held,  that 
the    combination    of    parts    forming    that    at- 


tachment constitutes  a  subcombination  in  that 
organized  machine  and  that  a  claim  to  it  may 
properly  be  retained  in  the  same  case  with 
claims  to  other  combinations  of  elements.  Id. 

121.  Where  in  an  organized  fruit-gathering 
machine  the  raking  and  elevating  devices  are 
so  constructed  that  in  addition  to  the  func- 
tions of  gathering  the  fruit  from  the  ground 
and  elevating  the  same  to  the  separating  and 
assorting  mechanism  proper  they  also  cause  a 
preliminary  separation  of  the  fruit  from  the 
stones  and  clods  gathered  therewith.  Held, 
that  there  is  such  interdependence  between  the 
raking  and  elevating  mechanism  and  the  sep- 
arating and  assorting  mechanism  as  not  to 
warrant  division.  Ex  parte  Prosser,  C.  D. 
1901,  97  O.  G.  958. 

122.  Division  should  not  be  required  be- 
tween claims  covering  operating  mechanism 
of  a  locomotive  hand-car  and  claims  for  sub- 
combinations of  such  mechanism  where  it  does 
not  appear  that  these  subcombinations  are  use- 
ful in  other  relations  or  that  they  are  such  as 
would  be  separate  articles  of  manufacture. 
Ex  parte  Henderson,  C.  D.  1901,  97  O.  G. 
1599. 

123.  Where  an  applicant  claims  the  com- 
bination of  certain  signals,  switching  devices, 
and  safety-circuits  with  a  current-feeder  and 
sectional  rails  to  prevent  collisions  upon  the 
main  line  and  also  combinations  to  be  used 
in  connection  with  it  to  prevent  collisions 
upon  a  siding  and  drawbridge  casualties.  Held, 
that  the  combinations  mutually  contribute  to 
produce  a  single  result  and  that  division 
should  not  be  required.  Ex  parte  Kintner, 
C.  D.   1902,  98  O.  G.  581. 

124.  Where  all  of  the  claims  in  a  case  cover 
combinations  of  a  burner  and  a  chamber 
forming  a  heater  adapted  to  be  submerged  and 
differ  from  each  other  merely  in  scope,  Held, 
that  division  cannot  properly  be  required.  Ex 
parte  Mansfield  and  Hayes,  C.  D.  1902,  98  O. 
G.   2363. 

125.  A  party  cannot  be  deprived  of  com- 
bination claims  by  the  requirement  for  divi- 
sion between  the  elements  entering  into  it 
notwithstanding  the  fact  that  the  examiner 
regards  those  elements  as  constituting  inde- 
pendent inventions.    Id, 

126.  Held,  that  division  should  not  be  re- 
quired between  claims  for  the  combination  of 
a  specific  form  of  pump  for  pumping  water 
and  air  with  a  closed  receptacle  and  claims 
for  the  same  combination  with  the  addition 
thereto  of  a  specific  form  of  motor-governor 


118 


DIVISION  OF  APPLICATION,  IX,   (a),  (b). 


wliere   the  combinations  have  not  acquired   a 
distinct  status  in  the  art.     Ex  parte  Gushing, 

C.  D.  1902,  100  O.  G.  682. 

127.  Division  should  not  be  required  be- 
tween a  claim  for  a  stand  for  a  billiard-table 
and  a  claim  covering  the  stand  in  combina- 
tion with  the  table-adjusting  device.  Ex  parte 
Burrowes,  C.  D.  1902,  100  O.  G.  452. 

128.  Held,  that  division  should  not  be  in- 
sisted upon  between  claims  to  the  engine  bed 
or  frame  and  to  the  valve-gear  and  claims  to 
the  general  engine  structure  where  the  com- 
binations are  specially  adapted  for  use  in  the 
general  engine  structure.     Ex  parte  Tyler,  C. 

D.  1902,  100  O.  G.  680. 

129.  Held,  that  claims  for  a  valve  mechan- 
ism which  covers  a  structure  which  is  pecu- 
liarly adapted  for  use  in  the  general  gas-en- 
gine structure  disclosed  and  claimed  should 
not  be  divided  from  the  claims  covering  the 
general  gas-engine  structure.     Ex  parte  Tyler, 

C.  D.  1902,  100  O.  G.  217T. 

130.  Where  all  the  claims  include  a  motor 
as  an  element  and  no  one  of  them  includes 
any  element  beyond  the  frame  which  is  to 
be  oscillated  by  the  motor  and  in  each  of  the 
claims  is  included  as  an  element  the  means 
attached  to  the  frame  for  shifting  the  valve 
to  control  the  motor.  Held,  that  all  the  claims 
are  drawn  to  cover  a  motor  construction  and 
division  should  not  be  required.  Ex  parte 
Cramer  and  Haak,  C.  D.  1902,  101  O.  G.  220. 

131.  Where  some  of  the  claims  cover  the 
specific  form  of  mechanism  for  operating  the 
paddles  of  a  churn  and  others  include  the 
same  thing  and  as  an  additional  element  the 
paddle  which  is  operated.  Held,  that  division 
should  not  be  required.     Ex  parte  Lemire,  C. 

D.  1902,  101  O.  G.  1007. 

132.  Where  certain  claims  are  broad  to  all 
forms  and  other  claims  are  specific  to  one 
form  of  the  invention,  and  another  set  of 
claims  covers  a  construction  which  is  shown 
only  in  connection  with  one  specific  form,  but 
can  be  used  as  well  with  both  forms,  Held, 
that  the  several  claims  bear  the  relation  to 
each  other  of  combinations  and  subcombina- 
tions and  are  not  specific  to  different  forms 
of  the  same  invention.  Division  should  not 
be  required.  Ex  parte  Shevill  et  al.,  C.  D. 
1902,  101   O.  G.  2824. 

133.  Division  should  not  be  required  be- 
tween claims  for  a  harness  construction  and 
claims  for  a  particular  form  of  buckle  which 
is  not  adapted  for  independent  use  as  a  buckle, 
but  is  peculiarly  designed  for  use  in  a  harness 


construction.     Ex  parte  Wehn'er,  C.  D.  1902, 
101  O.  G.  3106. 

134.  A  claim  covering  a  particular  pivot 
construction  between  a  handle  and  a  foot- 
piece  of  a  mop,  Held,  to  be  for  a  subcom- 
bination of  the  combination  covered  by  other 
claims  for  the  general  construction  of  mop- 
liandles  and  wringers,  and  division  between 
the  two  sets  of  claims  should  not  be  required. 
Ex  parte  Davies,  C.  D.  1903,  105  O.  G.  1783. 

135.  Held,  that  division  should  not  be  re- 
quired between  claims  to  an  apparatus  for 
painting  and  claims  to  the  same  combination 
including  as  an  additional  element  a  mixer 
which  adapts  the  device  for  use  as  a  cleaner. 
The  structure  is  unitary  and  the  claims  are 
related  as  combination  and  subcombination. 
l';x  parte  Vegiard  dit  Labonte,  C.  D.  1903,  106 
O.  G.  700. 

IX.  Cl-^ssitication  in  Patent  Office. 
(a)  In  General. 

136.  The  requirement  of  the  examiner  that 
the  different  parts  of  a  dental  chair,  consist- 
ing of  a  hydraulic  lifting  mechanism,  a  head- 
rest, a  back-rest,  and  a  foot-rest,  should  be 
made  the  subject  of  separate  applications,  sus- 
tained as  to  the  lifting  mechanism  and  head- 
rest, but  reversed  as  to  the  back-rest  and  foot- 
rest.  Ex  parte  Wilkerson,  C.  D.  1899,  87  O. 
G.  513. 

137.  A  mere  difference  in  office  classification 
might  not  in  all  cases  justify  the  requirement 
for  division,  since  that  is  not  the  sole  and  ab- 
solute test;  but  it  is  one  of  the  tests  bearing 
upon  the  question  of  division.  Ex  parte  Pel- 
ton,  C.  D.  1901,  95  O.  G.  633. 

138.  As  a  rule  the  classification  of  the  of- 
fice follows  the  lines  established  by  manu- 
factures and  inventors,  and  therefore  it  is 
often  evidence  of  the  fact  that  the  devices 
have  acquired  a  distinct  status  in  the  arts.  Ex 
parte  Uhlig,  C.  D.  1903,  106  O.  G.  541. 

(b)  Division  Necessary. 

139.  The  action  of  the  examiner  in  requir- 
ing division  between  a  set  of  claims  cover- 
ing subject-matter  classified  and  examinable 
in  Division  I  under  "Fences,  gate-openers,  cab- 
doors"  and  another  set  of  claims  relating  to 
a  distinct  and  independent  invention  which  is 
examinable  in  Division  XX  under  "Builders' 
Hardware,  hinges,  coach"  affirmed.  Ex  parte 
Lawrence,  C.  D.  1898,  84  O.  G.  1141. 


DIVISION  OF  APPLICATION,  IX,  (c),  X,  (a). 


119 


140.  The  head-rest  is  a  mere  improvement 
and  is  not  especially  adapted  for  the  particu- 
lar chair  shown,  and  other  head-rests  may  be 
substituted  for  this  one,  and  as  it  is  separate- 
ly classified  in  the  office  classification  from 
other  parts  of  a  dental  chair  and  has  been 
made  the  subject  of  separate  invention  it 
should  be  put  in  an  application  separate  from 
the  other  parts  of  the  chair.  Ex  parte  Wil- 
kerson,  C.  D.  1899,  8T  O.  G.  513. 

141.  Although  it  has  been  the  practice  of 
the  office  to  allow  all  parts  of  a  dental  chair  to 
be  claimed  in  one  application,  should  appli- 
cant so  elect,  the  time  has  come,  owing  to  the 
increased  number  of  patents  in  the  office  and 
the  extension  of  the  field  of  search,  when  this 
practice  should  be  discontinued.     Id. 

142.  When  an  application  shows,  describes, 
and  claims  a  device  which  in  its  entirety  pre- 
sents subjects-matter  which  are  classified  in 
different  divisions  of  the  office,  Held,  that  di- 
vision should  be  required  and  separate  appli- 
cations presented,  each  of  which  should  in- 
clude only  claims  to  devices  which  are  classi- 
fied in  a  single  division.  E.x  parte  Rouse,  C. 
D.  1899,  88  O.  G.  2242. 

143.  Focusing  devices  being  independent 
subject  of  invention  from  the  other  parts  of 
a  camera,  and  separately  classified.  Held,  that 
it  is  necessary  for  the  proper  conduct  of  the 
business  of  the  office  that  they  be  claimed  in 
separate  applications.  Ex  parte  Brownell,  C. 
D.  1901,  94  O.  G.  988. 

144.  Held,  that  division  was  properly  re- 
quired between  claims  to  a  photographic  cam- 
era, a  focusing  device,  and  a  finder,  since  they 
have  been  made  independent  subjects  of  in- 
vention and  are  separately  classified  in  this 
office.    Id. 

145.  Held,  that  division  was  properly  re- 
quired between  claims  to  a  mechanism  for 
measuring  a  boot  and  shoe  last  and  claims  to 
a  slide-rule,  since  the  two  devices  are  inde- 
pendent in  function  and  operation  and  are 
classified  in  this  office  in  different  classes  and 
in  different  divisions.  Ex  parte  Dwycr,  C.  D. 
1901,  9.')  O.  G.  1247. 

146.  The  mere  fact  that  the  slide-rule  in 
this  case  is  adapted  by  reason  of  the  informa- 
tion conveyed  thereby  for  use  in  the  same 
general  art  as  the  shoemaker's  measure  does 
not  make  the  two  constitute  the  same  or  de- 
pendent inventions.    Id. 

147.  Held,  that  division  was  properly  re- 
quired between  claims  to  a  mixing  and  knead- 
ing machine  and  claims  covering  a  cleaning- 


machine,  since  they  constitute  independent  in- 
ventions and  are  examinable  in  different  divi- 
sions of  the  office.  Ex  parte  Stacey,  C.  D. 
1904,  108  O.  G.  1050. 

148.  The  fact  that  patents  covering  sev- 
eral inventions  would  be  placed  in  one  class 
is  no  reason  for  overruling  a  requirement  for 
division  where  the  inventions  are  independent. 
Ex  parte  Benke,  C.  D.  1904,  108  O.  G.  1588. 

(c)  Division  Not  Necessary. 

149.  Although  foot-rests  and  adjustable 
backs  of  a  dental  chair  are  separately  classi- 
fied in  the  office,  yet  from  the  showing  made 
by  applicant  the  claims  for  these  two  in- 
ventions may  be  permitted  to  remain  in  the 
application,  as  it  does  not  appear  that  they 
form  the  subject  of  separate  invention  or  that 
other  foot-rests  or  back-rests  may  be  sub- 
stituted for  those  made  for  the  particular 
chair  shown.  Ex  parte  Wilkerson,  C.  D.  1899, 
87  O.  G.  513. 

X.  Different  Species. 
(a)  In  General. 

150.  The  case  of  Miller  v.  Eagle  Manufac- 
turing Co.  (C.  D.  1894,  147,  G6  O.  G.  845)  does 
not  hold  that  a  patent  cannot  issue  to  A  with 
a  generic  claim  and  to  B  with  a  specific  claim, 
both  based  on  the  disclosure  of  the  same  spe- 
cies. Williams  v.  Perl,  C.  D.  1899,  87  O.  G. 
1607. 

151.  Where  a  party  wishes  to  claim  the  gen- 
eral combination  of  parts  and  the  specific 
form  of  some  of  the  elements,  he  should  in- 
clude the  preferred  form  of  the  elements  in 
the  figure  of  the  drawings  illustrating  the 
combination  which  he  wishes  to  claim,  so  that 
all  claims  will  read  upon  the  device  shown  in 
a  single  figure.  Ex  parte  Welch,  C.  D.  1900, 
93  O.  G.  2104. 

152.  When  an  application  contains  a  gen- 
eric claim  and  claims  for  two  distinct  species, 
a  requirement  that  the  claims  be  limited  to  a 
single  species  is  equivalent  to  a  requirement 
for  division  under  Rule  41.  This  limitation 
should  be  made  prior  to  any  action  on  the 
merits.  Ex  parte  Worden,  C.  D.  1902,  99  O. 
G.  1622. 

153.  A  party  may  include  in  one  case  generic 
claims  and  claims  to  one  species,  but  may  not 
include  claims  limited  to  different  species.  Ex 
parte  Dallas,  C.  D.  1903,  106  O.  G.  996. 


120 


DIVISION  OF  APPLICATION,  X,  (b),  (c). 


154.  Where  the  examiner  rejected  certain 
claims  on  the  ground  that  they  cover  a  differ- 
ent modilication  from  other  claims,  Held,  that 
his  action  was  wrong  and  should  have  been 
a  requirement  for  division.  Ex  parte  Calla- 
more  and  Kerst,  C.  D.  1903,  lO.",  O.  G.  746. 

155.  Where  the  claims  of  an  application  spe- 
cifically cover  different  modifications  of  the 
invention.  Held,  that  the  examiner  should  re- 
quire division  and  allow  the  applicant  to  elect 
which  modification  he  will  prosecute.     Id. 

156.  On  a  requirement  for  division  on  the 
ground  that  the  claims  cover  different  species 
the  particular  claims  alleged  to  be  restricted 
to  certain  species  should  be  specified,  and  if 
applicant  is  unable  to  understand  the  require- 
ment the  examiner  should  specify  the  par- 
ticular elements  in  the  claims  which  read  on 
one  species  and  not  on  another.  Ex  parte 
Ljungstrom,  C.  D.  1903,  119  O.  G.  2235. 

157.  Where  a  requirement  for  division  be- 
tween process,  article,  and  apparatus  claims, 
made  by  the  primary  examiner  and  affirmed 
by  the  examiners-in-chief  and  commissioner, 
has  been  complied  with  the  examiner  is  not 
precluded  from  requiring  division  between  the 
claims  presented  in  one  of  the  divisional  ap- 
plications relating  to  the  article  upon  the 
ground  that  they  cover  different  "species.  The 
question  of  division  as  between  different  spe- 
cies of  the  article  is  not  res  adjudicata  in  the 
divisional  application,  as  it  was  not  one  of 
the  questions  passed  upon  by  the  examiners-in- 
chief.  Ex  parte  McHale,  C.  D.  1908,  135  O. 
G.  1361. 

158.  Division  between  claims  to  different 
species  of  a  generic  invention,  Held,  properly 
required  (citing  ex  parte  Eagle,  1870,  C.  D. 
137.)  Ex  parte  Weston,  C.  D.  1911,  173  O. 
G.  285. 

159.  The  office  cannot  undertake  to  examine 
into  the  patentability  of  more  than  one  inven- 
tion in  a  single  application,  and  where  division 
is  required  on  the  ground  that  the  case  pre- 
sents a  plurality  of  inventions  the  exammer 
rightly  deferred  an  examination  on  the  pat- 
entability of  the  claims  until  the  question  of 
division  was  settled  (citing  ex  parte  Snyder, 
110  O.  G.  223G;  ex  parte  Grain,  126  O.  G.  758.) 

Id. 

(b)  Division  Necessary. 

160.  Where  a  claim  includes  features  which 
could  not  be  used  with  the  device  set  forth 
specifically  in  other  claims,  Held,  that  the 
claims    are    inconsistent    and    cover    different 


modifications    of    the    invention.      Ex    parte 
Welch,  C.  D.  1900,  93  O.  G.  2104. 

161.  Two  or  more  specific  forms  of  the 
same  invention  cannot  be  specifically  claimed 
in  the  same  application.  Ex  parte  Plumley, 
C.  D.  1902,  101  O.  G.  447. 

162.  Where  two  forms  of  joint  for  fasten- 
ing together  the  edges  of  metal  plates  are  dis- 
closed and  specifically  claimed  in  one  appli- 
cation, Held,  that  division  was  properly  re- 
quired, notwithstanding  the  fact  that  both 
joints  may  be  used  upon  different  parts  of  the 
same  article.  Ex  parte  Burmeister,  C.  D.  1902, 
101   O.  G.  662. 

163.  Joints  for  metal  plates  have  acquired  a 
distinct  status  in  art  and  manufacture  and 
one  form  may  be  used  as  a  substitute  for 
another.  Two  forms  constitute  two  species 
of  the  invention  and  cannot  be  claimed  in  one 
case.    Id. 

164.  Held,  that  two  different  constructions 
for  fastening  calks  to  horseshoes  constitute 
independent  inventions  although  both  might 
be  used  on  one  shoe.  Ex  parte  Rodenbaugh 
and  Laurentz,  C.  D.  1902,  101  O.  G.  1830. 

165.  Where  one  set  of  claims  calls  for  an 
element  which  is  not  applicable  to  or  capable 
of  use  in  the  structure  covered  by  another 
set  of  claims,  Held,  that  this  shows  the  inven- 
tions covered  by  the  sets  of  claims  respectively 
are  for  different  species,  and  the  requirement 
of  division  is  sustained.  Ex  parte  Brown,  C. 
D.  1904,  108  O.  G.   1052. 

166.  Held,  that  the  claims  cover  two  species 
of  the  invention,  and  that  division  was  prop- 
erly required.  Ex  parte  Butcher,  C.  D.  1904, 
108  O.  G.  1587. 

(c)  Division  Not  Necessary. 

167.  Where  a  set  of  claims  can  be  based 
upon  one  specific  product,  there  is  no  reason 
why  they  should  not  be  permitted  to  remain 
in  the  same  application.  Claims  so  drawn  are 
drawn  in  accordance  with  the  doctrine  of 
genus  and  species.  Ex  parte  Gassman,  C.  D. 
1900,  90  O.  G.  959. 

168.  Where  an  examiner  stated  that  he  was 
willing  to  allow  two  claims  of  an  application 
for  a  product  for  dyeing  fabrics,  but  insisted 
that  the  other  claims  for  a  more  specific  pro- 
duct be  canceled  on  the  ground  that  to  per- 
mit them  to  remain  in  the  application  would 
be  contrary  to  ex  parte  Eagle  (C.  D.  1870, 
137),  the  examiner's  requirement  as  to  the 
limitation  of  the  claims  being  based  upon  the 


DIVISION  OF  APPLICATION,  XI,  XII,   (a). 


121 


assumption  that  a  "dialkyl  rhodamine"  is  not 
a  species  of  "rliodaminc,"  but  (hat  the  two 
substances  are  different  species  of  the  genus 
"a  phtaleine,"  Held,  that  were  the  examiner's 
assumption  correct  the  requirement  might 
have  been  well  founded ;  but  as  dialkyl  rho- 
damine is  held  to  be  a  species  of  rhodamine 
his  requirement  was  wrong.     Id. 

169.  Where  the  claims  will  not  all  read  upon 
a  single  figure  of  the  drawings,  but  are  not 
inconsistent  and  will  read  upon  a  single  device 
which  might  be  shown  in  a  single  figure,  Held. 
that  they  do  not  cover  different  species  or 
modifications.  Ex  parte  Welch,  C.  D.  1900, 
93  O.  G.  2104. 

170.  Where  all  the  elements  included  in  a 
claim  are  common  to  the  forms  of  the  in- 
vention disclosed  in  all  the  figures  and  though 
the  claim  does  include  a  specific  form  of  nut 
which  the  applicant  has  chosen  to  illustrate 
in  one  of  the  figures  and  to  refer  to  said  fig- 
ure for  a  description  of  the  same  and  it  is 
obvious  that  this  specific  nut  is  interchangeable 
with  the  common  form  of  nut  illustrated  in 
another  figure,  Held,  that  the  claim  is  generic. 
A  distinction  should  be  made  between  the  in- 
vention disclosed  and  a  specific  illustration  of 
said  invention.  E.x  parte  Metzger,  C.  D.  1902, 
101  O.  G.  11512. 

179.  Where  one  claim  covers  a  sheet  made 
of  an  impervious  substance  and  another  claim 
says  that  there  are  holes  punched  in  the  sheet. 
Held,  that  the  claims  are  not  inconsistent  and 
do  not  cover  two  species  of  the  invention.  Ex 
parte  Nash,  C.  D.  190;i,  104  O.  G.  1896. 

172.  Where  in  a  velocity-regulator  for 
fluids  one  form  shows  the  governing  device 
connected  directly  to  a  valve  in  the  conduit 
and  in  another  the  governing  device  is  con- 
nected to  the  throttle-valve  in  the  steam-pipe 
which  regulates  the  admission  of  the  steam 
to  an  engine  for  operating  a  pump,  which 
pump  forces  the  fluid  through  the  conduit. 
Held,  that  these  two  devices  are  specific  forms 
of  the  same  generic  invention.  Ex  parte 
Herreshoflf,  C.  D.  1903,  lOG  O.  G.  1779. 

173.  Where  claims  are  presented  which 
cover  a  generic  invention  and  other  claims 
are  specific  to  but  one  of  the  forms  shown. 
Held,  that  division  should  not  be  required.   Id. 

174.  An  applicant  is  permitted  to  show  sev- 
eral species  of  an  invention  when  the  state  of 
the  art  permits  a  claim  to  be  presented  and 
allowed  which  is  broad  enough  to  cover  all  the 
species  shown  and  described.    Id. 


XI.  Processes. 

175.  Where  in  one  claim  a  step  in  a  process 
covered  by  another  claim  is  omitted  without 
changing  the  order  in  which  the  other  steps  in 
the  process  are  performed,  Held,  that  the 
claims  do  not  cover  such  different  processes 
that  it  is  necessary  to  put  them  in  separate 
applications.  Ex  parte  Oxnard  and  Baur,  C. 
D.  1899,  88  O.  G.  1."j2G. 

176.  An  applicant  may  properly  in  one  case 
have  claims  covering  the  principal  or  essen- 
tial steps  of  a  process  and  other  claims  includ- 
ing those  steps,  together  with  other  specific 
steps  which  are  not  absolutely  necessary  to 
the  performance  of  the  process,  but  which 
add  to  its  efficiency  or  make  its  operation 
more  perfect.     Id. 

177.  Where  one  claim  covers  a  process  of 
making  a  die  and  another  includes  the  same 
specific  process  and  the  additional  step  of 
casting  a  record  from  the  die,  Held,  that  divi- 
sion should  not  be  required.  Ex  parte  Clay, 
C.  D.  19U2,  101   O.  G.  2367. 

XII.  Process  and  Apparatus. 
(a)  In  General. 

178.  That  a  machine  or  apparatus  and  pro- 
cess are  separate  and  independent  inventions 
seems  to  be  well  settled  by  the  decisions  of  the 
courts  and  of  this  office.  Ex  parte  Frasch, 
C.  D.  1900,  91  O.  G.  4.59. 

179.  The  question  whether  claims  for  a 
process  and  claims  for  an  apparatus  should 
be  permitted  in  the  same  application  is  one 
of  office  policy,  and  it  is  wise  to  exercise  the 
discretion  vested  in  the  commissioner  and  re- 
quire that  claims  for  a  machine  or  apparatus 
and  its  process  be  presented  in  separate  appli- 
cations. The  importance  of  classification  and 
of  a  uniform  practice  in  the  oflice  is  sufficient 
to  warrant  this.    Id. 

180.  Because  a  proces-  and  an  apparatus  are 
examinable  in  the  same  division  or  in  the  same 
class  is  no  reason  why  they  should  be  per- 
mitted to  remain  in  the  same  application.  .\ 
decision  based  upon  that  ground,  while  it 
might  apply  at  the  time  it  was  made,  may  not 
apply  to  a  similar  case  a  short  time  thereafter. 
Divisions,  classes,  and  subclasses  are  continu- 
ally changing  in  the  office,  and  what  might  be 
in  a  certain  division  to-day  might  not  be  to- 
morrow, and  were  division  required  on  such 
lines  it  would  be  unstable  and  subject  to  fre- 
quent changes.     Id. 


122 


DIVISION  OF  APPLICATION,  XII,   (b). 


181.  If  applications  for  process  and  appa- 
ratus are  properly  prepared  and  the  line  of 
division  is  properly  made,  the  courts  will  not, 
judging  from  the  past,  hold  one  or  the  other 
patent  invalid  for  the  reason  that  the  claims 
are  contained  in  separate  patents.     Id. 

182.  That  the  independence  of  apparatus 
and  process  is  clear  in  view  of  the  language 
of  Rule  41,  which  states  that  claims  for  a  pro- 
cess and  for  an  apparatus  must  be  placed  in 
separate  applications,  is  unquestionable,  and 
the  requirement  of  division  is  properly  made 
under  Rule  42  before  any  action  on  the  merits. 
Id. 

183.  Rule  41  of  the  patent  office  in  so  far 
as  it  requires  a  division  between  claims  for  a 
process  and  claims  for  an  apparatus,  if  they 
are  related  and  dependent  inventions,  is  in- 
valid. **Ex  parte  Frasch,  C.  D.  1904,  109  O. 
G.  S-M. 

184.  The  provision  in  Rule  41  of  the  Rules 
of  Practice  of  the  patent  office  which  compels 
the  separation  of  claims  for  a  process  and 
claims  for  its  apparatus  is  invalid,  because 
it  precludes  exercise  of  any  judgment,  how- 
ever related  or  connected  they  may  be. 
**Unitcd  States  ex  rel.  Steinmetz  v.  Allen, 
Commissioner  of  Patents,  C.  D.  1904,  109  O. 
G.  549. 

185.  The  statute  gives  the  right  to  join  in- 
ventions in  one  application  in  cases  where  the 
inventions  are  related,  and  it  cannot  be  de- 
nied by  a  hard  and  fixed  rule  which  prevents 
such  joinder  in  all  cases.    **Id. 

186.  Process  and  apparatus  may  be  related 
and  may  approach  each  other  so  nearly  that 
it  will  be  difficult  to  distinguish  the  process 
from  the  function  of  the  apparatus.     **Id. 

187.  Process  and  apparatus  claims  may  in 
some  cases  be  so  related  as  to  make  it  proper 
to  include  them  in  one  application,  and  there- 
fore a  requirement  for  division  should  not 
be  based  upon  the  broad  and  general  proposi- 
tion that  process  and  apparatus  are  always  in- 
dependent, but  should  be  based  upon  the  con- 
clusion that  the  particular  process  and  par- 
ticular apparatus  are  not  so  related  as  to  war- 
rant including  them  in  one  case.  The  reasons 
for  the  conclusion  should  be  stated.  Ex  parte 
Ament,  C.  D.  1905,  116  O.  G.  596. 

188.  Where  it  is  urged  that  the  commission- 
er had  no  valid  authority  to  require  division 
between  process  and  apparatus  claims,  Held, 
that  the  ruling  of  the  supreme  court  in  Stein- 
metz V.  Allen  is  the  guiding  authority  in  de- 


termining this  question.    *In  re  Frasch,  C.  D. 
1906,  122  O.  G.  1048. 

189.  The  decision  of  the  supreme  court  in 
Steinmetz  v.  Allen  interpreted  to  mean  that  a 
process  and  an  apparatus,  while  presumptive- 
ly independent  inventions  when  considered  in 
the  light  of  section  4886,  Revised  Statutes, 
they  nevertheless  may  be  so  connected  in  their 
design  and  operation  as  to  constitute  a  unitary 
invention ;  that  when  constituting  independent 
inventions  they  may  not  be  claimed  in  one  and 
the  same  application ;  that  when  so  dependent 
as  to  constitute  a  unitary  invention  they  may 
be  claimed  in  one  and  the  same  application. 
*Id. 

190.  Held,  that  the  statute  being  constitu- 
tional and  the  supreme  court  having  laid  down 
the  rule  that  not  in  all  cases  can  claims  for 
process  and  apparatus  be  joined  in  one  ap- 
plication, it  follows  that  the  commissioner  in 
requiring  division  exercises  a  valid  authority 
and  if  correctly  exercised  no  error  is  com- 
mitted.    *Id. 

(b)  Division  Necessary. 

191.  Process  and  apparatus  are  separate  and 
independent  inventions,  and  claims  covering 
both  should  not  be  joined  in  the  same  appli- 
cation. Ex  parte  Boucher,  C.  D.  1899,  88  O. 
G.   545. 

192.  The  argument  that  claims  for  the  pro- 
cess and  apparatus  should  be  permitted  to  be 
joined  in  the  same  application  in  the  interest 
of  inventors  to  save  them  from  the  expense 
of  filing  two  applications  is  of  little  force,  in 
view  of  the  fact  that  statutory  charge  for  the 
examination  of  an  application  is  reasonable, 
and  it  would  be  unjust  to  the  government,  to 
the  public  at  large,  and  to  other  inventors  to 
permit  one  of  their  number  to  present  several 
inventions  for  examination  under  a  single  fee 
and  receive  more  of  the  time  of  the  examiner 
than  he  had  paid  for.  (Ex  parte  Yale,  C.  D. 
1869,  110,  cited.)     Id. 

193.  The  argument  that  claims  for  process 
and  for  apparatus  should  be  permitted  to  be 
joined  in  the  same  application  because  the 
courts  have  not  declared  patents  invalid  as 
covering  more  than  one  invention  does  not 
rest  on  any  firm  foundation,  and  the  answer 
to  it  is  that  while  there  are  numerous  cases 
in  which  it  has  been  held  that  a  patent  once 
granted  is  to  be  liberally  construed,  and  that 
it  is  to  be  presumed  that  public  officers  do 
their  duty,  that  the  court  will  not  inquire  into 


DIVISION  OF  APPLICATION,  XII,   (c). 


123 


slight  defects  or  mere  informalities  in  the 
grant  of  letters  patent  where  there  is  a  meri- 
torious invention,  yet  it  would  be  a  grave 
error  to  found  upon  such  decisions  a  rule  of 
action  for  the  commissioner,  for  it  by  no 
means  follows  because  a  patent  has  been  sus- 
tained notwithstanding  certain  informalities  in 
the  issue  that  every  succeeding  patent  is  to  ex- 
hibit the  same  informalities.  (Ex  parte  Yale, 
C.  D.  1809,  110,  cited.)     Id. 

194.  Process  and  apparatus  should  not  be 
joined  in  the  same  application  because  they 
are  examinable  in  the  same  division.  The 
classification  of  inventions  is  necessarily  sub- 
ject to  frequent  changes  through  the  advance 
in  the  arts,  requiring  the  organization  of  new 
divisions  and  the  establishment  of  new  classes 
and  subclasses.  It  naturally  follows  that  a 
decision  based  upon  this  ground  while  apply- 
ing at  the  time  when  it  was  rendered  to  the 
case  in  point  might  not  apply  to  an  identically 
similar  case  thereafter.     Id. 

195.  While  it  may  be  that  a  perfect  exam- 
ination as  to  the  novelty  of  an  apparatus  re- 
quires the  same  labor  on  the  part  of  the  ex- 
aminer that  would  be  required  if  process  and 
apparatus  were  both  claimed  in  the  same  ap- 
plication, yet  this  cannot  always  be  so, 
and  even  though  one  examination  will 
answer  for  both  process  and  apparatus 
claims,  yet  that  affords  no  good  reason 
for  permitting  two  inventions  to  be  claimed 
in  one  application.  An  examination  system 
to  be  of  value  must  be  a  perfect  one,  and 
perfection  will  be  more  readily  attained  by 
the  requirement  that  separate  applications  be 
filed  for  a  process  and  an  apparatus.     Id. 

196.  The  prior  decisions  on  the  question  of 
division  between  process  and  apparatus  re- 
viewed and  Held,  that  the  practice  of  the  of- 
fice on  this  question  would  be  less  liable  to 
frequent  change  if  a  rule  clearly  setting  forth 
the  line  of  action  to  be  followed  were  promul- 
gated and  change  in  Rule  41  indicated.    Id. 

197.  Where  upon  requirement  of  division 
under  Rule  41  between  claims  for  method  and 
claims  for  apparatus  applicant  contended  that 
his  is  a  case  in  which  the  invention  covered 
by  each  of  the  method  claims  is  the  result  of 
the  same  inventive  act  which  produced  the 
invention  covered  by  the  broader  of  the  cor- 
responding apparatus  claims  and  that  there- 
fore he  should  be  permitted  to  present  in  one 
application  method  and  apparatus  claims,  Held. 
that  conceding  the  facts  to  be  as  contended 
for,  yet  there  are  two  inventions  claimed  and 


the  requirement  of  division  was  proper  and 
should  be  complied  with.  Ex  parte  Fish,  C. 
D.  1900,  91  O.  G.  1615. 

198.  Product  and  process  are  quite  distinct 
matters,  even  where  both  are  created  by  the 
same  inventive  act.  (L.  Durand  v.  Green,  C. 
D.  1894,  29],  67  O.  G.  814.)  Apparatus  and 
process  are  certainly  quite  as  distinct  matters 
and  there  is  no  reason  for  departing  from  the 
rule.     Id. 

199.  Where  the  process  consists  in  conden- 
sing steam  upon  an  incrusted  surface  and  the 
apparatus  consists  of  chambers  with  heat- 
conducting  partition  and  certain  inlets  and 
outlets  for  convenient  carrying  on  of  the  pro- 
cess. Held,  that  there  is  an  utter  absence  of 
necessary  relation  between  such  process  and 
apparatus,  and  division  was  properly  required 
between  the  respective  claims  to  the  same.  Ex 
parte  Frasch,  C.  D.  1905,  117  O.  G.  IICC. 

(c)  Division  Not  Necessary. 

200.  Division  should  not  be  required  be- 
tween claims  to  an  apparatus  and  alleged 
process  claims  which  cover  the  mere  function 
or  operation  of  the  apparatus.  Ex  parte  Stein- 
metz,  C.  D.  1905,  117  O.  G.  901. 

201.  The  function  or  operation  of  an  ap- 
paratus cannot  be  regarded  as  an  invention 
separate  and  independent  of  the  apparatus. 
Id. 

202.  Division  should  not  be  required  be- 
tween claims  to  an  apparatus  and  claims  to 
an  alleged  process  on  the  ground  that  the 
supposed  process  is  a  mere  function  of  the 
apparatus  and  not  a  patentable  invention  of 
any  kind.  Division  cannot  be  required  be- 
tween something  and  nothing.     Id. 

203.  In  passing  upon  the  question  of  divi- 
sion the  things  claimed  must  be  assumed  to 
constitute  inventions  of  some  kind,  since  there 
is  no  authority  for  requiring  division  between 
something  which  is  an  invention  and  some- 
thing which  is  not  an  invention,  but  only  be- 
tween independent  inventions.     Id. 

204.  In  determining  the  question  of  divi- 
sion it  is  not  of  consequence  whether  either 
the  process  or  the  apparatus  is  patentable, 
since  the  sole  question  is  whether  the  subject- 
matter  stated  in  the  process  claims  is  so  sep- 
arate and  independent  of  the  subject-matter 
stated  in  the  apparatus  claims  as  to  warrant 
the  requirement  that  the  claims  be  presented 
in  separate  applications.    Id. 


124 


DIVISION  OF  APPLICATION,  XIII,  (a). 


205.  It  must  be  taken  as  settled  by  the  su- 
preme court  that  it  is  proper  in  some  cases  to 
join  in  one  application  claims  to  an  apparatus 
and  claims  in  the  form  of  a  process.  Wheth- 
er or  not  the  circumstances  of  a  particular 
case  justify  the  joinder  is  a  matter  for  the 
exercise  of  discretion.     Id. 

206.  Held,  that  for  the  purpose  of  deter- 
mining the  question  of  division  the  claims 
must  be  taken  as  they  read,  and  if  they  con- 
tain  limitations,  whether  proper  or  improper, 

.  which  make  the  alleged  process  claims  indi- 
visible from  the  apparatus  claims  division 
cannot  be  required.  Ex  parte  Frasch,  C.  D. 
190.5,  117  O.  G.  1166. 

207.  Held,  that  a  mere  mode  of  operating 
apparatus  cannot  be  regarded  as  so  unrelated 
to  the  apparatus  itself  that  division  can  be 
required  between  claims  to  processes  which 
amount  to  mere  statements  of  the  former  and 
claims  to  the  latter.  The  distinct  and  inde- 
pendent inventions  upon  which  requirements 
for  division  must  rest  are  lacking.     Id. 

208.  Held,  that  in  many  cases  the  question 
of  division  between  process  and  apparatus 
claims  will  be  simplified  by  consideration  of 
the  question  whether  the  process  claims  cover 
the  mere  function  or  operation  of  the  appa- 
ratus, and  if  they  do  cover  the  mere  func- 
tion or  operation  of  the  apparatus  disclosed 
and  claimed  they  should  be  rejected  as  not 
covering  proper  processes  and  division  should 
not  be  required.     Id. 

XIII.  Process  and  Product. 
(a)  Division  Necessary. 

209.  A  woven  fabric,  a  process  of  produc- 
ing the  fabric  and  winding  yarn,  an  apparatus 
for  winding  yarn  on  the  spool,  and  a  yarn- 
spool  or  bank-spool  are  each  separate  and  in- 
dependent inventions  and  should  form  the 
subject  of  separate  applications.  Ex  parte 
Tymeson  and  Borland,  C.  D.  1898,  83  O.  G. 

210.  That  paragraph  of  Rule  41  which  re- 
cites that  claims  for  a  process  and  its  pro- 
duct may  be  presented  in  the  same  applica- 
tion gives  the  applicant  authority  to  a  certain 
extent  to  join  claims  for  process  and  product 
or  file  separate  applications  therefor;  but  it 
does  not  take  away  the  right  of  the  office  to 
supervise  and  control  this  authority  should 
occasion  for  the  exercise  of  the  reserve  power 
arise.  Ex  parte  Erdman,  C.  D.  1900,  93  O.  G. 
2531. 


211.  Where  it  appears  on  examination  of  the 
application  that  the  method  of  making  the 
projectile  and  the  projectile  itself  are  exam- 
inable in  different  divisions  and  that  the  pro- 
jectile may  be  made  by  other  methods  than 
that  claimed.  Held,  that  division  should  be  re- 
quired.   Id. 

212.  Where  it  is  evident  upon  mere  inspec- 
tion that  the  process  covered  by  one  claim 
dues  not  necessarily  produce  the  article  cov- 
ered by  another  claim.  Held,  that  the  inde- 
pendence of  the  invention  is  clear  and  that 
it  is  not  necessary  for  the  examiner  to  cite 
references  or  state  reasons  in  support  of  his 
requirement  for  division.  Ex  parte  Reid,  C. 
D.  1901,  91)  O.  G.  2060. 

213.  Claims  for  a  method  of  making  a  por- 
tion of  a  sole  should  not  be  included  in  the 
same  application  with  claims  for  said  portion 
when  it  is  clear  that  the  method  is  not  lim- 
ited to  the  mere  production  of  the  article,  but 
covers  features  not  necessarily  related  there- 
to. Ex  parte  Parent,  C.  D.  1902,  98  O.  G. 
1970. 

214.  Division  properly  required  between  a 
claim  for  an  axe  as  an  article  of  manufacture 
and  claims  for  a  method  of  finishing  axes, 
which  method  is  applicable  to  other  articles 
and  does  not  necessarily  result  in  the  par- 
ticular product.  Ex  parte  Powell,  C.  D.  1902, 
99  O.  G.  1384. 

215.  Division  was  properly  required  between 
claims  covering  a  golf-ball  and  claims  cover- 
ing the  process  of  making  the  same  where 
it  appears  that  the  golf-balls  are  not  neces- 
sarily the  product  of  the  method  and  that  they 
could  be  made  by  other  methods  than  that 
claimed.  Ex  parte  Foulis,  C.  D.  1902,  100  O. 
G.  232. 

216.  Held,  that  division  was  properly  re- 
quired between  a  claim  for  the  process  of 
making  a  box  and  a  claim  for  the  box  where 
the  box  is  not  necessarily  made  by  the  pro- 
cess. Ex  parte  Schmidt,  C.  D.  1902,  100  O.  G. 
2602. 

217.  Gears  and  the  processes  of  cutting  them 
have  acquired  a  distinct  status  in  the  art,  are 
classified  in  different  divisions  of  the  ofiice,  and 
have  been  made  independent  subjects  of  in- 
vention. Held,  therefore,  that  they  should  be 
presented  in  separate  applications.  Ex  parte 
Christensen,  C.  D.  1903,  10.5  O.  G.  1261. 

218.  Where  one  set  of  claims  covers  an  ar- 
ticle and  another  set  of  claims  covers  the  pro- 
cess of  making  the  article  and  it  is  clear  that 
the  article  claimed  is  independent  of  any  par- 


DIVISION  OF  APPLICATION,  XIII,  (a),  XIV,  (a). 


123 


ticular  process  of  making  it.  Held,  that  divi- 
sion between  the  two  sets  of  claitns  should  be 
required.  Ex  parte  Williams,  C.  D.  1903,  105 
O.  G.  1780. 

219.  Where  an  allcKcd  method  does  not  pro- 
duce the  complete  device,  but  a  subcombina- 
tion thereof,  Hdd.  that  a  claim  for  the  meth- 
od should  be  divided  from  the  claims  for  the 
general  combination  and  subcombination  of 
the  same.  Ex  parte  Davies,  C.  D.  1903,  105 
O.  G.  1783. 

220.  Held,  that  division  was  properly  re- 
quired between  an  article  of  manufacture  and 
a  process  of  making  it  where  it  is  evident  that 
the  article  as  claimed  could  be  made  by  other 
processes.  Ex  parte  \'ery,  C.  D.  1903,  106  O. 
G.  766. 

(b)  Division  Not  Necessary. 

221.  Held,  that  division  should  not  be  re- 
quired between  claims  to  a  process  of  deposit- 
ing zinc  on  metallic  surfaces  and  claims  to 
the  article  produced  where  there  is  doubt  as 
to  the  possibility  of  producing  the  article  by 
any  other  process  and  the  process  will  not 
produce  any  other  article.  Ex  parte  Cowper- 
Coles,  C.  D.  1902,  100  O.  G.  681. 

222.  Where  the  process  set  forth  in  some 
claims  necessarily  produces  the  product  set 
forth  in  others  and  there  is  a  close  relation- 
ship between  them,  although  it  is  possible 
that  the  product  may  be  made  by  other  pro- 
cesses, Held,  that  the  claims  may  be  retained 
in  one  application  if  no  wider  range  of  search 
is  required.  Ex  parte  Dallas,  C.  D.  1903,  106 
O.  G.  996. 

223.  Held,  that  division  should  not  be  re- 
quired between  a  kalsomine  composition  and 
the  process  of  making  it  where  the  process 
necessarily  results  in  the  composition  and  the 
field  of  search  is  the  same  for  both.  Ex 
parte  Adams,  C.  D.  1903,  106  O.  G.  541. 

XIV.  Status    in    Arts  ;    Manufacture    and 
Sale;  Office  Classification.  Etc. 

(a)  Division  Necessary. 

224.  Since  telephone  switchboards  are  rec- 
ognized by  inventors  and  manufacturers  as 
independent  inventions  from  the  general  tele- 
phone systems  in  which  they  are  used.  Held. 
that  division  was  properly  required  between 
claims  to  a  switchboard  and  claims  to  the  sys- 
tem. Ex  parte  Ford,  C.  D.  1904,  108  O.  G. 
1327. 


225.  Division  was  properly  required  between 
claims  relating  to  the  art  of  preserving  and 
other  claims  relating  to  the  art  of  refrigera- 
tion. Ex  parte  Rappleye,  C.  D.  1898,  85  O.  G. 
2096. 

226.  Division  properly  required  between  the 
apparatus  for  bending  metallic  printing  forms 
to  appro.ximately  the  shape  of  the  printing- 
cylinder  and  the  apparatus  for  further  bend- 
ing them  into  exact  form  and  ascertaining  the 
relation  the  engraved  surface  should  have  to 
the  impression-surface,  so  that  by  "underlay- 
ing" at  the  proper  places  the  lights  and  shades 
of  the  printed  picture  may  be  properly  brought 
out.  The  first  belongs  to  the  art  of  metal- 
bending  and  the  second  to  the  art  of  printing. 
Ex  parte  Orborne,  C.  D.  1899,  86  O.  G.  492. 

227.  Held,  that  division  was  properly  re- 
quired between  claims  to,  first,  the  steering 
and  controlling  devices;  second,  the  motor 
and  means  for  mounting  it ;  third,  the  frame, 
and,  fourth,  the  driving-gear  of  a  motor-ve- 
hicle, since  the  devices  are  independent  of  each 
other  in  structure  and  operation  and  may  be 
used  in  other  relations.  E.x  parte  Roby,  C.  D. 
1900,  92  O.  G.  1035. 

228.  Held,  that  division  was  properly  re- 
quired between  claims  to  a  truing  device  and 
claims  to  the  grinding  mechanism  of  a  ma- 
chine for  grinding  knives  where  the  devices 
are  useful  in  other  relations  and  have  ac- 
quired a  distinct  status  in  art  and  manufac- 
ture. Ex  parte  Johnston,  C.  D.  1900,  92  O.  G. 
1235. 

229.  Held,  That  division  was  properly  re- 
quired between  claims  to  inking  apparatus  of 
a  printing-press  and  claims  to  a  bed-move- 
ment and  cylinder-operating  mechanism.  E.x 
parte  Scott,  C.  D.  1901,  95  O.  G.  1247. 

230.  The  fact  that  the  bed  and  ink  rollers 
are  driven  in  unison  by  connected  mechanism 
does  not  constitute  them  indivisible  inventions, 
inasmuch  as  inking  mechanisms  have  acquired 
a  distinct  status  in  the  art  from  other  parts  of 
a  printing-press  and  are  separately  classified 
in  this  office.     Id. 

231.  Held,  that  division  was  properly  re- 
quired between  claims  covering  a  filtering 
mechanism  and  claims  covering  a  sterilizing 
apparatus,  since  the  two  are  entirely  independ- 
ent of  each  other  in  structure  and  operation. 
Each  performs  its  function  without  modify- 
ing the  functions  of  the  other,  and  each  has 
been  given  a  distinct  place  in  the  arts  and  in 
the  classification  of  the  office.  Ex  parte  Mc- 
Donald, C.  D.  1901,  96  O.  G.  1650. 


126 


DIVISION  OF  APPLICATION,  XIV,  (a). 


232.  Held,  tliat  an  electrically-operated  rail- 
way gate  for  a  grade  crossing  is  an  independ- 
ent invention  from  a  general  block  system  the 
object  of  which  is  to  prevent  collisions  and 
that  since  the  devices  have  acquired  a  distinct 
status  in  art  and  manufacture  division  was 
properly  required.  Ex  parte  Kintner,  C.  D. 
inns,  08  O.  G.  .isi. 

233.  Semaphores  have  acquired  a  distinct 
place  in  the  arts  and  manufacture  and  have 
been  made  an  independent  subject  of  inven- 
tion, and  therefore  a  semaphore  should  not  be 
claimed  in  the  same  application  with  a  rail- 
way block  system,  although  it  is  specially  de- 
signed for  use  in  that  system.    Id. 

234.  Claims  for  a  tabulating  device  for  type- 
writing machines  should  not  be  included  in 
the  same  application  with  claims  for  a  ribbon 
mechanism  when  it  appears  that  the  tabulating 
device  is  useful  in  other  forms  of  type-writ- 
ing machines  and  that  it  is  a  separate  subject 
of  manufacture  and  sale.  (Citing  ex  parte 
Johnston,  C.  D.  1901,  12."),  92  O.  G.  1235.)  Ex 
parte  Smith,  C.  D.  1902,  98  O.  G.  1971. 

235.  It  is  the  settled  practice  of  the  office 
that  the  separate  parts  of  a  gas-engine  should 
be  claimed  in  separate  applications.  These 
are  recognized  by  inventors  as  distinct  sub- 
jects of  invention  and  are  found  in  the  art  as 
distinct  subjects  of  manufacture.  Ex  parte 
Sturtevant  and  Sturtevant,  C.  D.  1002,  98  O. 
G.  1971. 

236.  Division  properly  required  between 
parts  of  a  type-writer  carriage,  since  it  ap- 
pears that  the  various  devices  have  acquired 
a  distinct  status  in  the  art  and  are  separate 
subjects  of  manufacture  and  sale.  Ex  parte 
Fox  and  Barrett,  C.  D.  1903,  99  O.  G.  862. 

237.  The  mere  fact  that  inventions  would 
be  separately  classified  in  this  office  is  not  in 
itself  sufficient  to  warrant  a  requirement  for 
division;  but  in  the  present  case  the  classifica- 
tion has  followed  the  lines  established  by  in- 
ventors and  manufacturers  and  is  evidence 
of  the  fact  that  the  devices  have  acquired  such 
a  distinct  status  in  the  art  as  warrants  not 
only  such  separate  classification,  but  also  sep- 
arate applications  for  invention  included 
therein.     Id. 

238.  Hdd,  that  division  was  properly  re- 
quired between  claims  to  the  railroad  car  and 
claims  covering  the  combination  between  the 
car,  the  window-sash,  and  a  lock  for  the  same, 
since  the  devices  are  recognized  by  inventors 
and  manufacturers  as  separate  and  independ- 
ent articles  of  manufacture  and  sale,  and  from 


this  it  results  that  these  devices  possess  a  ca- 
pacity for  independent  use.  Ex  parte  Brill, 
C.   D.  1902,  99  O.  G.  2319. 

239.  Division  properly  required  between 
claims  for  an  insulating  compound  and  pro- 
cess of  making  it  and  claims  for  an  insulated 
conductor  and  process  of  making  the  same. 
Ex  parte  Lee,  C.  D.  1902,  100  O.  G.  22X 

240.  Division  was  properly  required  between 
claims  covering  a  boiler  construction  and 
claims  covering  a  furnace  construction,  as  they 
are  recognized  by  inventors  and  manufactur- 
ers as  separate  and  independent  inventions  and 
are  capable  of  separate  use  irrespective  of 
their  particular  construction.  Ex  parte 
Downie  and  Messner,  C.  D.  1902, 100  O.  G.  235. 

241.  Held,  that  division  was  properly  re- 
quired between  claims  to  the  external  con- 
figuration of  the  hull  of  a  vessel  and  claims 
to  the  means  for  mounting  the  rudder,  since 
they  are  recognized  as  independent  subjects 
of  invention  and  are  separately  classified  in 
this  office.     Ex  parte   Bustin,   C.   D.  1902,  100 

O.  G.  nil. 

242.  Held,  that  claims  covering  the  means 
for  propelling  the  ship  should  be  claimed  in 
a  separate  application  from  claims  to  the 
shape  of  the  hull  and  to  the  means  for  mount- 
ing the  rudder.    Id. 

243.  Held,  that  division  was  properly  re- 
quired between  a  specific  improvement  in  the 
switch  mechanism  in  the  road-bed  and  a  spe- 
cific improvement  in  the  operating  mechanism 
carried  by  the  car.  Ex  parte  Davison,  C.  D. 
1002,  101  O.  G.  1371. 

244.  Where  two  devices  are  independent  in 
structure  and  operation  they  will  not  be  per- 
mitted to  be  claimed  in  one  application  merely 
because  they  belong  in  the  same  office  class. 
Office  classification  is  not  the  test  in  requiring 
division,  but  is  merely  evidence  upon  the 
question  whether  the  inventions  have  acquired 
a  distinct  status  in  the  art.    Id. 

245.  Held,  that  division  was  properly  re- 
quired between  claims  to  improvements  in  cut- 
ters and  clamping  devices  for  the  shuttle- 
thread  in  sewing-machines,  claims  to  the  ten- 
sion-releasing pull-off  devices,  and  claims  to 
improvements  in  cutters  for  the  needle-thread, 
as  each  group  of  claims  relates  to  inventions 
separately  classified  in  this  office,  which  have 
been  made  independent  subjects  of  invention 
and  manufacture.  Ex  parte  Lyons,  C.  D. 
1902,  101  O.  G.  2078. 

246.  Where  one  group  of  claims  covers  an 
apparatus     for    manufacturing    roofing-paper 


DIVISIONAL  APPLICATIONS. 


127 


and  another  group  covers  the  specific  structure 
of  the  cooling  and  drying  apparatus  which  is 
used  in  the  complete  machine,  Held,  that  since 
machines  for  cooling  and  drying  various  arti- 
cles of  manufacture  are  separately  invented, 
sold,  and  used  from  complete  machine  in 
vk-hich  they  may  be  used  division  between  the 
two  groups  of  claims  should  be  required.  Ex 
parte  Kidde,  C.  D.  1903,  105  O.  G.  1782. 

247.  Held,  that  division  was  properly  re- 
quired between  claims  covering  a  general  type- 
writing machine  construction  and  claims  for 
a  particular  form  of  carriage  construction,  as 
the  two  inventions  are  separate  and  independ- 
ent from  each  other  and  are  separately  manu- 
factured and  sold.  Ex  parte  Uhlig,  C.  D. 
190.-!,  inr.  O.  G.  .'>4i. 

248.  While  separate  applications  for  distinct 
inventions  may  be  warranted  by  the  office 
classification,  separate  classification  of  the  in- 
ventions does  not  of  itself  preclude  the  prose- 
cution of  claims  for  these  distinct  inventions 
in  the  same  application  where  there  is  doubt 
as  to  the  fact  that  they  have  assumed  an  in- 
dependent place  in  the  arts  and  are  separately 
manufactured  and  sold.     Id. 

249.  Division  required  between  claims  cov- 
ering a  specific  construction  of  propellor  and 
claims  covering  a  general  ship  construction, 
as  propellers  form  distinct  subject-matters  of 
invention,  manufacture,  and  sale  from  the  ship 
construction  on  which  they  are  used.  Ex 
parte  Eclair,  C.  D.  1903,  107  O.  G.  540. 

(b)  Division  Not  Necessary. 

250.  Held,  that  the  runner-retainer  for  um- 
brellas, joint  for  unbrclla-sticks,  and  joint  for 
umbrella-ribs  claimed  in  this  case  are  not  such 
separate  articles  of  manufacture  as  would 
necessitate  a  separate  application  for  each.  Ex 
parte  Whitney,  C.  D.  1901,  97  O.  G.  2305. 

251.  Where  the  stitch-forming  mechanism 
and  the  combined  awl  and  feeding  mechanism 
of  a  shoe-sewing  machine  have  not  acquired 
a  distinct  status  in  art  and  manufacture  and 
are  not  separately  classified  in  this  office.  Held, 
that  division  should  not  be  required  notwith- 
standing the  fact  that  the  mechanisms  are 
capable  of  separate  use.  Ex  parte  Smith,  C. 
D.  1902,  99  O.  G.  2547. 

XV.  P.\RTicuLAR  Cases. 
(a)  Division  Necessary. 

252.  Held,  that  division  was  properly  re- 
quired  between   claims   to   the  mechanism   of 


a  car-seat  whereby  it  can  be  moved  back  and 
forth  and  a  claim  to  a  hand-strap  attached  to 
the  back  of  the  seat.  Ex  parte  Pickles,  C.  D. 
1904,  109  O.  G.  275. 

253.  Held,  that  a  cutter  and  gatherer,  a  bun- 
dle forming  and  discharging  device,  and  a 
conveyer,  each  of  which  is  used  in  a  bean- 
harvesting  machine,  are  independent  inven- 
tions, and  division  was  properly  required  be- 
tween the  claims  covering  the  same.  Ex  parte 
Baer,  C.  D.  1904,  109  O.  G.  1609. 

(b)  Division  Not  Necessary. 

254.  Where  the  examiner  required  division 
between  a  set  of  claims  stated  to  be  for  the 
process  of  producing  woven  fabric  and  an- 
other set  for  the  process  of  winding 
yarn  and  some  of  the  claims  of  the  first 
set  included  the  step  of  winding  yarn. 
Held,  that  if  the  claims  for  producing  the 
fabric,  including  the  step  of  winding  yarn,  are 
for  a  legitimate  combination  division  should 
not  be  required.  If  they  are  not  for  such  a 
combination,  they  should  be  rejected  for  ag- 
gregation, leaving  the  question  of  division  to 
be  settled  after  the  final  determination  of  the 
question  of  aggregation.  The  practice  an- 
nounced in  ex  parte  Willcox  and  Borton  (C. 
D.  1888,  144,  45  O.  G.  455)  ;  ex  parte  Bullard 
(C.  D.  1888,  169,  45  O.  G.  1569),  and  ex  parte 
Carter  (C.  D.  1889,  100,  46  O.  G.  1391),  fol- 
lowed. Ex  parte  Tymeson  and  Borland,  C.  D. 
189S,  83  O.  G.  .593. 

255.  Upon  petition  from  the  action  of  the 
examiner  requiring  division  between  a  set  of 
claims  for  a  desk  for  educational  purposes  and 
another  set  of  claims  including  a  tank,  pump, 
valves,  etc.,  as  forming  part  of  the  desk.  Held. 
that  as  there  are  no  claims  covering  these 
separate  devices  and  as  they  are  simply  placed 
in  combination  with  the  other  parts  of  a  desk, 
division  should  not  be  required.  Ex  parte 
Crowell,  C.  D.  1898,  85  O.  G.  289. 


DIVISIONAL  APPLICATIONS. 

1.  In  a  divisional  application  a  mere  en- 
largement or  extension  of  a  certain  feature 
whereby  no  additional  function  or  capability 
is  given  the  apparatus  may  be  permitted.  Ex 
parte  Kcyser,  C.  D.  1898,  83  O.  G.  915. 

2.  A  divisional  application  takes  the  benefit 
of  the  filing  date  of  its  original.  An  appli- 
cation  filed  on  and  after  January  1,  1898,  as 


128 


DRAWINGS,  I. 


a  division  of  an  application  filed  prior  to  said 
date  should  take  the  date  of  the  original  ap- 
plication and  be  governed  by  the  statute  under 
which  said  original  application  was  filed.  Ex 
parte  Vidal,  C.  D.  1898,  84  O.  G.  808. 

3.  There  arc  the  same  reasons  for  holding 
that  a  divisional  case  fakes  the  benefit  of  the 
original  date  in  so  far  as  the  bar  of  a  previous 
foreign  patent  under  section  4887  of  the  Re- 
vised Statutes  is  concerned  as  there  are  for 
holding  that  it  takes  that  date  in  so  far  as  the 
bar  of  public  use  under  section  488()  of  the  Re- 
vised Statutes  is  concerned.  Ex  parte  Scott, 
C.  D.  1901,  95  O.  G.  1347. 

4.  A  mechanical  application  cannot  be  con- 
sidered a  division  of  a  design  application.  Ex 
parte  Waterman.  C.  D.  1902,  100  O.  G.  233. 

5.  It  is  fundamental  that  "a  proper  division- 
al application  does  and  can  contain  only  mat- 
ter carved  out  of  the  original  case."  (Ex 
parte  Henry,  C.  D.  1893,  88,  64  O.  G,  299.) 
The  subject-matter  of  the  divisional  applica- 
tion need  not  have  been  claimed  or  reached 
by  any  statement  of  invention  in  the  original 
case.  It  is  sufficient  if  the  matter  has  been 
fully  disclosed  in  the  original  application.     Id. 

6.  This  disclosure,  however,  must  be  in  an 
application  in  which  the  applicant  would  be 
permitted  to  present  and  prosecute  a  claim 
for  the  matter  so  disclosed.  In  other  words, 
an  applicant  will  be  permitted  to  claim  in  a 
divisional  application  "^uch  segregablc  matter 
as  might  have,  had  he  so  elected,  been  claimed 
in  the  original  application.    Id. 

7.  Design  patents  and  mechanical  patents 
cover  diflferent  monopolies.  They  are  granted 
under  different  sections  of  the  statute  for  dif- 
ferent terms.    Id. 

8.  There  is  no  warrant  for  a  requirement 
for  division  in  such  a  case.  Since  claims  for 
mechanical  functions  cannot  be  made  in  a  de- 
sign application,  it  follows  that  such  claims 
cannot  be  divided  out  of  such  an  application. 
Id. 

9.  Where  an  application  is  filed  subsequent- 
ly to  January  1,  1898,  and  it  is  held  to  be  a 
division  of  an  application  filed  prior  to  that 
date.  Held,  that  section  4S94  as  it  stood  prior 
to  January  1,  1898,  applies  to  the  later  divi- 
sional application  and  that  the  applicant  has 
two  years  within  which  to  prosecute  his  divi- 
sional application.  Ex  parte  Balzer,  C.  D. 
1902,  101  O.  G.  2824. 

10.  Where  an  application  contains  matter 
divided   out   of   a   prior   application,   but   also 


contains  other  matter.  Held,  that  it  is  not  a 
technical  division  of  the  prior  case  and  that 
a  statement  to  that  effect  in  the  specification 
should   be  canceled.     Ex  parte   Hicks,   C.   D. 

1903,  104  O.  G.  309. 

11.  Where  claims  are  inserted  in  a  divi- 
sional application,  the  legal  effect  is  the  same 
as  if  they  were  inserted  in  the  original,  since 
a  divisional  application  is,  in  effect,  an  amend- 
ment of  the  original.    Lowry  v.  Spoon,  C.  D. 

1904,  110  O.  G.  838. 

12.  The  claims  made  by  a  party  must  be 
given  effect  as  of  the  date  when  the  applica- 
tion was  filed  rather  than  the  date  when  the 
claims  were  presented  by  amendment,  since  to 
do  otherwise  would  lead  to  endless  confusion. 
Id. 

13.  Where  a  patent  contains  a  statement 
that  it  is  a  division  of  a  pending  application 
and  suit  is  brought  on  the  patent,  Held,  that 
the  defendant  should  be  permitted  to  obtain 
copies  of  said  pending  application.  In  re 
Belle  City  Malleable  Iron  Company,  C.  D. 
1906,  125  O.  G.  1.3">1. 

14.  Where  there  is  any  departure  from  the 
disclosure  of  the  alleged  parent  case,  the  ap- 
plication cannot  be  referred  to  as  a  division 
thereof.  Ex  parte  Kruse,  C.  D.  1910,  157  O. 
G.  208. 


DRAWINGS. 

I.  In  General. 
II.  Inconsistent. 

III.  Informalities. 

IV.  Made  by  Patent  Oieice. 

V.  Showing  Inoperative  Device. 
VI.  Substitute. 
VII.  Sufficiency  of. 
VIII.  Unnecessary  Illustration. 
IX.  Amendment. 
X.  New  Matter. 

I.  In  General. 

1.  It  is  within  the  examiner's  discretion  to 
permit  a  drawing  of  a  model  or  structure  or 
a  copy  of  an  original  drawing  to  be  filed;  but 
whenever  required  the  original  model,  struc- 
ture, or  drawing  should  be  produced  for  the 
inspection  of  the  office,  with  leave  to  the  ap- 
plicant to  withdraw  the  same  after  it  has 
served  the  purpose  for  which  it  was  pro- 
duced. In  case  of  withdrawal  a  drawing  of 
the  original  should  be  filed.  Ex  parte  John- 
son, C.  D.  1899,  89  O.  G.  1341. 


DRAWINGS,  II-V. 


129 


II.  Inconsistent. 

2.  Where  two  figures  of  the  drawings  arc 
inconsistent  if  intended  to  represent  the  same 
structure,  Held,  that  they  should  either  be 
made  consistent  by  amendment  or  the  specifi- 
cation should  state  that  they  represent  differ- 
ent modifications.  Ex  parte  Sturtevant  et  al., 
C.  U.  1004,  108  O.  G.  :,6i. 

III.  Informalities. 

3.  The  statutes  require  that  whenever  the 
nature  of  the  case  admits  of  drawings  one 
copy  signed  by  the  inventor  or  his  attorney 
in  fact  and  attested  by  two  witnesses  shall  be 
tiled  in  the  patent  office.  A  tintype  not  signed 
by  the  inventor  or  his  attorney  and  not  at- 
tested by  two  witnesses  cannot  be  considered 
a  drawing  within  the  statutes.  Palmer  and 
Thompson  v.  Bailey,  C.  D.  1898,  83  O.  G.  1207. 

4.  Where  a  drawing  is  made  on  such  a  fine 
scale  that  it  can  be  read  with  difficulty  only  in 
connection  with  the  description  of  the  specifi- 
cation and  the  reference-letters  are  too  small 
to  be  easily  discernible.  Held,  that  a  new  draw- 
ing of  that  portion  of  the  structure  which  is 
shown  on  a  small  scale  should  be  filed.  Ex 
parte  Hodges,  C.  D.  1903,  105  O.  G.  I.i34. 

5.  Held,  that  as  the  rules  require  line  draw- 
ings a  drawing  made  up  of  fine  dots  instead 
of  continuous  lines  is  objectionable.  Ex  parte 
Lloyd,  C.  D.  1904,  112  O.  G.  231. 

6.  Where  the  drawing  shows  the  device  up- 
side down,  so  that  when  held  in  normal  posi- 
tion the  reference-letters  arc  inverted.  Held. 
that  a  new  drawing  was  properly  required. 
Ex  parte  Wolfersperger  and  Moran,  C.  D. 
1904,  113  O.  G.  1418. 

7.  The  drawings  of  applications  must  be 
presented  in  such  shape  as  to  facilitate  an  ex- 
amination of  cases  and  not  cause  confusion. 
Id. 

8.  Drawings  for  design  cases  should  be  pro- 
duced by  lines  and  not  by  fine  dots  or  strip- 
pling.  Ex  parte  Kohler,  C.  D.  1903,  116  O.  G. 
340. 

9.  Where  the  invention  relates  to  a  non- 
rcrillablc  bottle  and  the  specification  docs  not 
state  of  what  material  the  bottle  is  made. 
Held,  that  applicant  should  not  be  required  to 
amend  the  drawings  so  as  to  show  the  bottle 
as  constructed  of  glass,  in  accordance  with  the 
suggestions  found  in  the  "Chart  for  Drafts- 
men" in  the  Rules  of  Practice.  Ex  parte  Per- 
son, C.  D.  1903,  119  O.  G.  1383. 

9 


10.  The  conclusion  of  the  chief  draftsman 
as  to  whether  or  not  drawings  forming  a  part 
of  the  application  for  patent  shall  be  accepted 
will  not  be  disturbed  unless  there  is  such  palp- 
able abuse  of  discretion  on  his  part  as  would 
warrant  the  exercise  of  the  supervisory  au- 
thority of  the  commissioner.  Ex  parte  Mealus, 
C.   D.    1908,  136  O.  G.  438. 

11-  Mutilated  drawings  will  not  be  accept- 
ed by  the  office  as  a  part  of  the  permanent 
records.  This  rule  is  founded  upon  the  neces- 
sity of  preserving  the  records  of  the  office  for 
an  indefinite  period  and  must  be  enforced. 
Ex  parte  I-Vankman,  C.  D.  1908,  136  O.  G. 
1999. 

12.  A  sheet  of  drawings  containing  only  one 
figure,  occupying  only  a  small  portion  of  one 
side  thereof,  is  objectionable.  Ex  parte 
Chaffee,  C.  D.  1908,  137  O.  G.  1941. 

13.  The  correction  of  the  drawings  which 
are  lacking  merely  in  artistic  merit  is  not  one 
of  the  formal  matters  contemplated  by  Rule 
134  which  must  be  settled  before  the  case  can 
be  appealed  to  the  examiners-in-chief.  Ex 
parte  Proctor,  C.  D.  1909,  138  O.  G.  238. 

14.  Extended  shading,  either  surface  or  sec- 
tional, in  solid  black  should  not  be  permitted, 
but  sections  of  thin  sheet  metal  may  be  so 
represented.  Ex  parte  Mellin  and  Reid,  C.  D. 
1910,  KiO  O.  G.  1037. 

15.  Where  the  same  part  of  an  apparatus 
appears  in  more  than  one  figure  of  the  draw- 
ing, it  should  be  represented  by  the  same  ref- 
erence character,  notwithstanding  that  one 
figure  may  be  a  diagram  and  another  a  detail 
view.  Ex  parte  Stimpson,  C.  D.  1910,  160  O. 
G.  1271. 

\\\  Made  by  P.\tent  Office. 

16.  Where  a  drawing  was  made  by  the  of- 
fice in  accordance  with  instructions  given  by 
an  applicant  and  said  drawing  was  accepted, 
signed,  and  filed  as  a  part  of  his  application, 
whereupon  the  examiner  objected  to  the  draw- 
ing as  not  conforming  to  the  original  disclo- 
sure. Held,  that  a  new  drawing  should  not  be 
furnished  by  the  office  without  expense  to  the 
applicant.  Ex  parte  Rosenheim  and  Mombel, 
C.   D.    1906,    122  O.  G.   1722. 

v.  Showing  Inoperative  Device. 

17.  Where  the  drawings  of  the  patent  show 
the  belt  for  conveying  the  ore  at  such  an 
angle  as  to  render  the  successful  operation 
of  the  machine  impossible.  Held,  that  this  does 


130 


DRAWINGS,  VI,  VII. 


not  render  the  patent  void  for  want  of  utility, 
since  the  patentee  should  not  be  limited  to 
the  use  of  the  angle  which  appears  in  the 
drawings,  d  Johnston  v.  Woodbury,  C.  D. 
1901,  97  O.  G.  402. 

18.  When  an  application  as  originally  filed 
described  an  operation  of  certain  parts  which 
would  be  impossible  without  a  connection  be- 
tween those  parts  and  no  connection  was 
shown,  an  amendment  to  the  drawing  to  show 
some  form  of  connection  should  be  permitted. 
(Ex  parte  Snyder,  C.  D.  1882,  22,  22  O.  G. 
1975.)  Ex  parte  Wareham,  C.  D.  1901,  97  O. 
G.    1600. 

19.  Such  a  case  is  to  be  distinguished  from 
that  of  ex  parte  Delbey,  ante,  103,  96  O.  G. 
1240.  In  the  latter  case  it  was  proposed  to 
show  matter  for  which  there  was  no  basis  in 
the  case  as  filed,  so  that  claims  which  might 
be  drawn  to  cover  the  same  would  be  for 
new  matter.     Id. 

VI.  Substitute. 

20.  Where  the  drawing  in  the  case  shows 
the  invention  clearly  and  properly.  Held,  that 
a  substitute  drawing  should  not  be  admitted. 
Ex  parte  Cooper,  C.  D.  1902,  99  O.  G.  669. 

VII.  Sufficiency  of. 

21.  The  drawing  should  show  the  entire 
thing  described  in  the  specification  as  consti- 
tuting the  invention  and  not  merely  a  section 
thereof.  Ex  parte  Lefebvre,  C.  D.  1899,  86  O. 
G.  995. 

22.  Where  the  drawing  is  unsatisfactory  be- 
cause it  shows  only  detached  portions  of  de- 
tails and  does  not  show  the  parts  together  so 
that  their  co-operation  can  be  understood. 
Held,  that  it  is  not  practicable  for  the  ex- 
aminer to  point  out  in  detail  just  what  changes 
would  make  it  clearly  illustrate  the  invention, 
so  long  as  he  has  not  before  him  some  com- 
plete representation  of  the  invention,  such  as 
a  model.  General  objections  are  sufficient  to 
enable  a  skilled  draftsman  to  cure  the  defects. 
Ex  parte  Tuttle,  C.  D.  1900,  90  O.  G.  1365. 

23.  Modifications  described  in  the  specifica- 
tion should  be  shown  in  the  drawings  or  the 
description  canceled.  Ex  parte  Peck,  C.  D. 
1901,  96  O.  G.  2409. 

24.  A  modification  of  the  invention  should 
not  be  shown  in  dotted  lines  on  the  same  fig- 
ure which  shows  the  preferred  form  in  full 
lines,  but  should  be  shown,  if  at  all,  in  sepa- 


rate figures  and  in  full  lines.     Ex  parte  Bad- 
ger, C.  D.  1901,  97  O.  G.  1.-.96. 

25.  When  possible,  a  drawing  should  be  so 
complete  that  the  purpose  and  operation  of 
the  invention  may  be  readily  understood  by 
one  skilled  in  the  art  by  means  of  a  mere  in- 
spection of  the  drawing.     Ex  parte  Hartley, 

C.  D.   1901,  97  O.  G.  2746. 

26.  Where  a  conventional  device  is  referred 
to  in  the  specification  and  it  docs  not  form 
part  of  the  invention,  it  should  either  be  illus- 
trated in  a  conventional  way,  in  order  that 
any  one  skilled  in  the  art  can  understand  from 
a  mere  inspection  of  the  drawings  what  the 
device  is,  or  if  it  is  illustrated  in  an  uncon- 
ventional way  an  amendment  should  be  made 
to  the  specification  clearly  describing  the  con- 
struction and  operation  of  said  device.  Ex 
parte  Morse,  C.  D.  1901,  97  O.  G.  2982. 

27.  Where  an  clement  is  described  and 
claimed,  Held,  that  said  element  should  also  be 
clearly  shown  in  the  drawing  and  that  an  il- 
lustration of  said  element  by  means  of  a  sec- 
tional view  where  it  does  not  completely  il- 
lustrate the  structure  is  not  sufficient.  Ex 
parte  Alminana,  C.  D.  1902,  100  O.  G.  1331. 

28.  The  requirement  for  additional  illustra- 
tion is  proper  when  the  drawing  does  not  dis- 
close with  certainty  what  the  invention  is. 
Ex  parte  Seitzinger,  C.  D.  1902,  100  O.  G. 
2773. 

29.  It  is  not  necessary  in  patent  office  draw- 
ings that  the  exact  proportions  of  the  parts 
should  be  indicated.  All  that  is  required  is 
that  such  an  operative  device  be  shown  that 
one  skilled  in  the  art  can  make  and  use  the 
same.  Ex  parte  Creveling,  C.  D.  1902,  98  O. 
G.   1708. 

30.  It  is  not  necessary  to  retain  in  the  draw- 
ing of  an  application  for  a  patent  on  an  article 
a  figure  to  illustrate  a  process  or  step  in  its 
manufacture  when  the  completed  article  de- 
lined  in  the  claim  is  clearly  shown  in  another 
figure  and  the  disclosure  is  amply  sufficient 
to  enable  any  one  skilled  in  the  art  to  make 
and  construct  the  same.     Ex  parte  Henry,  C. 

D.  1902,  99  O.  G.  1170. 

31.  Where  the  specification  describes  the 
grain  of  wood  as  running  lengthwise  and  this 
feature  is  included  in  the  claims,  the  drawing 
should  show  the  same,  since  the  rules  require 
that  the  drawing  must  show  every  feature 
of  the  invention  covered  by  the  claims.  (Rule 
50.)  Ex  parte  Davin,  C.  D.  1902,  100  O.  G. 
452. 


DRAWINGS,  VII. 


131 


32.  Where  the  grain  of  wood  is  an  essen- 
tial feature  of  the  invention,  the  requirement 
that  the  drawing  should  show  the  same  is  not 
inconsistent  with  the  requirement  of  the 
fourth  section  of  Rule  .ll,  which  states  that 
imitations  of  wood  in  surface-graining  should 
not  be  attempted.     Id. 

33.  Where  an  element  is  described  and 
claimed,  Held,  that  said  clement  should  also 
be  clearly  shown  in  the  drawing  and  that  an 
illustration  of  said  element  by  means  of  a 
sectional  view  where  it  does  not  completely 
illustrate  the  structure  is  not  sufficient.  Ex 
parte  Alminana,  C.  D.  1002,  100  O.  G.  1331. 

34.  The  requirement  for  additional  illustra- 
tion is  proper  when  the  drawing  does  not  dis- 
close with  certainty  what  the  invention  is.  Ex 
parte  Seitzingcr,  C.  D.  1002,  100  O.  G.  277:!. 

35.  Where  the  drawing  discloses  a  single 
battery  and  the  specification  describes  how 
several  such  batteries  may  be  superimposed 
and  fastened  together,  Held,  that  a  require- 
ment for  additional  illustrations  showing  the 
arrangement  is  proper  and  will  be  insisted 
upon.  Ex  -parte  Edgerton,  C.  D.  1902,  101  O. 
G.  1131. 

36.  The  statute  requiring  a  drawing  means 
one  showing  what  is  described,  and  a  part 
cannot  be  omitted  any  more  than  the  whole  of 
it.  The  question  is  not  whether  the  construc- 
tion can  be  understood  without  a  drawing,  but 
is  whether  it  can  be  illustrated.     Id. 

37.  Where  the  drawing  is  sufficiently  clear 
to  enable  any  person  skilled  in  the  art  to  make 
and  use  the  invention  illustrated  therein  and 
where  every  feature  of  the  invention  covered 
by  the  claims  is  shown.  Held,  that  additional 
illustration  should  not  be  required  even  though 
the  drawing  is  not  made  to  an  exact  scale  and 
is  not  as  well  executed  as  it  might  be.  I'.x 
parte  Turner,  C.  D.  1902,  101  O.  G.  2078. 

38.  Where  the  claim  of  an  application  is 
for  leather  having  certain  characteristics  used 
in  a  gas-meter  and  no  claim  is  made  to  the 
form  of  the  gas-meter.  Held,  that  the  applica- 
tion will  be  accepted  as  complete  without  a 
drawing,  since  it  is  impossible  to  illustrate  the 
character  of  the  leather.  Ex  parte  Kosminski, 
C.  D.  1903,  103  O.  G.  429. 

39.  A  drawing  filed  as  a  part  of  an  applica- 
tion for  a  patent  should  be  so  clear  that  the 
structure  which  it  is  intended  to  illustrate 
may  be  easily  understood  from  a  mere  in- 
spection of  the  drawing  when  the  art  is  known 
to  the  person  who  is  called  upon  to  read  the 


drawing.     Ex  parte  Hodges,  C.   D.   1903,   10.5 
O.  G.  1334. 

40.  It  is  a  great  desideraluin  of  patent  of- 
fice drawings  that  they  should  tell  their  story 
to  the  eye  without  making  it  necessary  to  go 
into  the  specification  for  explanation ;  which 
should  be  apparent  upon  inspection.  Ex  parte 
Sturtevant  et  al.,  C.  D.  1904,  108  O.  G.  563. 

41.  Where  it  appears  that  sufficient  parts 
and  connections  are  shown  to  effect  the  op- 
eratitm  described  and  that  the  specific  struc- 
ture of  the  parts  forms  no  part  of  the  inven- 
tion and  are  stated  to  be  of  usual  construc- 
tion. Held,  that  further  illustration  should 
not  be  required.  Ex  parte  Clark,  C.  D.  1904, 
109  O.  G.  2169. 

42.  Where  the  invention  relates  to  the  ar- 
rangement of  engines,  tanks,  receivers,  and 
connecting  pipes  and  valves  all  of  known  con- 
struction, diagrammatic  illustration  is  prob- 
ably clearer  than  views  showing  parts  in  de- 
tail.    Id. 

43.  Where  the  examiner  required  additional 
illustration  and  refused  action  on  the  merits, 
stating  that  the  operation  could  not  be  under- 
stood, and  it  appears  that  the  operation  intend- 
ed by  the  applicant  is  clearly  described  and 
the  apparatus  sufficiently  illustrated.  Held, 
that  action  on  the  merits  should  not  have  been 
suspended.     Id. 

44.  Where  an  opening  referred  to  in  the 
specification  and  certain  reference-letters 
should  be  applied  on  the  drawings.  Held,  that 
as  these  changes  are  not  essential  to  an  un- 
derstanding of  the  invention  they  may  be 
made  at  any  time  before  final  action  and  do 
not  warrant  suspension  of  action  on  the  mer- 
its.    Id. 

45.  Where  the  specification  refers  to  a  func- 
tion that  will  occur  upon  a  reciprocation  of 
a  lever.  Held,  that  it  is  not  necessary  to  show 
a  means  for  reciprocating  the  lever ;  but  the 
drawing  should  clearly  show  that  the  lever  is 
capable  of  being  reciprocated.  Ex  parte  Mot- 
singer,  C.  n.  1904,  110  O.  G.  601. 

46.  It  is  not  sufficient  for  the  purpose  of  a 
patent  office  drawing  that  the  illustration  be 
such  that  a  person  skilled  in  the  art  could 
supply  the  parts  not  shown  ;  but  when  possi- 
ble the  drawing  should  be  so  complete  that 
the  purpose  and  operation  of  the  machine  il- 
lustrated may  be  readily  understood  by  one 
skilled  in  the  art  by  means  of  a  mere  inspec- 
tion of  the  drawing.    Id. 

47.  Where  a  certain  arrangement  of  parts 
is  claimed,  it  must  be  illustrated  in  the  draw- 


132 


DRAWINGS,  VIII. 


ings,  and  one  of  the  elements  cannot  be  omit- 
ted on  the  ground  that  it  is  well  known  in 
the  art.  Ex  parte  Bowman,  C.  D.  1004,  UJ 
O.  G.  ITO.-i. 

48.  Where  an  application  fully  discloses  the 
construction  of  the  alleged  invention  which  is 
of  general  application,  the  illustration  of  the 
invention  applied  to  a  particular  use  should 
not  be  required.  Ex  parte  Perkins,  C.  D. 
J'Jlin,  142  O.  G.  8.-)3. 

49.  A  requirement  for  a  correction  of  a 
drawing.  Held,  proper,  since  it  is  very  desira- 
ble that  the  drawings  be  so  clearly  and  artis- 
tically executed  as  to  facilitate  a  ready  un- 
derstanding of  the  invention.  Ex  parte  Good, 
C.  D.  I'Jll,  Hi4  O.  G.  739. 

VIII.  Unnecess.\ky   Illustration. 

50.  Upon  petition  from  the  requirement  of 
the  examiner  that  sheet  1  of  the  drawing  be 
canceled,  as  it  is  unnecessary,  Held,  that  a 
superfluous  sheet  of  a  drawing  should  not  be 
permitted  to  remain  in  a  case.  (Ex  parte 
Krause,  C.  D.  1891,  164,  56  O.  G.  1708,  cited.) 
Ex  parte  Griffin,  C.  D.  1898,  85  O.  G.  454. 

51.  Upon  a  petition  from  the  requirement 
of  the  examiner  that  the  number  of  sheets  of 
drawings  in  an  application  be  reduced,  Held. 
that  the  examiner  and  draftsman  are  experts, 
and  when  they  agree  the  well-established  rule 
that  the  proper  illustration  is  largely  within 
the  judgment  and  discretion  of  the  examiner 
should  be  followed.  Ex  parte  Diescher,  C.  D. 
l'.)no,  93  O.  G.  551. 

52.  The  practice  of  unnecessarily  multiply- 
ing the  number  of  sheets  of  drawings  filed 
with  applications  is  open  to  severe  condemna- 
tion. To  file  unnecessary  sheets  of  drawings 
is  to  increase  the  cost  of  photolithographing 
and  to  multiply  the  records,  thereby  delaying 
the  office  in  its  searches  and  placing  an  un- 
necessary burden  upon  applicants.     Id. 

53.  It  is  the  rule  of  the  office  that  the  draw- 
ings should  not  contain  unnecessary  matter, 
and  Rule  51  condemns  purely  advertising  mat- 
ter upon  drawings.  Ex  parte  McDonald,  C. 
D.  1902,  101  O.  G.  1829. 

54.  Where  a  figure  of  the  drawings  shows 
a  modification  coming  within  the  broad  claims 
in  the  case.  Held,  that  it  should  be  allowed  to 
remain  in  the  case  so  long  as  it  does  not  ex- 
tend the  illustration  beyond  reasonable  limits. 
Ex  parte  Leonius,  C.  D.  1903,  103  O.  G.  1164. 

55.  While  an  applicant  is  entitled  to  all  rea- 
sonable latitude  in   illustrating  his   invention. 


he  will  not  be  permitted  to  unnecessarily  cum- 
ber the  records  with  additional  sheets  of 
drawings  showing  contemplated  uses  of  the 
invention.  Ex  parte  Landes,  C.  D.  1903,  103 
O.  G.  losi. 

56.  Where  one  figure  of  the  drawing  does 
not  show  the  specific  features  claimed,  but 
shows  in  detail  the  surroundings  in  which 
the  device  which  has  been  improved  is  to  be 
used.  Held,  that  the  figure  is  unnecessary  and 
tends  to  confuse  the  invention  and  should  be 
canceled.  Ex  parte  Kidd,  C.  D.  1903,  105  O. 
G.  T45. 

57.  Where  two  sheets  of  drawings  are  filed 
with  an  application  and  the  figures  on  one  of 
the  sheets  illustrate  clearly  all  the  features 
of  construction  covered  by  the  claims,  Held, 
that  the  illustration  on  the  other  sheet  is  un- 
necessary and  the  sheet  should  be  canceled. 
Ex  parte  Phillips,  C.  D.  1903,  105  O.  G.  1779. 

58.  Where  the  invention  claimed  is  a  belt- 
shifter  and  the  drawing  includes  a  figure  cov- 
ering an  entire  sheet  which  is  not  necessary 
to  a  complete  disclosure  of  the  invention  and 
which  shows  in  all  of  its  details  a  traction- 
engine  upon  which  the  invention  may  be  used. 
Held,  that  the  unnecessary  sheet  of  drawings 
should  be  canceled.     Ex  parte  Crislcr,  C.   D. 

1904,  108  O.  G.   1869. 

59.  Where  an  applicant  showed  in  one  fig- 
ure of  his  drawings  what  he  considered  the 
prior  art,  Held,  that  the  figure  and  the  de- 
scription of  it  should  be  canceled.  Ex  parte 
Elliott,  C.  D.  1904,  109  O.  G.  1337. 

60.  The  number  of  sheets  of  drawing  in  an 
application  for  patent  should  not  be  greater 
than  is  necessary  to  clearly  illustrate  the  in- 
vention. Ex  parte  Roadhouse,  C.  D.  1904, 
111    O.  G.   1368. 

61.  The  drawing  of  an  application  for  pat- 
ent should  not  include  matter  which  is  not 
claimed  and  which  is  unnecessary  and  inef- 
fective for  a  clear  understanding  of  the  inven- 
tion claimed.  Ex  parte  Anderson,  C.  D.  1904, 
113  O.  G.  2504. 

62.  When  petition  was  taken  from  the  re- 
quirement for  the  cancelation  of  certain  sheets 
of  the  drawings  as  superfluous,  but  it  appeared 
that  the  claims  in  the  case  were  not  consid- 
ered allowable.  Held,  that  the  question  of 
superfluous  illustration  must,  in  general,  be 
decided  in  view  of  the  limitations  which  are 
included  by  the  claims  and  should  be  insisted 
upon  only  when  the  case  has  been  restricted 
to  allowable  claims.     Ex  parte  Miller,  C.   D. 

1905,  119   O.   G.   1259. 


DRAWINGS,  IX. 


133 


63.  Held,  that  the  requirement  by  the  ex- 
aminer that  unnecessary  figures  be  canceled 
and  that  the  remaining  figures  be  reduced  to  a 
reasonable  scale  and  placed  on  a  single  sheet 
was  right.  Ex  parte  Keil,  C.  D.  1907,  131  O. 
G.  2144. 

64.  "There  are  two  principal  reasons  for  the 
rule  requiring  drawings  to  be  limited  to  as 
few  sheets  as  possible  consistent  with  a  clear 
showing  of  the  invention ;  one  is  that  it  has 
now  come  to  be  a  serious  problem  to  find 
space  for  the  storage  of  drawings,  whether 
they  form  a  part  of  a  patent  or  of  an  aban- 
doned application,  and  the  other  is  that  it  is 
a  useless  expense  to  photolithograph  an  un- 
necessary number  of  sheets  of  drawings  for 
the  purpose  of  attaching  the  same  to  patents." 
Ex  parte  Pfautz,  C.  D.  1910,  i:)9  O.  G.  489. 

IX.  Amendment. 

65.  The  question  as  to  whether  an  amend- 
ment to  correct  a  drawing  should  be  entered 
and  as  to  the  course  of  appeal  considered. 
The  practice  defined  by  ex  parte  Zuber  (C.  D. 
1894,  47,  67  O.  G.  529)  and  ex  parte  Suter 
(C.  D.  1892,  112,  59  O.  G.  14:il),  distinguish- 
ed. Ex  parte  Bailey,  C.  D.  1898,  82  O.  G. 
894. 

66.  When  it  appears  that  the  original  draw- 
ing clearly  shows  the  invention  and  that  no  ob- 
jection has  ever  been  made  to  the  same  by 
the  chief  draftsman  as  to  form  or  by  the  ex- 
aminer as  to  merits,  and  it  further  appears 
that  the  application  has  been  prosecuted  prac- 
tically to  the  point  of  allowance.  Held,  that  an 
amendment  canceling  the  original  drawing  and 
substituting  in  lieu  thereof  a  new  drawing  was 
properly  refused  entry  into  the  case.  To  ad- 
mit the  same  would  necessitate  a  re-examina- 
tion of  the  entire  case  in  all  respects,  with  the 
exception  of  making  a  new  search  into  the 
art.  To  thus  cause  the  examiners  to  perform 
additional  unnecessary  work  is  not  fair  to 
them  or  to  other  applicants  who  have  pend- 
ing applications  on  file  awaiting  action.  Ex 
parte  Pugh,  C.  D.  1901,  90  O.  G.  841. 

67.  Where  it  appears  that  an  addition  sought 
to  be  made  to  certain  figures  of  a  drawing  is 
not  to  correct  what  was  unintentionally  omit- 
ted from  the  drawing  as  originally  filed  or  is 
not  to  correct  a  mere  error  on  the  part  of 
the  draftsman,  but,  on  the  other  hand,  seeks 
to  add  to  these  figures  an  unessential  feature 
purposely  omitted  from  them  when  originally 
filed,  Held,  that  such  an  addition  to  the  draw- 


ing should  not  be  permitted.    Ex  parte  Johns, 
C.  1).  1900,  06  O.  G.  1640. 

68.  Where  an  addition  sought  to  be  made 
to  certain  figures  of  the  drawing  would  only 
serve  the  purpose  of  allowing  in  the  same  ap- 
plication a  certain  claim  drawn  to  specifically 
cover  an  avowedly  different  form  of  inven- 
tion from  another  specific  form  of  the  same 
generic  invention  already  covered  by  a  specific 
claim.  Held,  that  said  addition  to  the  figures 
of  the  drawing  should  not  be  permitted.     Id. 

69.  An  applicant  cannot  be  permitted  to 
erase  the  lines  of  his  drawing  and  delineate 
anew  the  construction  and  operation  of  a  part 
fully  shown  and  described  or  replace  a  well- 
described  but  inferior  arrangement  by  a  pref- 
erable form  of  his  invention.  (E.x  parte  Sny- 
der, C.  D.  1882,  22,  22  O.  G.  197.-).)  Ex  parte 
Clay,  C.  D.  1001,  97  O.  G.  2980. 

70.  Where  the  attorney  in  the  case  wishes 
to  amend  the  drawing  which  is  incorrect  and 
says  that  the  original  drawing  was  made  like 
a  sketch  furnished  by  the  inventor  and  the 
examiner  refuses  to  permit  the  amendment 
without  specific  authority  from  the  inventor. 
Held,  that  the  original  power  of  attorney  is 
sufficient  authority.  Ex  parte  Wilcox,  C.  D. 
1002,  101  O.  G.  1829. 

71.  The  attorney  in  the  case  is  under  his 
original  appointment  authorized  to  make  all 
proper  amendments  to  the  drawings,  and  if 
a  particular  amendment  is  to  be  refused  ad- 
mission it  must  be  because  the  amendment  it- 
self is  not  proper  and  not  because  of  any  lack 
of  authority.    Id. 

72.  Where  blue-prints  of  original  drawings 
have  been  made  part  of  the  record,  it  is  per- 
missible to  make  slight  changes  in  the  orig- 
inal drawings,  but  not  such  changes  as  prac- 
tically obliterate  the  identity  of  any  of  the 
original  figures.  Ex  parte  Kuhlman  and  Car- 
penter, C.  D.  190.3,  102  O.  G.  229. 

73.  Where  an  applicant  wished  to  change 
two  of  the  original  figures  of  his  drawings  in 
order  to  bring  the  construction  shown  therein 
within  the  terms  of  a  claim  drawn  to  another 
species  and  the  necessary  changes  would  re- 
quire substantial  erasures  on  these  figures  and 
substantial  additions  thereto,  the  examiner 
was  right  in  refusing  to  allow  the  changes  to 
be  made.     Id. 

74.  The  office  having  selected  certain  ways 
of  illustrating  different  materials  and  publish- 
ed the  same  in  the  Rules  of  Practice,  Held, 
that  inventors  should  follow  the  same,  as  it 
is   essential   that   a  drawing  be   in   so   far   as 


134 


DRAWINGS,   X. 


possible  made  so  clear  that  it  can  be  read 
without  reference  to  the  description  thereof 
in  the  specification.  Ex  parte  Whitney,  C.  D. 
1904,  1U9  O.  G.  2442. 

75.  Where  an  applicant  makes  claims  to  a 
certain  feature  of  an  invention  clearly  de- 
scribed in  the  specification,  but  not  illustrated 
in  the  drawing.  Held,  that  an  amendment  to 
the  drawing  illustrating  the  feature  described 
and  claimed  is  justified.  Ex  parte  Zwiebel, 
C.  D.  1904,  110  O.  G.  1428. 

76.  Held,  that  a  drawing  should  not  be 
amended  except  upon  the  written  permission 
of  the  examiner  having  charge  thereof.     Id. 

77.  The  practice  to  be  followed  in  a  case 
where  it  is  desired  to  amend  a  drawing  is  for 
the  applicant  to  file  a  blue-print  of  the  orig- 
inal drawing  and  illustrate  either  on  this  print 
or  by  means  of  a  sketch  the  change  in  the  orig- 
inal drawing  which  it  is  desired  to  make.  The 
blue-print  and  sketch  should  then  be  filed,  ac- 
companied by  a  written  request  for  permission 
to  alter  the  drawing.  The  examiner's  re- 
sponse to  this  request  should  be  in  writing. 
Id. 

78.  A  photographic  copy  of  the  original 
drawing  should  be  filed  where  a  change  is 
made  in  any  of  the  original  sheets  of  draw- 
ing, whether  by  amendment  of  a  figure  or  the 
addition  of  a  new  figure.  Ex  parte  Campbell, 
C.  D.  1905,  116  O.  G.  1452. 

79.  Where  all  figures  were  canceled  from 
the  drawing  except  some  at  one  end  of  sheet, 
so  that  the  drawing  would  present  peculiar 
and  inartistic  appearance  in  the  patent,  Held, 
that  new  drawing  should  be  furnished.  Ex 
parte  Burschik,  C.  D.  1905,  119  O.  G.  1258. 

X.  New  Matter. 

80.  Reference  having  been  made  in  the  orig- 
inal application  to  spurs  or  cleats,  they  can 
be  shown  so  long  as  the  illustration  of  them 
does  not  involve  a  departure  from  the  orig- 
inal disclosure;  but  the  question  as  to  whether 
a  particular  figure  of  the  drawings  illustrating 
them  and  covered  specifically  by  the  claims 
involves  new  matters  is  for  the  examiners-in- 
chief  to  decide.  Ex  parte  Shearman,  C.  D. 
1898,  84  O.  G.  1730. 

81.  Claims  should  cover  specifically  only 
what  is  illustrated  in  the  drawings;  but  since 
it  cannot  be  decided  in  this  case  whether  the 
spurs  or  cleats  are  properly  illustrated  with- 
out passing  upon  the  question  of  new  matter 


involved   in  some  of  the   claims  this  petition 
is  dismissed.     Id. 

82.  Where  a  petition  is  taken  to  the  com- 
missioner upon  the  refusal  of  the  examiner  to 
allow  an  amendment  to  the  drawing  clearly 
showing  a  feature  covered  by  a  claim  which 
has  been  admitted  and  rejected  on  the  ground 
that  said  claim  covers  new  matter,  Held,  that 
such  a  petition  does  not  lie.  The  question 
involved  relates  to  the  merits  of  the  case  and 
is  appealable  in  the  first  instance  to  the  ex- 
aminers-in-chief. Ex  parte  Baptist,  C.  D. 
li)01,  97  O.  G.  191. 

83.  Where  it  appears  that  the  changes 
sought  to  be  made  to  the  drawing  include 
matter  not  originally  shown  and  described 
and  are  not  merely  for  the  correction  of  clear 
and  unmistakable  errors  of  the  draftsman, 
Held,  that  such  changes  constitute  new  matter 
and  should  not  be  admitted.  Ex  parte  Delbey, 
C.  D.  1901,  96  O.  G.  1240. 

84.  Where  it  appears  that  amendments 
sought  to  be  made  to  the  drawing  and  specifi- 
cation include  matter  not  originally  shown 
and  described,  though  not  affecting  the  claims 
in  the  case,  the  same  could  be  made  the  basis 
for  new  claims,  Held,  to  constitute  new  mat- 
ter and  should  not  be  admitted.    Id. 

85.  Where  the  original  description  and 
drawing  disclose  a  complete  and  operative  de- 
vice and  the  changes  proposed  are  not  to  cor- 
rect mere  clerical  errors  of  the  draftsman  nor 
to  supply  manifest  defects  or  omissions  in 
the  features  essential  to  the  operation  of  the 
invention,  but  would  form  the  basis  for  de- 
scription and  claims  not  warranted  by  the 
original  disclosure,  Held,  that  such  changes 
constitute  new  matter  and  should  not  be  per- 
mitted. Ex  parte  Alman,  C.  D.  1901,  97  O.  G 
191. 

86.  When  descriptive  matter  affecting  a 
claim  is  presented  in  an  amendment  and  this 
descriptive  matter  is  held  to  be  a  departure 
from  the  original  disclosure  and  a  drawing  is 
also  filed  illustrating  this  alleged  new  matter, 
the  drawing  should  not  be  entered  until  it 
has  been  determined  on  appeal  that  the  exam- 
iner erred  in  rejecting  the  claim  on  the  ground 
of  new  matter.  Ex  parte  Furness,  C.  D.  1903, 
104  O.  G.  455. 

87.  Where  substitute  drawings  are  filed 
which  contain  new  matter  affecting  the  claims. 
Held,  that  the  claims  should  be  rejected  on 
the  ground  of  new  matter  and  that  the  draw- 
ings should  not  be  entered  formally  in  the 
case   unless   and   until   the   examiners-in-chief 


DURESS— ESTOPPEL. 


135 


or  some  appellate  tribunal  finally  holds  that 
the  amendments  do  not  involve  new  matter. 
Ex  parte  Furness,  ante,  174,  104  O.  G.  1655. 
Ex  parte  Sonnenburg  and  Helbig,  C.  D.  1903, 
107  O.  G.  2530. 

88.  A  general  statement  in  the  original  spec- 
ification as  to  a  modification  of  the  invention 
does  not  warrant  an  amendment  to  the  draw- 
ing showing  a  species  of  the  invention  not 
originally  disclosed.  Ex  parte  Mothes,  C.  D. 
1904,  113  O.  G.  1146. 

89.  The  fact  that  no  claim  is  made  to  new 
matter  inserted  by  amendment  furnishes  no 
good  reason  for  permitting  it  to  remain  in 
the  case.     Id. 

90.  An  applicant  will  not  be  permitted  to  il- 
lustrate a  specific  form  of  the  invention  not 
originally  disclosed  although  it  illustrates  the 
generic  invention  disclosed.  Ex  parte  Butcher, 
C.   D.   1904,  108   O.   G.   1387. 

91.  Where  a  claim  is  rejected  for  the  reason 
that  it  is  based  upon  new  matter  shown  in  a 
figure  of  the  drawing.  Held,  that  the  validity 
of  the  claim  should  first  be  determined  be- 
fore a  petition  can  be  taken  from  the  exam- 
iner's action  requiring  the  cancelation  of  the 
figure  and  the  description  relating  to  the  same. 
Ex  parte  Schmidt,  C.  D.  1904,  110  O.  G.  603. 

92.  Where  the  original  drawings  showed  a 
tool  having  a  tapered  shank  of  the  usual  auger 
form  and  it  was  described  as  being  formed 
from  twisting  a  tapered  flat  strip  of  metal  and 
it  appears  that  the  product  as  shown  would 
result  from  the  operation  of  twisting  as  this 
term  is  used  in  the  arts.  Held,  that  a  draw- 
ing showing  the  tool-shank  in  any  other  form 
was  inadmissible,  as  involving  new  matter,  al- 
though such  form  might  also  result  from  a 
twisting  operation.  Ex  parte  Freund,  C.  D. 
190.5,  119  O.  G.  651. 

93.  Where  a  proposed  change  in  the  draw- 
ings is  offered  and  the  examiner  rejects  on  the 
ground  of  new  matter  and  the  feature  sought 
to  be  illustrated  is  a  part  of  structure  held 
to  be  inoperative,  on  which  ground  the  appli- 
cation is  also  rejected.  Held,  that  the  question 
is  clearly  one  of  merits  and  should  be  review- 
ed in  the  first  instance  by  the  examiners-in- 
chief.  Ex  parte  Nenninger,  C.  D.  1906,  122 
O.  G.  1397. 

94.  Where  in  the  original  specification  one 
member  is  said  to  be  secured  to  a  part  "by 
means  of  a  bolt  or  pivot"  and  in  an  original 
claim  the  member  is  referred  to  as  being  "con- 
nected adjustably"  with  such  part,  but  no 
means     for    permitting    such    adjustment     is 


shown  in  the  drawing.  Held,  that  amendment 
to  the  drawing  should  be  permitted  to  show 
suitable  means  for  performing  the  function 
claimed,  if  supported  by  a  supplemental  oath. 
Ex  parte  Sylvestersen,  C.  D.  1907,  129  O.  G. 
3160. 


DURESS. 

1.  It  would  be  carrying  the  rule  of  compul- 
sion or  duress  a  great  way  and  to  a  dangerous 
extent  to  hold  that  any  one  occupying  a  sub- 
ordinate position  is  not  to  be  bound  by  his 
acts  as  between  himself  and  his  superior  be- 
cause of  a  supposed  fear  on  the  part  of  the 
clerk  that  should  he  protest  he  might  lose  his 
employment,  d  Barr  Car  Co.  v.  Chicago  & 
Northwestern  Railway  Company,  C.  D.  1901, 
97  O.  G.  2534. 


EQUIVALENTS. 

1.  A  device  embodying  two  springs  used  to 
disrupt  a  telephone  circuit  is  substantially 
equivalent  to  a  device  embodying  one  spring 
for  the  same  purpose.  *McBerty  v.  Cook, 
C.   D.   1900,  90  O.  G.  2293. 

2.  The  decisions  that  an  element  included  in 
a  claim  cannot  be  regarded  as  immaterial  were 
not  intended  to  exclude  from  consideration  the 
doctrine  of  mechanical  equivalents.  An  ele- 
ment cannot  be  held  to  be  immaterial  where 
there  is  no  corresponding  element  in  the  other 
party's  claim ;  but  where  there  is  a  correspond- 
ing element  the  question  whether  they  are 
mechanical  equivalents  must  be  determined. 
Ex  parte  Thompson,  C.  D.  1902,  98  O.  G.  227. 

3.  The  range  of  equivalents  depends  upon 
the  extent  and  nature  of  the  invention.  If  the 
invention  is  broad  and  primary  in  its  char- 
acter, the  range  of  equivalents  will  be  corre- 
spondingly broad  under  the  liberal  construc- 
tion which  the  courts  give  to  such  inventions. 
**Continental  Paper  Bag  Company  v.  Eastern 
Paper  Bag  Company,  C.  D.  1908,  136  O.  G. 
1297. 


ESTOPPEL. 

1.  The  doctrine  of  equitable  estoppel  ap- 
plies in  the  administration  of  the  patent  law, 
as  it  does  in  other  cases,  for  the  prevention 
of  injustice.  *Mower  v.  Duell,  Commissioner 
of  Patents,  C.  D.  1899,  88  O.  G.  191. 

2.  Where  a  suit  upon  a  patent  terminates 
for  the  defendant  and  complainant  thereafter 


138 


EVIDENCE— EXAMINATION  OF  APPLICATION,  1. 


sues  a  customer  of  the  defendant  upon  the 
same  patent  and  the  aforesaid  defendant  as- 
sumes the  defense  of  his  customer's  suit. 
Held,  that  he  is  not  thereby  estopped  from 
proceeding  against  the  complaint  for  wrong- 
fully interfering  with  his  business.  **Kersler 
V.   Eldred,  C.  D.  1907,  128  O.  G.  1(J90. 

3.  Held,  that  the  aforesaid  defendant  was 
entitled  to  proceed  against  the  complainant  in 
equity.    *Id. 

4.  "A  patentee  having  once  presented  his 
claim  in  one  form  and  the  patent  office  having 
rejected  it  with  his  acquiescence,  he  is  estopped 
to  claim  the  benefit  of  his  rejected  claim  or 
such  construction  of  his  amended  claim  as 
would  be  equivalent  to  the  rejected  claim,  and 
it  makes  no  difference  whether  the  rejected 
claim  be  broader  or  narrower  than  the  one  al- 
lowed. *Engel  V.  vSinclair  et  al.,  C.  D.  1910, 
152  O.  G.  489. 


EVIDENCE. 

1.  While  the  allowance  of  an  application  is 
not  evidence  for  the  interested  party  in  the 
ordinary  sense,  yet  it  is  a  record  of  an  offi- 
cial action  in  the  office  and  under  the  authority 
of  the  commissioner  of  which  the  court  of  ap- 
peals may  take  notice  in  order  that  justice 
may  be  done.  *Cain  v.  Park,  C.  D.  1899,  80 
O.  G.  797. 

2.  In  passing  upon  an  application  for  a  pat- 
ent the  commissioner  may  go  outside  of  the 
record  and  take  notice  of  the  official  entries 
made  in  his  own  office  and  under  his  own 
supervision  in  order  that  justice  may  be  done 
to  parties.     *Id. 

3.  Held,  that  congress  did  not  intend  to  es- 
tablish two  rules  of  evidence  for  determining 
the  effective  date  of  invention,  one  to  be  ap- 
plied where  the  rights  of  applicants  are  to  be 
determined  inter  partes  and  another  where 
they  are  to  be  determined  ex  parte.  A  ques- 
tion which  is  ex  parte  one  day  may  be  raised 
inter  partes  the  next.  Ex  parte  Grosselin,  C. 
D.  1901,  97  O.  G.  2977. 


EXAMINATION  OF  APPLICATION. 

I.  In  General. 
II.  Rejection. 

III.  Actions  Other  than  Rejection. 

IV.  Final  Rejection. 

(a)  Proper  and  In  General. 

(b)  Improper. 


V.    E.XPLANATlON    OF    AcTION. 

(a)  Sufficient  and  In  General. 

(b)  Insufficient. 

VI.  Persuasiveness  of  Previous  Action. 

VII.    PREFERREn   Ari'LICATION. 

I.  In  General. 

1.  Examiners  should  observe  toward  attor- 
neys the  same  courtesy  that  is  required  of 
attorneys  in  the  prosecution  of  cases  before 
the  office.  Ex  parte  Horstick,  C.  D.  1898,  84 
O.  G.  981. 

2.  The  office  has  no  right,  except  where  the 
right  of  the  applicant  is  clearly  shown,  to 
create  a  necessity  or  make  it  incumbent  upon 
a  prior  inventor  and  pattentee  to  go  into  court 
to  vindicate  his  patent  as  against  a  subsequent 
patentee  for  substantially  the  same  invention, 
and  therefore  it  should  not  allow  claims  mere- 
ly because  they  contain  apparent  structural 
differences  over  those  of  the  patentee  upon 
the  theory  that  no  great  harm  could  be  done 
by  such  course.  *Marshutz  v.  Commissioner 
of  Patents,  C.  D.  189S,  85  O.  G.  778. 

3.  When  an  application  has  received  its 
serial  number  and  date  of  filing  and  has  been 
forwarded  to  the  examiner,  it  cannot  be  held 
to  have  no  standing  before  the  office  in  the 
absence  of  such  vital  defect  as  would  warrant 
its  return  to  the  application  clerk  for  correc- 
tion. Ex  parte  Becker,  C.  D.  1901,  97  O.  G. 
1597. 

4.  When  an  application  has  been  sent  for- 
ward for  examination,  it  is  presumably  com- 
plete within  the  requirements  of  the  statutes, 
and  the  examination  thereof  and  action  there- 
on should  be  directed  throughout  to  the  mer- 
its.   Id. 

5.  When  there  is  no  defect  in  tke  parts  of 
an  application  which  amounts  to  a  failure  to 
comply  with  the  express  terms  of  the  statutes, 
it  is  contrary  to  the  policy  of  the  office  and 
unjust  to  the  applicant  to  postpone  action  on 
the  merits  because  of  a  formal  defect  which 
does  not  render  the  disclosure  of  the  alleged 
invention  imperfect  or  prevent  a  complete  un- 
derstanding of  the  same  by  the  examiner.    Id. 

6.  The  examination  of  claims  is  not  a  mere 
formal  proceeding,  but  is  essentially  an  ex- 
amination into  the  merits  of  the  case.  Ex 
parte  Broderick,  C.  D.  1901,  96  O.  G.  1430. 

7.  When  the  invention  can  be  understood, 
the  case  should  receive  action  throughout  on 
its  merits.  (Rule  04.)  Ex  parte  Springborn, 
C.  D.  1902,  99  O.  G.  G67. 


EXAMINATION  OF  APPLICATION,  II. 


137 


8.  To  merely  state  that  there  is  patentable 
subject-matter  presented  in  the  application  is 
not  sufficient  under  the  last  clause  of  Rule  64 
to  warrant  the  examiner  in  insisting  upon 
formal  requirements  before  the  case  receives 
action  on  its  merits.  Requirements  in  matters 
of  form  will  be  insisted  upon  only  in  those 
cases  in  which  the  examination  on  the  merits 
is  completed.  The  case,  except  for  formal 
matters,  must  be  ready  for  allowance  or  for 
appeal.    Id. 

9.  A  statement  in  a  letter  from  the  exam- 
iner that  certain  claims  are  allowed  upon  re- 
solving doubts  in  the  applicant's  favor  or- 
dered stricken  from  the  record.  Ex  parte 
Overstrom,  C.  D.  1903,  lOfi  O.  G.  1531. 

10.  The  request  that  the  examiner  be  per- 
mitted to  go  to  Woonsocket,  R.  I.,  to  inspect 
the  machine  cannot  be  granted,  for  the  reason 
that  the  facts  do  not  warrant  the  examiner 
giving  his  whole  time  for  several  days  to  this 
one  application  when  there  are  many  other 
cases  before  him  which  are  awaiting  action. 
The  rights  of  the  other  applicants  who  have 
applications  pending  before  the  examiner  must 
be  considered.  Ex  parte  McTammany  and 
Wright,  C.  D.  1903,  103  O.  G.  661. 

11.  All  objections  to  the  application,  wheth- 
er relating  to  form  or  merits,  should  be  made 
as  soon  as  possible,  and  new  objections  late  in 
the  prosecution  of  a  case  should  be  necessary 
only  in  exceptional  cases ;  but  it  does  not  fol- 
low that  the  objection  is  to  be  ignored  be- 
cause not  discovered  as  soon  as  desirable.  Ex 
parte  Lewis,  C.  D.  1904,  108  O.  G.  559. 

12.  It  is  the  duty  of  the  patent  office  to 
make  all  proper  tests  and  experiments  with 
regard  to  matters  involved  in  claims  to  inven- 
tions relating  to  science  and  the  useful  arts 
to  establish  the  truth  as  between  the  parties 
and  as  between  the  parties  and  the  public. 
(Sec.  4890,  Rev.  Stats.)  *Flora  v.  Powne,  C. 
D.    1904,   109   O.   G.   2443. 

13.  In  the  actions  upon  cases  both  by  the  of- 
fice and  l)y  the  applicants  the  reasons  for  the 
rules  of  procedure  should  be  kept  in  mind, 
and  they  should  not  be  lost  sight  of  by  too 
close  attention  to  supposed  technical  require- 
ments as  to  form.  The  purpose  of  an  action 
upon  a  case  should  be  to  make  clear  the  posi- 
tion of  the  one  acting,  whether  he  is  the  ex- 
aminer or  the  applicant,  and  if  he  does  this 
the  form  is  of  minor  importance.  Ex  parte 
Murray,  C.  D.  1904,  111  O.  G.  2491. 

14.  It  is  not  good  practice  to  base  actions 
in  a  case  upon  oral  understandings  or  agree- 


ments without  stating  in  the  record  the  rea- 
sons for  the  actions.  Ex  parte  Hunter,  C.  D. 
1905,  116  O.  G.  1731. 

15.  Where  no  reason  is  given  for  the  use 
of  certain  ingredients  of  the  article  of  manu- 
facture which  are  set  forth  in  the  specification 
and  the  examiner  is  of  the  opinion  that  such 
ingredients  have  a  deleterious  effect  or  no 
effect  at  all,  he  should  not  refuse  to  act  upon 
the  merits  of  the  case,  but  should  reject  the 
claim  for  this  reason.  Ex  parte  Danford,  C. 
U.  1907,  131  O.  G.  942. 

16.  Where  an  applicant  filed  an  amendment 
directing  the  cancelation  of  the  finally  re- 
jected claims  of  his  application  and  requesting 
that  the  case  be  passed  to  issue,  but  on  the 
same  day  filed  an  appeal  from  the  examiner's 
final  rejection,  in  which  appeal  papers  he  asked 
that  the  amendment  be  withdrawn,  although 
the  request  for  the  withdrawal  of  the  amend- 
ment was  informal,  in  that  it  was  embodied  in 
the  appeal  papers  instead  of  in  a  separate 
paper,  the  examiner  should  not  have  entered 
the  amendment  and  passed  the  case  to  issue 
without  giving  the  applicant  an  opportunity 
to  elect  the  course  he  desired  to  pursue.  Ex 
parte  Kruse,  C.  D.  1908,  133  O.  G.  229. 

17.  "Complete  actions  on  the  part  of  this 
office  are  as  important  as  the  avoidance  of 
piecemeal  prosecution  on  the  part  of  the  ap- 
plicant. Thereby  the  burden  incident  to  the 
prosecution  of  the  application  is  reduced  both 
for  the  applicant  and  the  office,  unnecessary 
delay  is  eliminated,  and  the  issuance  of  the 
patent  expedited.  The  importance  of  an  early 
issuance  of  a  patent  on  an  application  contain- 
ing allowable  subject-matter,  thereby  placing 
the  invention  in  the  hands  of  the  public 
through  the  expiration  of  the  patent  monopoly 
at  as  early  a  date  as  possible,  has  been  em- 
phasized in  many  commissioners'  decisions." 
Ex  parte  Garrett,  C.  D.  1910,  158  O.  G.  701. 

II.  Rejection. 

18.  Where  the  examiner's  action  was  irreg- 
ular but  was  in  effect  a  rejection  and  was  so 
recognized  by  the  applicant,  the  case  is  in  con- 
dition for  appeal  and  will  not  be  remanded  for 
further  action  by  the  examiner.  Ex  parte 
.Adams,  C.  D.  1898,  84  O.  G.  311. 

19.  .-Ml  the  references  applicable  to  a  claim 
should,  if  possible,  be  cited  in  the  first  office 
action.  Ex  parte  Waters,  C.  D.  1900,  97  O. 
G.  2744. 


138 


EXAMINATION  OF  APPLICATION.  Ill,  IV,  (a). 


20.  It  may  be  stated  as  a  general  rule  that 
where  an  examiner  rejects  a  claim  because  he 
thinks  the  subject-matter  thereof  is  old  he 
should  either  cite  a  specific  reference  show- 
ing the  prior  art  or  make  the  affidavit  called 
for  by  Rule  60.  Ex  parte  Walker,  C.  D.  1903, 
1112  O.  G.  465. 

21.  Where  an  examiner  rejects  a  claim  on  a 
patent  when  taken  in  conjunction  with  a 
"common  expedient"  made  use  of  by  printers 
and  refers  to  the  blank  form  commonly  used 
in  oaths  to  applications  as  illustrating  what  he 
means  by  the  "common  expedient,"  his  rejec- 
tion is  sufficiently  definite,  and  he  should  not 
be  required  to  make  an  affidavit  to  explain 
his  meaning  more  fully.    Id. 

22.  Where  two  or  more  claims  are  met  in 
a  single  reference  or  if  the  same  grounds  of 
rejection  apply  to  them,  a  single  statement  by 
the  examiner  to  that  effect  makes  his  position 
just  as  clear  as  would  a  repetition  of  the 
statement  for  each  separate  claim.  The  sin- 
gle statement,  if  clear,  is  sufficient,  since  it 
gains  nothing  in  clearness  or  force  by  repeti- 
tion. There  is  objection  to  the  grouping  of 
claims  only  where  it  is  done  at  a  sacrifice  to 
clearness.  Ex  parte  Murray,  C.  D.  1904,  111 
O.  G.  2491. 

23.  Where  the  examiner  after  fully  pointing 
out  why  the  claims  presented  were  held  to  be 
not  patentable  over  the  references  of  record 
stated  that  in  his  opinion  the  case  was  "de- 
void of  any  patentable  merit  whatsoever," 
Held,  that  such  statement  was  unobjectionable. 
Ex  parte  Fox,  C.  D.  1910,  l.--,?  O.  G.  485. 

III.  Actions  Other  than  Rejection. 

24.  The  practice  of  raising  objections  to  an 
amendment  for  the  first  time  only  after  send- 
ing the  applicant  to  the  commissioner  on  a 
petition  directed  to  other  objections  to  the 
same  amendment  has  been  repeatedly  con- 
demned. (Ex  parte  Kitson,  C.  D.  1881,  49, 
20  O.  G.  1750;  Ex  parte  Bertrand,  69  MS. 
Dec.,  54.)  Ex  parte  Blanchard,  C.  D.  1000, 
9.S  O.  G.  2106. 

25.  Where  the  examiner  refused  to  enter  an 
amendment  on  the  ground  that  the  case  stood 
finally  rejected,  and  upon  petition  to  the  com- 
missioner he  was  directed  to  enter  it,  but 
thereafter  for  the  first  time  raised  the  re- 
quirement for  a  supplemental  oath  against  the 
amendment  and  again  refused  to  enter  it  on 
the  new  ground  that  it  was  not  accompanied 
by  such  an  oath,  Held,  that  the  examiner's  re- 


fusal to  comply  with  the  order  to  enter  the 
amendment  admits  of  no  excuse.  Having 
violated  Rule  64,  which  requires  that  all  ob- 
jections be  raised  at  one  time,  he  is  in  no  posi- 
tion to  hide  behind  a  strained  construction  of 
Rule  48  to  excuse  his  refusal  to  comply  with 
the  commissioner's  order.    Id. 

26.  The  practice  of  an  examiner  in  his  first 
action  suggesting  to  an  applicant  that  claims 
are  in  the  wrong  form  is  not  objectionable. 
(Ex  parte  Aberli,  C.  D.  1900,  95,  91  O.  G. 
2:W1.)  Ex  parte  Trevette,  C.  D.  1901,  97  O. 
G.  1173. 

27.  Formal  objections  to  a  case  should  be 
made  in  the  first  office  letter;  but  the  fact  that 
they  are  not  so  made  is  no  good  reason  for 
allowing  a  patent  containing  formal  defects 
which  are  subsequently  discovered.  Ex  parte 
Blakeman,  C.  D.  1902,  98  O.  G.  791. 

28.  Where  an  applicant  in  good  faith  by 
amendment  attempts  to  cure  formal  objections, 
if  the  amendments  are  not  satisfactory  the 
examiner  should  so  state  in  specific  language. 
Ex  parte  LjUngstrom,  C.  D.  1905,  119  O.  G. 
223.5. 

29.  Only  where  claims  are  indefinite  in  the 
sense  that  they  are  ambiguous,  equivocal,  lack- 
ing in  clearness,  or  unintelligible,  shall  the  ex- 
aminer's action  be  in  the  form  of  an  objec- 
tion. The  remedy  from  this  action  is  by  peti- 
tion to  the  commissioner  in  person.  Ex  parte 
Bitner,  C.  D.  1909,  140  O.  G.  256. 

IV.  Final  Rejection. 
(a)  Proper,  and  In  General. 

30.  Where  a  case  had  received  numerous 
actions  and  was  under  final  rejection,  Held, 
that  under  the  practice  as  indicated  in  ex 
parte  Barnes  (C.  D.  1897,  76,  80  O.  G.  2038) 
the  examiner  should  give  applicant  a  full 
statement  as  to  the  pertinency  of  the  refer- 
ences and  the  reasons  for  rejecting  the  claims 
without  reopening  the  case.  Ex  parte  Mer- 
genthaler,  C.  D.  1898,  85  O.  G.  775. 

31.  Where  the  claims  under  consideration 
are  not  in  the  same  words  as  those  before  re- 
jected, but  mean  substantially  the  same  thing 
and  cover  the  same  idea  of  invention.  Held. 
that  they  may  properly  be  finally  rejected.  Ex 
parte  Rider,  C.  D.  1898,  85  O.  G.  1078. 

32.  In  the  letter  which  is  intended  to  close 
the  consideration  of  a  case  before  him  and 
place  it  in  condition  for  appeal,  the  examiner 
should  state  that  the  rejected  claims  are  finally 


EXAMINATION  OF  APPLICATION,  III,  IV,  (a). 


139 


rejected.     Ex   parte   Kendall,   C.    D.   1000,   93 
O.  G.  754. 

33.  Where  after  numerous  actions  in  the 
case  in  which  the  e.\aminer  states  that  there 
is  nothing  patentable  presented  the  claims  are 
finally  rejected,  although  by  reason  of  amend- 
ments they  are  not  the  same  in  all  details  as 
the  claims  before  rejected,  and  the  applicant 
thereafter  presented  two  sets  of  claims  sub- 
stantially the  same  as  those  finally  rejected 
and  the  examiner  while  refusing  to  reopen 
the  case  stated  that  they  were  substantially  the 
same  and  un])atentable,  Held,  that  the  final  re- 
jection was  technically  unwarranted  at  the 
time,  but  that  since  there  is  a  clear  issue  be- 
tween the  applicant  and  the  examiner  no  use- 
ful purpose  would  be  served  by  reopening  the 
case,  and  since  substantially  the  same  claims 
have  been  reconsidered  by  him  it  is  directed 
that  the  last  amendment  be  entered  and  the 
claims  considered  finally  rejected.  Ex  parte 
Courville,  C.  D.  1901,  96  O.  G.  3061. 

34.  Where  in  a  letter  of  final  rejection  the 
examiner  for  the  first  time  stated  that  "the 
introductory  words  of  a  claim  import  no  struc- 
ture whatever  into  a  claim,  Held,  that  such  a 
statement  is  merely  an  elaboration  or  explana- 
tion of  the  grounds  of  rejection  previously 
cited  against  the  claims  and  does  not  consti- 
tute a  new  reason  for  rejection.  Ex  parte 
Coddington,  S.  D.  1901,  96  O.  G.  1239. 

35.  The  words  "new  *  *  reasons  for  rejec- 
tion" in  Rule  68  mean  new  "grounds  involv- 
ing the  merits  of  the  invention,"  such  as  are 
enumerated  in  Rule  133.     Id. 

36.  Where  the  examiner  twice  wrote  the  ap- 
plicant that  a  "patent  is  refused"  without  stat- 
ing in  either  letter  that  the  claims  were  finally 
rejected  and  within  one  year  from  the  last 
letter  the  applicant  presented  an  amendment 
which  the  examiner  refused  to  enter  on  the 
ground  that  the  case  was  under  final  rejection 
and  where  the  result  of  the  examiner's  action 
would  be  an  abandonment  of  the  case.  Held, 
that  the  amendment  should  be  entered.  Ex 
parte  Byrnes,  C.  D.  1901,  97  O.  G.  191. 

37.  The  rejection  of  claims  should  be  in 
plain  unmistakable  terms,  and  the  letter  in- 
tended as  closing  the  consideration  of  the 
case  should  indicate  clearly  that  the  claims 
are  finally  rejected.  The  burden  of  judging 
for  himself  whether  the  second  letter  of  rejec- 
tion contains  no  new  reasons  for  rejection 
should  not  be  placed  upon  the  applicant.    Id. 

38.  Where  in  rejecting  a  claim  the  examiner 
fully  states  the  reasons   for  such  action  and 


applicant,  without  specifically  requesting  re- 
consideration, submits  a  statement  of  reasons 
why,  in  his  opinion,  the  claim  is  not  met  by 
the  references,  the  only  fair  interpretation  of 
such  action  by  applicant  is  that  he  persists  in 
his  claim.  It  follows  that  a  final  rejection  is 
proper,  if  in  the  opinion  of  the  examiner  the 
same  references  and  reasons  for  rejection  are 
applicable.  Ex  parte  Vose,  C.  D.  1901,  97  O. 
C.  1599. 

39.  The  examiner  may  finally  reject  claims 
and  close  the  consideration  of  the  merits  of 
the  case  before  him  before  all  formal  errors 
are  corrected  under  the  rule,  which  provides 
that  objections  to  form  will  be  subordinated 
to  matters  of  merits.  It  is  merely  necessary 
that  the  formal  matters  be  disposed  of  before 
an    appeal    is    forwarded.      Ex    parte    Severy, 

C.  D.   1901,  97  O.  G.  274.5. 

40.  Where  after  the  rejection  of  claims  the 
applicant  presented  an  amendment  correcting 
the  spelling  of  words  positively  including  ele- 
ments which  were  inferentially  included  before 
and  transposing  a  descriptive  phrase  from  one 
place  to  another,  Held,  that  the  amendment 
is  merely  formal  in  character  and  does  not 
prevent  a  final  rejection.     Ex  parte  Casler,  C. 

D.  1902,  100  O.  G.  1330. 

41.  Where  an  applicant  makes  merely  form- 
al amendments  to  the  claims  and  requests  re- 
consideration. Held,  that  a  final  rejection  is  in 
order.  Ex  parte  Downing,  C.  D.  1902,  100  O. 
G.  2176. 

42.  Where  the  letter  of  final  rejection  is  not 
full  and  specific,  but  when  taken  with  the 
other  letters  in  the  case  the  examiner's  posi- 
tion is  made  clear.  Held,  that  he  will  not  be 
required  to  make  a  further  explanation.  Ex 
parte  Hallowell,  C.  D.  1903,  105  O.  G.  1533. 

43.  Where  the  applicant  asks  the  examiner 
to  make  his  action  final,  he  is  estopped  from 
thereafter  alleging  that  the  final  rejection  was 
premature.  Ex  parte  Munson,  C.  D.  1903,  105 
O.  G.  204. 

44.  Where  the  claims  in  an  application  stand 
finally  rejected  and  the  examiner  required 
the  applicant  as  a  condition  precedent  to  the 
allowance  of  the  claims  to  demonstrate  the 
feasibility  of  the  process  claimed.  Held,  that 
such  action  was  proper ;  but  it  is  optional 
with  the  applicant  to  produce  such  evidence 
before  the  examiner  as  will  satisfy  him  of  the 
utility  of  the  process  or  to  prosecute  an  ap- 
peal to  the  examiners-in-chief.  Ex  parte 
Brisbane,  C.  D.  1903,  107  O.  G.  1097. 


140 


EXAMINATION  OF  APPLICATION.  IV,    (a). 


45.  Where  a  claim  is  finally  rejected  on  two 
patents  taken  togetlicr  and  it  appears  that  the 
claim  has  previously  been  rejected  for  the 
same  reasons,  but  in  the  last  preceding  action 
only  one  of  the  patents  was  cited,  field,  that 
the  final  rejection  was  proper  and  that  the 
applicant  was  not  entitled  to  amend  thereafter. 
E.X  parte  Minich,  C.  D.  1903,  107  O.  G.  1971. 

46.  Where  the  claims  in  an  application  have 
been  rejected  and  the  reasons  therefor  have 
been  fully  and  precisely  stated  and  the  ap- 
plicant files  an  argument  to  meet  the  exam- 
iner's views  and  asks  for  a  further  explana- 
tion. Held,  that  the  examiner  properly  finally 
rejected  the  claims,  although  the  applicant  said 
he  did  not  desire  a  formal  reconsideration.  Ex 
parte  Casselman,  C.  D.  1903,  102  O.  G.  230. 

47.  Where  the  applicant  files  an  argument 
traversing  the  action  of  the  examiner  and  the 
examiner  insists  upon  his  action  without  cit- 
ing new  reasons  for  rejection,  Held,  that  a 
final  rejection  is  in  order.     Id. 

48.  Where  in  a  design  case  the  claim  is  re- 
jected and  the  applicant  is  required  to  cancel 
unnecessary  description  in  the  specification 
and  he  files  an  amendment  canceling  the  de- 
scription and  asking  for  reconsideration  of 
the  claim,  Held,  that  the  case  is  in  condition 
for  final  rejection.  Ex  parte  Segelhorst,  C.  D. 
1904,  109  O.  G.  1887. 

49.  An  amendment  to  the  specification  in 
a  design  case  canceling  unnecessary  descrip- 
tion does  not  change  the  invention  claimed 
and  does  not  introduce  any  new  elements  for 
consideration  upon  the  question  of  patent- 
ability of  the  claim.  It  is  not,  in  effect,  an 
amendment  of  the  claim.     Id. 

50.  Where  the  examiner  rejects  the  claims 
upon  references  and  the  applicant  twice  asks 
him  to  explain  why  the  device  shown  in  one 
of  those  references  is  operative  and  the  ex- 
aminer has  fully  and  carefully  explained  the 
reference  and  his  position  in  regard  to  it, 
Held,  that  he  was  justified  in  finally  rejecting 
the  claims.  Ex  parte  Leilich,  C.  D.  1904,  108 
O.  G.  .-iOl. 

51.  Where  the  applicant  explains  his  posi- 
tion in  regard  to  the  references  fully  and  asks 
for  reconsideration,  Held,  that  the  examiner 
properly  rejected  the  claims  finally,  stating  his 
reasons  fully.  The  case  is  different  from  one 
where  explanation  is  asked  on  some  point  be- 
fore action.  Ex  parte  Silsby,  C.  D.  1904,  108 
O.  G.  1051. 

52.  Where  one  of  the  figures  of  the  draw- 
ing, showing  an  unimportant  detail,  was  ob- 


jected to  in  the  same  action  in  which  the 
claims  were  rejected  on  references.  Held,  that 
a  subsequent  amendment  overcoming  this  ob- 
jection and  requesting  a  second  action  upon 
the  claims  places  the  case  in  condition  for 
final  rejection.  Ex  parte  Marks,  C.  D.  1904, 
109  O.  G.  1008. 

53.  Where  the  invention  is  understood  and 
action  upon  the  merits  is  given.  Held,  that  the 
presentation  of  an  amendment  overcoming 
some  formal  objection  constitutes  no  reason 
for  suspending  further  action  upon  the  merits 
until  the  applicant  is  notified  to  the  effect  of 
the  formal  amendment.     Id. 

54.  Where  the  application  and  the  refer- 
ences present  simple  devices  and  the  pertinence 
of  the  references  and  the  examiner's  position 
with  respect  to  the  rejected  claims  has  been 
repeatedly  explained  and  it  appears  from  the 
arguments  filed  that  the  issue  between  the 
applicant  and  the  examiner  is  clearly  defined 
and  the  applicant  is  apparently  not  in  doubt 
as  to  whether  the  features  of  his  device  upon 
which  he  relies  to  support  the  claims  are  dis- 
closed in  the  references,  but  disagrees  with 
the  conclusion  of  the  examiner  that  these 
features  do  not  render  the  claims  allowable, 
and  the  claims  were  presented  a  second  time 
with  argument  and  without  amendment.  Held. 
that  the  examiner,  adhering  to  his  original 
opinion  and  having  no  new  grounds  of  re- 
jection to  offer,  very  properly  decided  that  the 
prosecution  before  him  should  close  and  made 
his  action  final.  Ex  parte  Almy,  C.  D.  19().->, 
115  O.  G.  l.'>84. 

55.  Where  a  claim  for  a  process  is 'rejected, 
which  claim  is  qualified  by  a  brief  statement 
of  the  article  produced,  and  an  amendment  is 
filed  more  specifically  defining  the  structure 
of  the  article,  Held,  that  the  process  claim  is 
not  changed  in  scope,  and  a  final  rejection  is 
in  order.  Ex  parte  Crecelius,  C.  D.  190.5,  116 
O.  G.  2.')31. 

56.  Where  the  letter  of  final  rejection  stated 
the  grounds  of  rejection  more  explicitly  than 
they  had  been  stated  before,  but  the  previous 
letter  had  nevertheless  stated  these  grounds 
with  such  clearness  that  the  applicant  could 
have  decided  intelligently  therefrom  whether 
to  amend  the  case  or  to  submit  the  same  with- 
out change  for  reconsideration.  Held,  that  the 
final  rejection  could  not  be  considered  im- 
proper, as  one  including  new  grounds  of  re- 
jection necessitating  further  amendment.  Ex 
parte  Wagner,  C.  D.  1905,  118  O.  G.  1684. 


EXAMINATION  OF  APPLICATION,  IV,  (a). 


141 


57.  Where  in  a  letter  of  tinal  rejection  it 
was  stated  that  amendments  to  the  drawing 
and  specification  would  be  re(|uircd  if  the  re- 
jection was  sustained  on  appeal,  Held,  that 
this  statement  afforded  no  reason  for  setting 
aside  the  final  rejection,  though  the  specific 
changes  which  would  be  required  had  not  been 
pointed  out,  but  the  grounds  of  rejection  had 
been  clearly  stated  in  previous  actions.     Id. 

58.  Where  the  letter  of  final  rejection  in- 
cluded a  withdrawal  of  one  of  the  original 
grounds  of  rejection.  Held,  that  this  action 
afforded  no  reason  for  permitting  further 
prosecution  before  the  primary  examiner  and 
that  the  final  rejection  was  not  improper  in 
view  thereof.     Id. 

59.  Where  it  was  contended  that  the  ex- 
aminer should  reply  to  every  argument  which 
may  be  advanced  before  linally  rejecting  the 
claim  of  an  application.  Held,  that  such  is  not 
the  case  and  that  it  is  not  the  duty  of  exam- 
iners to  enter  into  arguments  with  applicants, 
but  to  state  their  objections  and  reasons  for 
rejection  clearly,  to  consider  such  facts  and 
arguments  as  may  be  presented,  and  to  act  in 
accordance  with  their  conclusions  determined 
in  view  of  all  the  circumstances.     Id. 

60.  Where  petition  is  brought  from  the  re- 
fusal of  the  examiner  to  point  out  previously 
rejected  claims  which  he  considers  to  be  sub- 
stantially the  same  as  those  finally  rejected, 
Held,  that  applicant  is  entitled  to  this  in- 
formation, and  examiner  directed  to  furnish 
same,  though  without  withdrawal  of  the  final 
rejection.  Ex  parte  Thayer,  C.  D.  lOO,".,  118 
O.  G.  22r)2. 

61.  Where  the  examiner  rejects  the  claims 
on  the  ground  of  inoperativeness  and  the  ap- 
plicant files  a  letter  and  an  affidavit  seeking 
to  show  that  the  device  is  operative  and  asks 
for  a  reconsideration,  which  is  given,  and 
the  claims  are  finally  rejected  for  the  same 
reasons.  Held,  that  the  final  rejection  cannot 
be  considered  premature  simply  because  the 
examiner  in  his  final  rejection  entered  into  an 
explanation  to  meet  the  arguments  of  the  ap- 
plicant. Ex  parte  vSchmid,  C.  D.  1906,  121  O. 
G.  167.-.. 

62.  Where  the  final  rejection  referred  to 
no  new  reasons  or  references  and  the  inven- 
tion was  simple,  the  fact  that  a  more  extended 
explanation  of  the  same  ground  of  rejection 
was  given  furnishes  no  reason  for  reopening 
the  case  for  the  consideration  of  additional 
claims.  Ex  parte  Kinney  and  Schultz,  C.  D. 
1906,  121  O.  G.  3325. 


63.  Where  a  claim  is  presented  a  second 
time  without  material  amendment  and  with 
no  direct  request  for  further  explanation  of 
the  grounds  for  rejection.  Held,  that  the  ex- 
aminer, adhering  to  his  original  opinion  and 
having  no  new  grounds  for  rejection  to  offer, 
may  properly  make  his  action  final,  even 
though  it  is  but  the  second  action  in  the  case. 
Ex  parte  Cox,  C.  D.  1906,  122  O.  G.  104:>. 

64.  Where  the  prior  office  actions  clearly 
disclose  the  grounds  on  wdiich  each  of  the 
claims  under  final  rejection  stands  rejected 
and  the  letter  of  final  action  contains  a  mere 
restatement  at  greater  length  of  said  grounds. 
Held,  that  the  final  rejection  was  in  order. 
Ex  parte  Flindall,  C.  D.  1906,  123  O.  G.  1396. 

65.  Where  in  response  to  the  office  action 
rejecting  the  claims  on  the  ground  that  the 
device  is  devoid  of  utility  applicant  presents 
an  argument  traversing  the  position  taken  by 
the  examiner.  Held,  that  the  examiner  being 
of  the  opinion  that  his  ground  for  rejection 
was  well  taken  was  correct  in  adhering  to  it 
and  making  it  final.  Ex  parte  Loppentien,  C. 
D.   1906,    122  O.  G.   172:i. 

66.  Where  the  examiner  points  out  certain 
formal  objections  in  his  letter  finally  rejecting 
the  claims  of  an  application,  Held,  that  the 
final  rejection  is  not  thereby  rendered  prema- 
ture. Ex  parte  Green,  C.  D.  1907,  130  O.  G. 
299. 

67.  Where  substitute  claims  were  rejected 
upon  the  same  references  as  the  prior  claims 
and  it  was  stated  that  the  "claims  are  sub- 
stantially like  those  previously  rejected  on  the 
same  references,  being,  if  anything,  a  little 
broader,"  Held,  that  a  final  rejection  was 
proper.  Ex  parte  Lasance,  C.  D.  1907,  131 
O.  G.  1421. 

68.  Where  the  pertinency  of  the  references 
had  been  sufficiently  explained  and  claims  were 
presented  without  argument,  but  with  a  re- 
quest for  further  explanation  of  the  refer- 
ences, a  final  rejection  of  the  claims  was  prop- 
er.   Ex  parte  Ault,  C.  D.  1908,  137  O.  G.  1941. 

69.  Where  the  amendments  or  reasons  pre- 
sented by  an  applicant  in  response  to  an  action 
by  the  office  do  not  necessitate  the  citation 
by  the  examiner  of  additional  references  or 
reasons,  applicant's  right  to  further  prosecu- 
tion of  the  application  before  the  examiner  is 
at  ,nn  end,  and  the  permission  of  further 
amendment  is  within  the  discretion  of  the  of- 
fice. Ex  parte  Miller,  C.  D.  1909,  139  O.  G. 
730. 


142 


EXAMINATION  OF  APPLICATION,  IV,  (a). 


70.  Where  tlic  examiner  has  held  that  cer- 
tain claims  are  unpatentable  and  has  fully  ad- 
vised the  applicant  of  his  reasons  for  such 
holding  and  the  latter,  after  reasonable  prose- 
cution of  the  case,  has  failed  to  so  amend 
the  case  as  to  necessitate  the  citation  of  new 
references  and  has  been  unable  by  argument 
to  convince  the  examiner  that  he  was  in  error, 
an  issue  is  reached,  and  the  examiner  is  justi- 
fied in  refusing  to  accept  further  amendment 
and  in  finally  rejecting  the  claims  then  of 
record  in  the  case.    Id. 

71.  Where  the  claims  of  an  application  have 
been  rejected  in  view  of  references  and  the 
applicant,  having  had  ample  opportunity  to 
differentiate  his  alleged  invention  from  the 
references  of  record,  if  possible,  and  having 
failed  to  do  so  and  also  having  been  unable  to 
convince  the  examiner  by  argument  of  the 
patentability  of  any  claim  presented  and  hav- 
ing been  advised  that  the  invention  disclosed 
in  the  application  is  unpatentable,  there  is 
no  reason  for  further  continuing  the  prosecu- 
tion of  the  case  before  the  examiner,  and  final 
rejection  should  be  entered,  notwithstanding 
the  fact  that  the  claim  presented  may  differ 
in  terms  from  those  previously  considered. 
Ex  parte  Perry,  C.  D.  1909,  140  O.  G.  1001. 

72.  Where  after  a  thorough  discussion  of 
the  references  the  claims  have  been  twice  re- 
jected upon  the  same  references,  the  appli- 
cant has  a  right  of  appeal  from  such  rejection 
even  though  the  examiner  did  not  designate 
his  second  rejection  a  "final  rejection."  Ex 
parte  McPhail,  C.  D.  1909,  141  O.  G.  1162. 

73.  Where  after  the  rejection  of  a  claim 
the  applicant  presents  another  claim  differing 
therefrom  only  in  that  it  is  a  more  accurate 
statement  of  the  invention,  together  with  a 
full  argument  upon  the  merits  and  a  request 
that  final  action  be  given,  final  rejection  is  in 
order  and  should  be  given.  Ex  parte  Mar- 
shall, C.  D.  1909,  139  O.  G.  198. 

74.  Where,  after  repeated  actions  on  the 
part  of  the  office  and  the  applicant,  a  clear 
issue  had  been  reached  as  to  the  patentabil- 
ity of  applicant's  invention.  Held,  that  a  final 
rejection  was  properly  entered,  notwithstand- 
ing the  fact  that  the  claims  so  rejected  were 
not  exactly  the  same  as  those  previously  con- 
sidered. Ex  parte  Miller,  C.  D.  1910,  150  O. 
G.  827. 

75.  "The  action  of  the  examiner  in  rejecting 
claims  of  a  pending  application  on  the  ground 
that  they  were  not  patentable  over  matter 
claimed  in  other  applications  of  the  same  party 


at  that  time  in  the  issue  is  in  accord  with  the 
well-established  practice  of  this  office.  Wheth- 
er the  differences  in  the  inventions  claimed 
arc  patentable  is  a  matter  for  appeal  to  the 
examiners-in-chief."  Ex  parte  Waterman,  C. 
D.  I'JIO,  IT)!  O.  G.  449. 

76.  Claims  of  an  application  were  rejected 
on  other  allowed  applications  of  the  same 
party,  which  later  became  forfeited.  //rW. 
that  while  in  that  condition  they  no  longer 
constituted  a  bar  to  the  allowance  of  those 
claims.    Id. 

77.  Where  a  claim  presented  in  lieu  of  a 
previously-rejected  claim  differed  therefrom 
only  in  the  inclusion  of  a  feature  which  was 
shown  in  references  of  record  and  in  view  of 
which  claims  including  this  feature  had  been 
canceled.  Held,  that  the  action  of  the  exam- 
iner in  calling  attention  to  these  references 
did  not  constitute  a  new  ground  of  rejection 
and  that  the  final  rejection  of  the  claim  was 
proper.  Ex  parte  Lang,  C.  D.  1910,  153  O.  G. 
lOSl. 

78.  Where  in  rejecting  the  claims  in  an  ap- 
plication disclosing  a  very  simple  device  the 
examiner  states  that  the  claims  present  no  in- 
vention over  the  references  and  in  response 
to  the  statement  by  the  applicant  as  to  certain 
differences  between  the  device  of  the  aijplica- 
tion  and  those  disclosed  in  the  references  the 
examiner  makes  his  rejection  final.  Held,  that 
in  view  of  the  simple  character  of  the  device 
the  examiner's  statement  that  the  claims  pre- 
sent no  invention  over  the  references  gave 
applicant  all  the  information  necessary  to  in- 
telligently prosecute  his  case  and  that  the  final 
rejection  was  proper.  Ex  parte  Movers,  C. 
D.  1910,  154  O.  G.  1411. 

79.  Where  the  examiner  rejects  a  claim  as 
not  patentable  over  either  of  two  references 
and  in  response  to  an  argument  repeats  the 
rejection,  relying  upon  only  one  of  these  ref- 
erences. Held,  that  it  was  proper  to  make  this 
rejection  final.  Ex  parte  Gentry,  C.  D.  1911, 
162  O.  G.  537. 

80.  Where  in  response  to  the  action  of  the 
examiner  rejecting  a  claim  on  a  reference  the 
applicant  without  amending  the  claim  points 
out  certain  differences  between  the  reference 
and  the  structure  claimed,  the  invention  being 
a  simple  one,  and  argues  that  in  view  of  these 
differences  the  claim  is  allowable.  Held,  that 
the  final  rejection  of  the  claim  was  not  prema- 
ture. Ex  parte  Handel,  C.  D.  1911,  163  O.  G. 
999. 


EXAMINATION  OF  APPLICATION,  IV,  (b). 


143 


81.  It  is  necessary  in  the  prosecution  of  ap- 
plicatiuns  for  patent  that  the  prosecution 
should  at  some  time  come  to  an  end  and  that 
wlicn  an  apphcation  has  been  fully  considered 
and  reached  the  state  of  final  rejection  further 
prosecution,  except  by  appeal,  be  then  closed, 
for  an  unlimited  prosecution  of  an  applica- 
tion necessarily  prevents  other  applicants  from 
having  their  applications  examined  in  regular 
order.  Ex  parte  Schmidt,  C.  D.  1911,  171  O. 
G.  482. 

82.  A  petition  to  set  aside  a  final  rejection 
dismissed  as  premature  where  no  request  had 
been  made  of  the  primary  examiner  to  with- 
draw that  rejection.  Ex  parte  Lawton,  C.  D. 
I'Jll,  172  O.  G.  2.VJ. 

83.  Where  the  device  shown  in  an  appli- 
cation is  a  very  simple  one  and  in  response 
ti)  a  rejection  of  the  claims  upon  reference 
the  applicant  did  not  point  out  the  manner 
in  which  the  alleged  invention  is  patentable 
over  the  references  cited,  but  merely  denied 
the  pertinency  thereof,  held,  that  a  final  re- 
jection was  properly  entered.  Ex  parte  Levy, 
C.  U.  1911,  173  O.  G.  2S8. 

(b)   Improper. 

84.  Where  an  examiner  after  rejecting  a 
claim  a  second  time  on  the  grounds  of  record, 
in  the  same  letter  discussed  the  state  of  the 
art  and  cited  new  references  to  support  a  state- 
ment that  it  was  not  possible  for  applicant 
to  make  an  allowable  claim,  Held,  that  the 
claim  was  not  properly  finally  rejected.  Ex 
parte  Gammons,  C.  D.  1902,  08  O.  G.  2171. 

85.  An  examiner's  letter  which  is  intended 
to  close  the  consideration  of  the  case  before 
him  should  state  such  intention  in  clear  and 
unmistakable  terms.     Id. 

8G.  The  citation  of  new  references  in  the 
letter  finally  rejecting  the  claims  in  effect  re- 
opens the  case  when  they  are  cited  to  show 
that  the  subject-matter  of  the  application  is 
unpatentable.     Id. 

87.  Where  a  claim  including  a  "tub"  as  an 
element  is  rejected  and  the  applicant  presents 
an  amendment  including  an  "oscillating  tub," 
Held,  that  the  claim  is  not  the  same  in  sub- 
stance and  that  a  final  rejection  is  not  in  order. 
Ex  parte  Casler,  C.  D.  1902,  ino  O.  G.  1.3.30. 

88.  An  examiner  cannot  finally  reject  a 
claim  which  has  been  amended  in  matter  of 
substance  on  a  single  action.  The  claim  must 
have  been  twice  rejected.  Ex  parte  Slaughter, 
C.  D.  1903,  103  O.  G.  498. 


89.  If  the  claim  as  amended  does  not  as 
a  matter  of  language  present  the  same  idea 
of  invention  as  the  old  claim,  it  must  be  held 
that  the  claim  has  been  amended  in  matter  of 
substance  and  that  a  final  rejection  is  not  in 
order.     Id. 

90.  Where  the  examiner  announces  that  the 
claims  are  finally  rejected  before  making  such 
explanation  of  his  position  as  is  called  for  by 
the  applicant's  arguments.  Held,  that  the  final 
rejection  is  premature.  Ex  parte  Starr,  C.  D. 
1903,  106  O.  G.  263. 

91.  Where  the  application  covers  a  com- 
plicated machine  and  includes  many  claims  and 
the  applicant  is  apparent  good  faith  amends 
every  claim  in  the  effort  to  make  them  allow- 
able, Held,  that  the  examiner  should  not  final- 
ly reject  the  claims  in  the  second  action  in  the 
case  on  the  ground  that  they  are  not  changed. 
The  applicant  should  have  a  reasonable  op- 
portunity to  get  his  claims  into  allowable  con- 
dition. Ex  parte  Stuart,  C.  D.  1904,  109  O. 
G.  1068. 

92.  It  is  the  policy  of  the  office  to  afford  ap- 
plicants ample  opportunity  for  amendment, 
and  it  is  only  in  unusual  and  very  simple  cases 
that  final  rejection  should  be  given  in  the  sec- 
ond action.  Ex  parte  Wieser,  C.  D.  1904,  110 
O.  G.  1726. 

93.  Where  a  claim  is  rejected  on  a  reference 
previously  cited  in  the  case,  but  for  the  first 
time  cited  against  that  particular  claim.  Held, 
that  the  rejection  of  the  claim  should  not  be 
made  final.  Ex  parte  Booth,  C.  D.  1904,  113 
O.  G.  2216. 

94.  An  applicant  has  the  right  to  amend  as 
often  as  new  grounds  of  rejection  are  given, 
and  the  citation  for  the  first  time  of  a  par- 
ticular reference  against  a  particular  claim  is 
a  new  ground  of  rejection.     Id. 

95.  Where  after  the  examiner's  first  letter 
the  applicant  cancels  some  claims,  presents  an 
argument,  and  asks  an  explanation  upon  cer- 
tain points.  Held,  that  the  examiner  should  not 
in  his  second  action  finally  reject  the  claims. 
Ex  parte  Greth,  C.  D.  190.".,  116  O.  G.  2.'-.32. 

96.  An  applicant  should  have  an  opportunity 
to  amend  after  he  understands  or  has  had  an 
opportunity  to  understand  thoroughly  the  ex- 
aminer's position.    Id. 

97.  Where  following  a  rejection  the  appli- 
cant merely  requested  that  the  pertinency  of 
the  references  be  pointed  out  as  a  guide  to 
his  further  action,  Held,  that  a  final  rejection 
following  such  action  was  not  based  upon  a 
request  for  reconsideration  or  upon  any  action 


144 


EXAMINATION  OF  APPLICATION,  V,  (a). 


by  the  applicant  which  would  justify  recon- 
•sideration  and  that  the  final  rejection  was  un- 
warranted. Ex  parte  Wainwright,  C.  D. 
1906,  l^->  O.  G.  2047. 

98.  Where  appellant's  letter  stated  that  the 
prior  office  action  was  not  understood,  request- 
ed that  the  pertinency  of  the  references  be 
pointed  out  as  a  guide  to  applicant  in  the 
further  prosecution  of  the  case,  and  express- 
ly stated  that  it  was  not  intended  as  a  request 
for  reconsideration,  Held,  that  the  action  of 
the  examiner  in  treating  this  letter  as  calling 
for  a  reconsideration  and  in  finally  rejecting 
the  claims  was  unwarranted.  Ex  parte  Fow- 
ler, Jr.,  C.  D.  1907,  127  O.  G.  1578. 

99.  Where  in  the  office  action  prior  to  the 
final  rejection  a  claim  was  criticised,  but  its 
rejection  was  inadvertently  omitted.  Held. 
that  the  final  rejection  was  premature.     Id. 

100.  In  response  to  an  action  by  an  appli- 
cant canceling  two  rejected  claims  and  sub- 
stituting claims  therefor,  accompanied  by  an 
argument  setting  forth  how  the  substitute 
claims  distinguished  from  the  references,  the 
examiner  rejected  the  substitute  claims,  stat- 
ing that  "there  is  no  invention  in  applicant's 
device  over  the  art  cited."  Thereupon  the  ap- 
plicant asked  for  an  explanation  of  the 
grounds  of  rejection,  distinctly  stating  that  he 
was  not  asking  for  a  reconsideration,  in  re- 
sponse to  which  the  examiner  explained  the 
references  and  finally  rejected  the  claims, 
Held,  that  the  final  rejection  was  premature. 
While  the  examiner  contended  that  the  sub- 
stitute claims  were  substantially  the  same  as 
previous  claims  with  respect  to  which  the 
references  had  been  explained,  the  examiner 
did  not  finally  reject  the  claims  on  the  first 
action  nor  did  he  refuse  the  request  for  ex- 
planation on  the  ground  that  the  pertinency 
of  the  references  had  been  previously  explain- 
ed. Ex  parte  Walker,  C.  D.  1907,  129  O.  G.  481. 

101.  Where  after  a  rejection  in  which  rea- 
sons are  given  why  references  cited  anticipate 
the  claims  applicant  amends  the  claims  and 
files  an  argument  that  one  of  the  patents  cited 
belongs  to  a  different  art  and  requests  that 
the  examiner  explain  why  the  patent  cited  was 
analogous  to  the  invention  in  issue,  Held,  that 
a  final  rejection  was  premature  and  that  the 
examiner  should  have  given  the  explanation 
requested.  Ex  parte  Burge.  C.  D.  1907,  129 
O.  G.  1611. 

102.  Where  in  answer  to  a  rejection  by  the 
examiner  giving  a  fair  statement  of  his  rea- 
sons  for  rejection  the  applicant  responds  by 


fully  stating  what  he  considered  to  be  dis- 
closed in  the  references,  what  he  considered 
to  be  covered  by  the  rejected  claims,  and  why 
such  claims  were  not  anticipated  and  requests 
a  further  statement  from  the  examiner  as  to 
the  bearing  of  the  references  upon  the  broad- 
est claim  presented,  the  examiner  should  not 
finally  reject  merely  upon  the  reasons  form- 
erly stated,  but  he  should  make  a  further 
statement  of  the  reasons  of  rejection  in  the 
light  of  applicant's  argument.  Ex  parte 
Herbst,  C.  D.  1907,  llil  O.  G.  361. 

103.  Where  an  examiner  finds  it  necessary 
to  give  reasons  explaining  the  applicability 
of  a  reference,  a  final  rejection  should  not  be 
entered  in  the  letter  in  which  these  reasons 
are  stated  for  the  first  time.  Ex  parte  Jack- 
son, C.  D.  1908.  i:!2  O.  G.  ].';24. 

104.  Where  in  a  letter  finally  rejecting  the 
claims  of  an  application  the  examiner  states 
that  his  previous  action  was  a  request  for  in- 
formation and  not  a  rejection  and  it  appears 
that  the  claims  as  amended  were  not  twice 
rejected  by  the  examiner  on  the  same  ground. 
Held,  that  the  final  rejection  was  premature. 
Ex  parte  Stephens,  C.  D.  1910,  1J4  O.  G.  1412. 

105.  In  his  first  action  the  examiner  cited 
certain  references  as  illustrating  the  art.  Ap- 
plicant thereupon  canceled  the  claims  and  pre- 
sented one  new  claim  in  lieu  thereof,  pointing 
out  wherein  it  was  supposed  to  avoid  the  ref- 
erences. Held,  that  a  final  rejection  of  this 
claim  was  premature.  Ex  parte  Pledger,  Jr., 
and  Campbell.  C.  D.  1910,  1,57  O.  G.  486. 

108.  In  the  first  office  action  the  drawing 
and  specification  were  criticized  in  certain 
respects  and  the  claims  rejected.  Within  a 
month  thereafter  applicant  filed  an  amendment 
directing  the  correction  of  the  formal  errors 
and  stated  that  he  desired  to  submit  within  a 
reasonable  time  an  argument  with  respect  to 
the  references  and  further  amendment.  The 
examiner  finally  rejected  the  claims  and  re- 
fused to  admit  an  amendment  filed  thereafter. 
Held,  that  the  final  rejection  was  premature 
and  that  the  proper  response  to  applicant's 
first  action,  if  any  was  necessary,  would  have 
been  a  letter  stating  that  it  was  incomplete. 
Ex  parte  Barber,  C.  D.  1911,  168  O.  G.  249. 

V.  Explanation  of  Action. 

(a)  Sufficient  and  In  General. 

107.  The  examiner  should  point  out  fully 
the  reasons  for  the  rejection  of  claims.  Ex 
parte  Wcllman,  C.  D.  1898,  86  O.  G.  1986. 


EXAMINATION  OF  APPLICATION,  V,  (b). 


143 


108.  Some  discretion  must  be  left  with  the 
examiners  in  the  statement  of  reasons  and 
authorities  in  support  of  their  actions,  since 
the  extent  and  scope  of  the  explanation  neces- 
sary depends  upon  the  circumstances  of  the 
particular  case.  Ex  parte  Schweitzer,  C.  D. 
1901,  97  O.  G.  1371. 

109.  Where  the  examiner  explains  his  posi- 
tion in  regard  to  the  invention  and  references 
fully  and  the  applicant  presents  new  claims 
without  pointing  out  how  they  avoid  the  ref- 
erences and  the  examiner  rejects  them,  refer- 
ring to  his  previous  explanation.  Held,  that 
the  examiner's  action  has  been  regular  and 
proper  and  that  a  further  explanation  by  him 
was  not  called  for.  Ex  parte  Sandman,  C.  D. 
1901.  97  O.  G.  2532. 

110.  The  examiner  and  the  applicant  should 
take  some  pains  to  present  the  reasons  for 
their  views  to  each  other,  so  that  an  issue  be- 
tween them  calling  for  review  by  the  commis- 
sioner will  be  reached  only  after  careful  con- 
sideration of  the  questions  involved.  Ex 
parte  Tyson,  C.  D.  1902,  101  O.  G.  310.5. 

111.  The  action  of  the  applicant  in  request- 
ing that  the  examiner  make  his  action  final 
and  the  action  of  the  examiner  in  making  it 
final  without  any  explanation  of  reasons  con- 
demned as  not  a  compliance  with  the  terms  of 
the  rules  or  with  the  principles  upon  which 
they  are  based.    Id. 

112.  Where  the  applicant  makes  no  attempt 
whatever  to  point  out  the  supposed  errors  in 
the  examiner's  action,  it  is  not  incumbent  upon 
the  examiner  to  point  out  wherein  he  has 
failed.  Ex  parte  Lewis,  C.  D.  1904,  108  O.  G. 
od9. 

113.  Rule  66  merely  requires  that  an  ex- 
aminer in  citing  references  shall,  if  the  perti- 
nence of  the  same  is  not  obvious,  clearly  ex- 
plain the  grounds  upon  which  he  has  rejected 
the  claims.  It  is  necessary  only  that  the  ex- 
aminer's position  be  made  plain  on  the  record, 
so  that  the  applicant  may  intelligently  amend 
his  claim  or  present  his  case  on  appeal.  The 
rule  does  not  require  that  the  examiner  shall 
"meet"  every  argument  advanced  by  an  appli- 
cant. Ex  parte  Stier,  C.  D.  1904,  110  O.  G. 
599. 

114.  Held,  that  Rule  66,  which  provides  that 
the  pertinence  of  a  reference,  if  not  obvious, 
must  be  clearly  explained,  does  not  require 
that  the  examiner  should  point  out  all  the 
elements  therein  of  the  applicant's  claim.  Ex 
parte  Fletcher,  C.  D.  1905,  114  O.  G.  545. 

115.  Where    the   examiner   has   clearly   and 
10 


explicitly  given  his  reasons  of  rejection,  yet 
admits  that  the  disclosure  of  the  references 
is  not  in  all  respects  identical  with  the  appli- 
cant's disclosure,  on  which  the  rejected  claim 
is  based,  Held,  that  the  provisions  of  Rule 
06  have  been  complied  with,  and  the  issue  be- 
tween the  examiner  and  the  applicant  should 
be  determined  on  appeal.     Id. 

116.  Where  the  applicant  requests  that  the 
examiner  be  directed  "to  expound  the  law" 
and  give  "an  exact  definition"  of  invention  as 
it  applies  to  this  case.  Held,  that  the  exam- 
iner should  not  be  required  to  instruct  the 
applicant  upon  the  general  principles  or  defini- 
tions of  the  patent  law  and  that  the  specific 
application  of  the  law  to  this  case  seems  to 
have  been  sufficiently  set  forth  by  the  exam- 
iner. Ex  parte  Wainwright,  C.  D.  1906,  125 
O.  G.  2047. 

117.  The  statement  by  the  examiner  that 
the  first  three  claims  were  clearly  met  in 
either  one  of  three  references  cited  and  that 
the  last  three  claims  were  met  in  the  same  in 
view  of  cither  of  the  last  two  references  cited. 
Held,  in  view  of  the  character  of  the  inven- 
tion to  be  a  sufficient  compliance  with  appli- 
cant's request  for  a  specific  application  of  the 
references.  Ex  parte  Samstag,  C.  D.  1908, 
133  O.  G.  1188. 

118.  After  the  examiner  has  properly  ap- 
plied the  references  the  applicant  is  not  en- 
titled to  further  reconsideration  unless  he 
points  out  why  the  references  did  not  meet  the 
claims.     Id. 

119.  A  request  that  a  rejection  be  made  final 
was  properly  refused  by  the  examiner  when 
the  applicant  made  no  attempt  to  show  that 
there  was  any  error  in  that  rejection.  Ex 
parte  Reiss,  C.  D.  1908,  137  O.  G.  1712. 

120.  Where  the  reference  cited  by  the  ex- 
aminer showed  only  the  invention  of  the  ap- 
plication and  its  pertinency  was  obvious.  Held, 
that  comment  on  the  reference  by  the  ex- 
aminer was  unnecessary.  Ex  parte  Floyd,  C. 
D.  1910,  152  O.  G.  229. 

121.  "It  is  well  settled  by  the  decisions  con- 
struing Rule  65  that  when  the  pertinency  of 
the  references  is  obvious,  as  where  the  dis- 
closure is  simple  or  includes  only  the  inven- 
tion of  the  applicant,  a  detailed  application  of 
the  references  is  unnecessary."  E.x  parte  In- 
man,  C.  D.  1910,  160  O.  G.  1038. 

(b)  Insufficient. 

122.  Where  the  examiner  rejected  claims  on 
references  showing  different   features  of   the 


146 


EXAMINATION  OF  APPLICATION,  V,  (b). 


matter  claimed  and  gave  little  explanation  of 
his  reasons  for  rejection  and  it  was  apparent 
from  the  correspondence  that  the  applicant 
did  not  understand  the  examiner's  position  in 
rejecting  the  claim,  Held,  that  the  examiner's 
action  was  not  as  full  as  should  have  been. 
(Ex  parte  Barnes,  C.  D.  1897,  76,  80  O.  G. 
2038,  cited.)  Ex  parte  Perkins,  C.  D.  1899, 
88  O.  G.  945. 

123.  Where  an  examiner  rejected  claims 
upon  an  "old  way"  of  doing  a  thing  and  upon 
request  of  the  applicant  refused  to  make  a 
particular  citation  of  this  old  way  or  to  fur- 
nish the  affidavit  required  by  Rule  66,  Held, 
that  this  rule  is  explicit  in  its  requirement  and 
that  there  is  no  excuse  for  failure  on  the 
part  of  an  examiner  to  be  guided  by  the  Rules 
of  Practice,  particularly  where  the  language 
admits  of  but  one  construction,  as  in  this 
case.  Ex  parte  Garms,  C.  D.  1900,  93  O.  G. 
190. 

124.  Held,  further,  that  it  would  have  been 
much  easier  for  the  examiner  to  comply  with 
the  rule  instead  of  assuming  to  arbitrarily 
override  it  and  force  applicant  to  repeatedly 
request  compliance  with  it,  and  finally  to  take 
a  petition,  consuming  the  examiner's  time  in 
answering  and  obliging  the  commissioner  to 
review  the  case  and  write  an  opinion  for  the 
guidance  of  the  examiner  in  construing  a 
rule  that  is  as  plain  as  A  B  C.    Id. 

125.  Where  the  applicant  repeatedly  request- 
ed the  examiner  to  apply  the  references  to  the 
claims  and  pointed  out  particularly  wherein 
she  regarded  the  claims  as  patentably  dis- 
tinguishing her  invention  from  the  references, 
but  the  examiner  merely  rejected  them  "on 
the  state  of  the  art  of  record,"  Held,  that  he 
has  not  given  such  full  examination  of  the 
position  as  the  present  practice  requires.  Ex 
parte  Kroeninger,  C.  D.  1900,  91  O.  G.  2002. 

126.  The  mere  fact  that  the  applicant  in  re- 
sponse to  rejections  several  times  amended 
the  claims  does  not  show  that  she  under- 
stood the  examiner's  position  or  relieve  the 
examiner  from  the  necessity  of  explaining  the 
references,  particularly  where  the  applicant 
repeatedly  requested  an  explanation.    Id. 

127.  Where  in  answer  to  a  petition  the  ex- 
aminer refers  to  certain  oral  explanations  of 
the  references  said  to  have  been  given  to  the 
applicant's  attorney,  Held,  that  the  action  on 
the  petition  cannot  be  based  upon  the  assump- 
tion that  such  oral  explanations  were  full  and 
complete.     They  should  have,  under  Rule  1, 


been  made  a  part  of  the  written  record  in  the 
case.     Id. 

128.  Where  after  a  rejection  the  applicant 
points  out  the  features  which  he  contends  are 
not  disclosed  in  the  references  and  asks  for  a 
further  explanation  of  the  examiner's  posi- 
tion. Held,  that  it  is  the  duty  of  the  examiner 
to  assist  the  honest  efforts  of  the  applicant 
to  understand  his  position.  Ex  parte  Miller, 
C.  D.  1903,  104  O.  G.  309. 

129.  Where  in  view  of  the  applicant's  argu- 
ment the  examiner  has  allowed  some  of  the 
rejected  claims  and  has  cited  a  new  reference 
against  others.  Held,  that  he  cannot  consist- 
ently urge  that  the  pertinency  of  the  refer- 
ences is  so  obvious  as  to  need  no  explanation. 
Id. 

130.  Where  an  applicant  is  attempting  in 
good  faith  to  further  the  prosecution  of  his 
application,  Held,  that  the  office  should  give 
him  all  reasonable  assistance.  Ex  parte  Starr, 
C.  D.   1903,  106  O.  G.  263. 

131.  Where  in  amending  the  claims  the  ap- 
plicant points  out  certain  specific  features 
which  he  does  not  find  in  the  patents  cited  as 
references  and  asks  the  examiner  to  point  out 
where  those  features  are  to  be  found,  Held, 
that  the  examiner  should  comply  with  the  re- 
quest.   Id. 

132.  Where  several  claims  are  rejected,  it 
should  appear  in  the  examiner's  letter  whether 
all  the  references  are  cited  against  each  claim 
or  whether  they  are  cited  distributivcly  against 
the  various  claims.  In  the  latter  event  it 
should  be  made  clear  in  connection  with  each 
claim  which  references  are  relied  upon  in  the 
rejection  thereof.  Ex  parte  Lincoln,  C.  D. 
1907,  127  O.  G.  3216. 

133.  Where  references  cited  are  to  be  taken 
jointly,  the  theory  upon  which  they  are  com- 
bined must  be  pointed  out.  The  examiner 
need  not,  however,  ordinarily  apply  the  ref- 
erences to  the  claim  element  for  element,  the 
specification  and  drawings  of  the  references 
being  ordinarily  sufficient  to  indicate  their  ap- 
plication to  the  claims.    Id. 

134.  If  any  doubt  exists  as  to  the  interpre- 
tation placed  by  the  examiner  upon  a  feature 
of  the  drawing  or  portion  of  the  specifica- 
tion, he  will  furnish  an  explanation  in  re- 
sponse to  a  specific  request  making  clear  the 
uncertainty  existing  in  the  mind  of  the  appli- 
cant.    Id. 

135.  In  many  cases  a  mere  statement  that 
the  claims  are  rejected  on  specified  references 
is  sufficient,  in  view  of  the  character  of  the 


FEES,  I. 


147 


invention ;  but  in  all  cases  where  references 
are  grouped  together  it  should  be  clearly- 
stated  whether  the  claims  are  anticipated  by 
each  of  the  references  separately  or  in  what 
manner  the  references  are  to  be  combined. 
Ex  parte  Harris,  C.  D.  1909,  140  O.  G.  736. 

136.  Where  after  a  rejection,  in  view  of 
several  references,  the  applicant  requests  that 
the  examiner  explain  and  apply  the  same  and 
it  appears  that  while  the  references  are  sim- 
ple the  manner  in  which  they  are  to  be  taken 
together  as  showing  that  the  claims  are  not 
patentable  is  not  so  obvious  and  that  there 
has  been  no  undue  delay  in  the  prosecution 
of  the  case,  Held,  that  the  examiner  should 
have  complied  with  applicant's  request  and 
not  finally  rejected  the  claims.  Ex  parte  An- 
drews, C.  D.  1911,  173  O.  G.  1089. 

VI.  Persuasiveness  oe  Previous  Action. 

137.  Although  the  necessity  of  refusing  to 
one  applicant  what  has  been  allowed  to  an- 
other is  always  to  be  regretted,  the  question 
as  to  whether  the  claims  in  one  case  are  al- 
lowable over  the  prior  state  of  the  art  must 
be  decided  without  regard  to  the  fact  that 
similar  claims  have  been  allowed  and  patent- 
ed to  another  on  a  copending  application. 
From  a  rejection  in  such  case  appeal  lies  to 
the  examiners-in-chief.  Ex  parte  Russell,  C. 
D.   1898,  84   O.  G.  2021. 

138.  No  statement  in  an  office  letter  that 
certain  claims  are  novel  can  be  held  to  be 
binding  upon  this  office  to  the  extent  that  the 
claims  must  of  necessity  be  subsequently  al- 
lowed notwithstanding  what  art  might  be 
found  to  exist  or  notwithstanding  the  opinion 
of  any  tribunal  which  might  subsequently  be 
called  upon  to  pass  upon  the  patentability  of 
the  claims.  Ex  parte  Fowler,  C.  D.  1902,  101 
O.  G.  2822. 

139.  While  a  favorable  action  by  an  ex- 
aminer should  be  very  persuasive,  it  is  not 
binding  on  his  successor  when  called  upon  to 
pass  upon  a  claim  previously  acted  upon.  Ex 
parte  Fowler,  C.  D.  1902,  101  O.  G.  IS.'iS. 

140.  Until  the  patent  is  actually  issued  it 
is  always  competent  for  the  patent  office,  with 
due  regard  to  the  rules  of  law,  to  vacate  its 
favorable  adjudication  upon  the  question  of 
patentability  for  good  and  sufficient  cause. 
♦Oliver  V.  Felbel,  C.  D.  1902,  ino  O.  G.  2:!84. 

141.  Where  one  examiner  after  due  consid- 
eration of  the  claims  of  an  application  has 
rendered  a   favorable  decision  as  to  the  pat- 


entability of  such  claims,  his  action  should 
not  ordinarily  be  reversed  by  a  successor  un- 
less the  rejection  made  by  the  latter  is  based 
upon  different  references  or  reasons  from 
those  which  the  record  shows  were  advanced 
by  his  predecessor.  (Ex  parte  Starr,  C.  D. 
1S79,  91,  15  O.  G.  10.53;  ex  parte  Nealon,  C. 
D.  1887,  174,  81  O.  G.  1787;  ex  parte  Fowler, 
C.  D.  1902,  420,  101  O.  G.  1833.)  Ex  parte 
Hay,  C.  D.  7909,  139  O.  G.  197. 

Vn.  Preferred  Application. 

142.  ,'\pplications  must  be  examined  in  reg- 
ular order,  and  the  office  cannot  give  one  case 
precedence  over  others  because  of  the  appli- 
cant's business  arrangements  which  are  de- 
pendent upon  a  speedy  allowance  of  the  pat- 
ent. Ex  parte  Bischoff,  C.  D.  1902,  100  O.  G. 
2603. 

143.  Applications  will  not  be  given  prece- 
dence over  other  cases  in  the  order  of  exam- 
ination merely  because  the  applicant  asks  for 
an  interference  with  a  patent,  but  only  in 
those  cases  where  it  appears  that  there  is  a 
proper  foundation  for  the  request.  Ex  parte 
Lux,  C.  D.  1905,  116  O.  G.  2011. 


FEES. 


I.  Payment. 
II.  Refundment. 
HI.  Transfer  of. 
IV.  Final. 

I.  Payment. 

1.  An  application  was  allowed  December  16, 
1895,  twenty  dollars  was  paid  to  the  assistant 
treasurer  of  the  United  States  at  Philadelphia, 
and  a  certificate  of  deposit  obtained  June  15, 
1806,  which  was  not  filed  in  the  patent  office 
until  June  18,  1898,  with  a  request  that  the 
certificate  be  applied  to  the  said  application 
and  a  patent  issued  thereon.  Held,  that  as  the 
certificate  was  not  promptly  forwarded  to  the 
office,  as  required  by  the  rules,  it  should  not 
be  applied  to  the  application,  but  returned  to 
applicant.  Ex  parte  Stevenson,  C.  D.  1808, 
84  O.  G.  147. 

2.  The  requirement  of  the  statute  is  clear 
and  unmistakable  that  a  fee  of  $20  must  be 
paid  upon  every  appeal  to  the  commissioner 
from  the  examiners-in-chief  and  makes  no 
distinction  between  the  first  and  other  appeals 
in  the  same  case.     (Ex  parte  Arkell,  45  MS. 


148 


FEES,  II. 


Dec,   25.)      Ex   parte    .A.rms,   C.   D.   1898,   84 
O.  G.  1142. 

3.  No  fee  is  required  in  case  of  a  second 
appeal  to  the  examiners-in-chief  in  the  same 
case,  the  fee  for  the  first  appeal  having  been 
paid.    Id. 

4.  When  a  notice  of  allowance  was  mailed 
on  September  23,  1899,  and  a  check  for  the 
final  fee  on  the  application  was  deposited  in 
the  mails  at  Boston  on  March  22,  1900,  and 
was  received  at  the  Washington  city  post- 
office  at  twelve  o'clock  noon  on  March  23, 
but  was  not  delivered  to  or  received  by  the 
patent  office  until  the  morning  of  March  24, 
Held,  that  the  fee  was  not  received  within 
the  six  months  prescribed  by  law  and  that  the 
patent  was  properly  withheld.  fEx  parte  Can- 
non, C.  D.  1901,  94  O.  G.  216r>. 

5.  The  mailing  of  a  letter  to  the  commis- 
sioner of  patents  containing  a  check  in  satis- 
faction of  the  final  fee  is  not  a  payment  there- 
of, since  the  postal  authorities  are  not  the 
agents  of  the  government  for  the  collection 
of  patent  office  fees.  The  agents  for  this  pur- 
pose are  designated  in  the  rules.     *Id. 

6.  It  is  incumbent  upon  a  party  to  select  an 
agency  for  the  transmission  of  the  final  fee 
which  will  deliver  it  within  the  time  allowed 
therefor  by  the  law,  and  he  is  not  entitled  to 
have  the  arrangements  for  the  delivery  of 
mail  to  the  patent  office  so  adjusted  that  there 
will  be  a  delivery  at  the  close  of  the  day.    *Id. 

7.  Where  a  party  has  a  single  application 
involved  in  two  companion  interferences  and 
both  are  dissolved  by  the  examiner  on  the 
ground  that  the  claims  are  not  patentable, 
Held,  that  the  party  may  appeal  in  both  cases 
upon  payment  of  a  single  appeal  fee.  Miller 
V.  Miller  v.  Bacon  v.  Mann  v.  Torrance,  C. 
D.   1905,  115  O.  G.  1063. 

8.  The  payment  of  an  appeal  fee  in  connec- 
tion with  an  appeal  to  the  examiners-in-chief 
from  the  rejection  of  claims  by  the  primary 
examiner  does  not  obviate  the  necessity  for 
the  payment  of  a  second  fee  in  case  an  appeal 
is  taken  to  the  e.xaminers-in-chicf  from  the 
linding  of  priority  by  the  examiner  of  inter- 
ferences. Cheney  v.  Venn,  C.  D.  1906,  125  O. 
G.  1703. 

II.  Rei'undmBnt. 

9.  Where  an  applicant  tiled  an  incomplete 
application  and  first  fee  on  December  31, 
1897,  and  on  January  3,  1898,  he  completed 
the  application,  with  the  understanding  that  if 


it  were  possible  it  would  be  given  the  earlier 
date,  and  upon  consideration  it  was  decided 
that  the  application  could  not  be  given  the 
earlier  date,  Held,  that  the  first  fee  could  not 
be  refunded,  as  it  was  not  paid  by  actual  mis- 
take, but  in  paying  it  and  completing  his  ap- 
plication the  applicant  took  his  chances  as  to 
the  earlier  date  being  given  to  the  application, 
and,  further,  the  application  has  had  a  full 
examination  on  the  merits.  E.\  parte  Hall- 
berg,  C.  D.  1898,  83  O.  G.  1208. 

10.  The  mistake  of  an  applicant  as  to  the 
rules  in  reference  to  incomplete  applications 
is  not  such  mistake  as  will  justify  the  return 
of  the  fee  paid  thereon  or  its  transfer  to  an- 
other case.  Ex  parte  Arakelion,  C.  D.  1898, 
85  O.  G.  1077. 

U.  Where  an  examiner  in  his  answer  to  an 
appeal  stated  that  the  alleged  invention,  which 
was  rejected  on  a  reference,  also  involved 
only  what  was  understood  to  be  the  customary 
practice  and  applicant  did  not  insist  upon  the 
examiner  furnishing  him  with  a  specific  ref- 
erence or  affidavit  to  support  the  statement 
as  to  common  use  of  the  invention,  but  was 
willing  to  permit  the  examiners-in-chief  to 
pass  upon  the  patentability  of  the  claim  with- 
out such  specific  reference  or  affidavit,  and 
after  the  decision  of  the  examiners-in-chief 
the  examiner  had  the  case  reopened  and  then 
procured  an  affidavit  upon  which  he  rejected 
the  claim.  Held,  that  the  appeal  fee  should  not 
be  refunded.  Ex  parte  Van  Ausdal,  C.  D. 
1900,  91   O.   G.   1617. 

12.  Where  a  caveat  is  filed  which  fails  to 
clearly  disclose  the  invention.  Held,  that  the 
fee  will  not  be  returned  as  paid  by  mistake, 
.'^n  error  in  judgment  does  not  warrant  the 
return  of  a  fee.  Ex  parte  Landenberger,  C. 
D.  1902,  99  O.  G.  1866. 

13.  Where  an  application  is  filed  contain- 
ing all  of  the  necessary  parts  and  it  is  such 
as  to  require  and  receive  a  complete  examina- 
tion upon  the  merits,  Held,  the  fee  cannot  be 
returned  on  the  ground  that  the  application  is 
incomplete.  Ex  parte  Lawson,  C.  D.  1902, 
101   O.  G.  1833. 

14.  Where  an  examiner  rejects  claims  pre- 
sented by  amendment  on  the  ground  that  they 
involve  new  matter  and  at  the  same  time  says 
they  are  patentably  novel,  but  must  be  pre- 
sented in  another  application,  and  where  the 
applicant  then  files  a  new  application  contain- 
ing them  and  they  are  rejected  by  a  different 
examiner.  Held,  that  a  petition  asking  that 
the  claims  be  allowed  or  the  filing  fee  returned 


FEES,  II. 


149 


will  be  denied.     Ex  parte  Fowler,  C.  D.  1902, 
101  O.  G.  1833. 

15.  Where  an  application  fee  is  paid  into 
this  office  in  accordance  with  the  law  and  the 
rules  and  the  application  has  been  examined, 
Held,  that  the  fee  will  not  be  returned.     Id. 

16.  The  mistake  which  will  warrant  a  re- 
turn of  money  is  not  a  mistake  of  judgment 
in  supposing  that  the  application  filed  will  be 
valid  and  allowable,  but  a  mistake  in  making 
the  payment  itself.  Kx  parte  Olsen,  C.  D. 
lit()2,  101  O.  G.  2079. 

17.  The  statement  by  the  office  in  one  case 
that  certain  claims  are  novel  is  no  reason  for 
returning  the  fee  paid  in  a  subsequent  appli- 
cation filed  covering  them  merely  because  they 
are  rejected  in  the  latter  case.  This  is  not 
such  a  mistake  as  will  warrant  the  return  of 
the  fee.  Ex  parte  Fowler,  C.  D.  1902,  101 
O.  G.  2822. 

18.  Where  an  applicant  files  an  application 
for  a  patent  upon  certain  claims  after  one  e.x- 
aminer  has  indicated  that  they  are,  in  his 
opinion,  patentable,  Held,  that  he  assumes  all 
chances  as  to  the  allowance  of  the  claims,  and 
he  cannot  be  held  to  have  filed  the  applica- 
tion through  mistake  because  the  claims  are 
subsequently  rejected.  Ex  parte  Fowler,  C. 
D.   1902,   101  O.  G.   1833. 

19.  When  an  appeal  to  the  examiners-in- 
chief  is  filed  in  spite  of  the  provision  of 
Rule  124  that  from  a  decision  of  the  primary 
examiner  affirming  an  applicant's  right  to 
make  the  claim  no  appeal  can  be  taken  and 
said  appeal  is  dismissed  by  the  examiners-in- 
chief.  Held,  that  the  fee  paid  on  filing  the 
appeal  is  not  paid  by  mistake  and  cannot  be 
returned.  Ex  parte  Brill  and  .A.dams,  C.  D. 
1902,  98  O.  G.  2.587. 

20.  The  allegation  that  the  practice  of  the 
office  in  granting  design  patents  is  necessarily 
changed  in  view  of  a  decision  by  the  court 
as  to  what  is  proper  subject-matter  for  such 
a  patent  does  not  warrant  the  return  of  a  fee 
paid  in  an  application  for  such  a  patent.  Ex 
parte  Husky,  C.  D.  1902,  98  O.  G.  2588. 

21.  The  law  requires  that  the  fee  for  a  de- 
sign patent  shall  be  paid  upon  filing  of  the  ap- 
plication as  a  part  of  the  same.    Id. 

22.  It  cannot  be  determined  before  exam- 
ination whether  or  not  an  application  for  a 
design  patent  covers  patentable  subject-matter. 
The  fee  paid  on  filing  such  an  application  is 
paid  as  a  prerequisite  for  such  examination, 
and  it  is  not  paid  by  mistake  within  the  mean- 


ing of  the  statute  relating  to  the  return  of 
money  (sec.  4930,  Rev.  Stats.)  if  such  appli- 
cation proves  upon  examination  to  be  unpat- 
entable. Ex  parte  Smith  (C.  D.  189'i,  99,  71 
O.  G.  297)   commented  on  and  explained.     Id. 

23.  Where  a  party  asks  for  the  return  of 
the  fee  paid  on  a  divisional  application  filed 
upon  the  requirement  of  the  examiner,  it 
being  alleged  that  the  examiner  has  changed 
his  mind  and  regards  the  invention  as  indi- 
visible. Held,  that  the  request  will  be  denied, 
since  the  mistake,  if  any,  was  one  of  judg- 
ment and  since  the  petitioner  was  not  bound 
to  accept  the  examiner's  judgment.  Ex  parte 
Thompson,  C.  D.  1903,  107  O.  G.  270. 

24.  The  allegation  that  the  office  mislead 
the  applicant  as  to  the  scope  and  meaning  of 
his  claim  furnishes  no  ground  for  granting 
a  reissue  without  charge  of  office  fees,  since, 
if  true,  it  was  merely  a  mistake  in  judgment 
in  which  the  applicant  was  not  required  to 
acquiesce.  E.x  parte  Graves,  C.  D.  1903,  103 
O.  G.  227. 

25.  Where  after  filing  an  appeal  to  the  ex- 
aminers-in-chief the  applicant  concludes  to 
withdraw  the  appeal  and  ask  for  permission 
to  amend  the  rejected  claims.  Held,  that  the 
appeal  fee  will  not  be  returned.  Ex  parte 
Zehrbach,  C.  D.  1904,  108  O.  G.  290. 

26.  Where  a  party  after  securing  registra- 
tion of  a  trade-mark  files  a  second  application 
for  the  registration  of  the  same  thing  and  the 
office  refuses  registration.  Held,  that  he  is 
not  entitled  to  the  return  of  the  fee  in  the 
second  case  on  the  ground  of  mistake.  Ex 
parte  Colchester,  C.  D.  1904,  113  O.  G.  8.52. 

27.  The  mistake  which  will  warrant  the  re- 
turn of  the  fee  in  a  trade-mark  application 
is  not  a  mistake  in  concluding  to  file  the  ap- 
plication, but  only  a  mistake  in  paying  too 
much  or  when  not  required  by  law.    Id. 

28.  Where  party  appealed  from  adverse  de- 
cision upon  priority  and  before  hearing  of  the 
appeal  moved  that  ease  be  reopened  for  con- 
sideration of  new  evidence  and  the  case  was 
reopened  and  a  new  decision  rendered,  mak- 
ing further  prosecution  of  the  appeal  impos- 
sible. Held,  that  the  appeal  fee  was  not  paid 
by  mistake  or  through  any  neglect  or  misin- 
formation on  the  part  of  the  office  and  that 
the  petitioner  was  not  entitled  to  the  return 
of  the  same.  Ex  parte  Townsend,  C.  D.  190.5, 
118  O.  G.  1368. 

29.  Where  notice  of  opposition  was  filed 
and  an  interference  was  declared  between  the 


150 


FEES.  II. 


application  of  the  opposer  and  the  opposed  ap- 
plication, Held,  that  the  opposition  fee  would 
not  be  returned.  Bomhard  v.  United  States 
Graphite  Company,  C.  D.  190C,  124  O.  G.  627. 

30.  Where  in  the  decision  of  the  commis- 
sioner a  new  reference  was  cited  to  overcome 
a  defect  in  point  of  date  in  one  of  the  refer- 
ences previously  cited  and  the  applicant  con- 
tends that  he  would  not  have  prosecuted  the 
appeal  if  he  had  had  knowledge  of  the  new 
reference,  Held,  that  it  was  within  the  appli- 
cant's power  as  fully  as  it  was  in  that  of  the 
office  to  discover  the  defect  in  the  reference 
cited  and  that  the  case  is  not  one  justifying 
the  repayment  of  the  appeal  fees.  Ex  parte 
Hofmann,  C.  D.  1906,  125  O.  G.  991. 

31.  Where  the  applicant  accepted  the  deci- 
sion of  the  examiner  without  appeal  and  filed 
a  new  application,  Held,  he  is  not  entitled  to 
the  return  of  the  filing  fee  on  said  application, 
notwithstanding  the  decision  in  ex  parte 
Griserin-Werke  Paul  Camphausen  G.  M.  B. 
II.   (ante,  12,  120  O.  G.  327.)     Id. 

32.  The  fact  that  applicant  at  the  time  he 
applied  for  registration  of  a  trade-mark  be- 
lieved that  such  a  mark  could  be  registered 
before  being  actually  used  forms  no  ground 
for  the  return  of  the  fee.  Ex  parte  Inter- 
State  Milling  Company,  C.  D.  1910,  159  O.  G. 
993. 

33.  C.  moved  to  dissolve  the  interference  on 
the  ground  that  the  issue  is  not  patentable, 
and  K.  moved  to  dissolve  on  the  ground  that 
C.  had  no  right  to  make  the  claim.  The  pri- 
mary examiner  granted  both  motions,  and  his 
decisions  were  affirmed  by  the  examiners-in- 
chief.  C.  appealed  to  the  commissioner  from 
the  decision  holding  that  he  had  no  right  to 
make  the  claim,  which  was  dismissed  as  rais- 
ing a  moot  question,  as  K.  did  not  appeal 
from  the  decision  holding  the  issue  unpatent- 
able. Held,  that  C.'s  appeal  fee  was  not  paid 
by  mistake  and  that  he  was  not  entitled  to 
have  it  returned.  Curtis  v.  Kleinert,  C.  D. 
1911,  162  O.  G.  538. 

34.  Where  the  attorney  of  record,  who  had 
received  from  his  foreign  associate  a  petition, 
oath,  specification,  and  claims,  filed  the  same 
as  a  new  application  and  it  thereafter  appear- 
ed that  these  papers  were  designed  by  said 
foreign  associate  as  an  amendment  to  the  ap- 
plication already  on  file.  Held,  that  no  such 
mistake  had  been  made  as  would  justify  the 
return  of  the  application  fee.  Ex  parte  Wer- 
thaler,  C.  D.  1911,  173  O.  G.  864. 


III.  Transfer  of. 

35.  Where  an  applicant  files  a  complete  sole 
application.  Held,  that  the  fee  constituting  a 
part  of  said  application  cannot  be  subsequent- 
ly transferred  to  a  new  application  which  the 
applicant  intends  to  file  as  a  joint  inventor 
with  another  person.  Ex  parte  Olsen,  C.  D. 
1902,  101  O.  G.  2079. 

36.  The  transfer  of  a  fee  from  one  appli- 
cation to  another  can  be  considered  in  no  other 
way  than  as  a  return  of  the  fee  to  the  appli- 
cant and  a  payment  by  him  in  the  other  case. 
Id. 

37.  A  fee  cannot  be  transferred  from  one 
case  to  another  except  by  considering  it  as 
returned  and  refiled,  and  it  cannot  be  returned 
except  where  paid  by  mistake,  such  as  in  ex- 
cess or  when  not  required  by  law.  Ex  parte 
Priest,  C.  D.  1903,  103  O.  G.  428. 

38.  Where  payment  is  made  to  a  sub-treas- 
urer by  one  party  on  account  of  patent  fees 
and  a  certificate  of  deposit  is  received,  Held, 
that  the  certificate  will  not  be  received  as  pay- 
ment by  a  different  party  in  a  different  appli- 
cation except  upon  the  consent  of  the  per- 
son in  whose  name  it  was  issued.  Held, 
further,  that  it  is  effective  after  receipt  by 
the  office  as  of  the  date  of  the  consent  to  its 
use  in  the  case  and  not  as  of  the  date  of  the 
payment  to  the  sub-treasurer.  Ex  parte  Avery, 
C.  D.  1904,  109  O.  G.  806. 

39.  Where  two  persons  file  an  incomplete 
joint  application  and  one  of  them  thereafter 
sends  the  filing  fee  therefor  to  the  office,  but 
such  a  fee  is  not  applied,  as  the  case  has  be- 
come abandoned,  and  the  person  sending  the 
fee  thereupon  files  a  sole  application,  lacking 
filing  fee,  for  the  same  invention,  and  the 
aforesaid  fee  is  applied  to  the  latter  applica- 
tion, and  this  application  is  prosecuted  by  the 
applicant.  Held,  that  the  fee  cannot  be  trans- 
ferred to  a  later  joint  application  for  the  same 
invention  filed  by  the  parties  or  their  repre- 
sentatives. Ex  parte  Harris,  C.  D.  1905,  117 
O.  G.  1164. 

40.  Where  an  incomplete  application  be- 
comes abandoned  and  thereafter  a  sole  appli- 
cation is  filed  complete  by  one  of  the  parties 
of  the  previous  application,  and  after  that  a 
joint  application  without  fee  is  filed  by  the 
original  parties.  Held,  upon  the  question  of 
transfer  of  fee  that  these  applications  repre- 
sent three  distinct  proceedings  in  spite  of 
the  fact  that  all  are  drawn  to  the  same  inven- 


FEES,  IV. 


151 


tion  and  that  each  case  refers  to  the  preced- 
ing one.  Ex  parte  Harris,  C.  D.  1905,  118 
O.  G.  1683. 

41.  Where  a  filing  fee  has  been  properly 
applied  by  the  office  to  a  sole  application,  this 
fee  has  been  withdrawn  therefrom  and  ap- 
plied to  a  joint  application.     Id. 

42.  Where  fee  is  sent  to  the  office  by  a 
party  to  be  applied  as  filing  fee  to  joint  ap- 
plication of  said  party  and  another  and  the 
office  refuses  to  apply  fee  because  the  appli- 
cation has  been  abandoned,  and  thereafter  the 
party  files  sole  application  without  fee  for 
the  same  invention.  Held,  that  the  application 
of  the  fee  to  the  sole  application  by  the  office 
was  proper.     Id. 

IV.  Final. 

43.  Where  a  final  fee  is  paid  by  depositing 
it  with  an  assistant  treasurer,  the  certificate 
of  such  deposit  should  be  mailed  to  the  office 
within  the  six  months  allowed  for  the  pay- 
ment of  such  fee.  Ex  parte  Baldwin,  C.  D. 
1903,  106  O.  G.  1780. 

44.  Where  the  six  months  for  the  payment 
of  the  final  fee  expired  on  September  10  and 
on  that  date  it  was  deposited  with  the  assistant 
treasurer,  but  the  certificate  of  deposit  was 
not  mailed  until  September  11,  Held,  this  was 
not  a  payment  within  six  months,  since  Rule 
206  requires  that  the  certificate  must  be  mailed 
to  the  office  within  the  six  months.    Id. 

45.  Where  the  final  fee  in  a  case  is  received 
one  day  too  late  it  cannot  be  entered  as  paid 
the  day  before  merely  because  it  was  sent  by 
telegraph  on  that  date.  The  telegraph  com- 
pany is  the  agent  of  the  applicant,  not  of  this 
office.  Ex  parte  Bolly,  C.  D.  1903,  104  O.  G. 
2442. 

46.  Held,  that  as  section  488.'j,  Revised  Stat- 
utes, gives  the  office  no  authority  to  extend 
the  six  months  within  which  a  final  fee  must 
be  paid  or  to  accept  such  fee  after  the  ex- 
piration thereof  the  excuse  which  may  be 
given  for  the  delay  is  of  no  consequence.  Ex 
parte  Roussel,  C.  D.  1904,  111  O.  G.  2223. 

47.  The  only  remedy  open  to  an  applicant 
when  the  time  expires  without  payment  of  the 
final  fee  is  to  renew  the  case  under  the  pro- 
vision of  section  4897  of  the  Revised  Statutes. 
Id. 

48.  The  allegation  that  notice  of  allowance 
was  not  received  does  not  warrant  the  accept- 
ance of  the  final   fee  more  than   six  months 


after  the  date  when  the  office  records  indicate 
that  the   notice   was   sent.     Ex   parte   Pieper, 

C.  D.  1905,  115  O.  G.  1063. 

49.  A  final  fee  which  was  inclosed  in  a  let- 
ter registered  at  a  substation  of  the  post- 
office  of  Washington,  D.  C,  at  about  half- 
past  ten  o'clock  of  the  last  day  for  payment, 
but  which  was  not  delivered  to  the  office  until 
the  second  day  thereafter  because  of  an  in- 
tervening holiday,  will  not  be  accepted  and 
applied,  as  it  was  filed  outside  of  the  period 
fixed  by  law.  Ex  parte  Dempsey,  C.  D.  1908, 
132  O.  G.  1072. 

50.  The  postal  authorities  are  the  agents  of 
the  sender  and  not  of  the  patent  office,  and  a 
delay  by  them  must  be  charged  to  the  princi- 
pal.   Id. 

51.  A  final  fee  which  is  filed  too  late  cannot 
be  received  on  the  ground  that  if  the  post- 
office  instead  of  an  agent  of  the  patent  office 
had  delivered  the  same  or  if  the  agent  of  the 
patent  office  had  called  at  the  post-office  late 
in  the  day  instead  of  the  middle  thereof  the 
fee  would  have  reached  the  patent  office  in 
time.  The  patent  office  is  required  to  send 
for  its  mail,  and  it  cannot  control  this  matter, 
and  experience  has  shown  that  it  is  necessary 
to  the  security  of  those  having  business  with 
the  office  and  is  most  convenient  to  the  office 
and  the  public  to  collect  the  registered  mail 
shortly  after  midday,  and  no  good  reason  is 
seen  for  departing  from  the  practice.    Id. 

52.  A  final  fee  which  was  inclosed  in  a  let- 
ter registered  at  a  substation  of  the  post-office 
of  Washington,  D.  C,  on  the  last  day  al- 
lowed for  payment  thereof  and  which  reached 
the  city  post-office  at  about  2.30  p.  m.  of  said 
day,  but  was  not  delivered  to  the  patent  of- 
fice until  the  second  day  thereafter  because 
of  an  intervening  holiday,  should  not  be  ac- 
cepted and  applied,  as  it  was  filed  outside  of 
the  period  fixed  by  law.     fin  re  Dempsey,  C. 

D.  1908,  132  O.  G.  1074. 

53.  The  contention  that  a  final  fee  which 
was  placed  in  a  receptacle  set  apart  for  the 
patent  office  by  the  city  post-office  on  the  last 
day  allowed  for  payment  is  constructively  a 
delivery  to  the  patent  office  has  no  basis  in 
the  absence  of  proof  that  the  fee  was  so  set 
apart,    tid. 

54.  The  records  of  the  city  post-office  as 
to  the  time  when  a  registered  package  was 
placed  in  a  receptacle  set  apart  for  the  use 
of  the  patent  office  will  be  accepted  as  conclu- 
sive.   tId. 


isie 


FOREIGN  PATENTS,  I. 


FOREIGN  PATENTS. 

I.  As  References. 

II.  As   Bar  to  Applicants   United  States 
Patent. 

III.  Proving. 

IV.  Effect  of  Expiration. 
V.  Benefit  of  Date. 

I.  .^s  References. 

1.  An  affidavit  tending  to  show  that  an  in- 
vention shown  but  not  claimed  in  a  German 
patent  was  derived  from  the  applicant  and 
that  it  is  in  fact  nothing  more  than  a  printed 
publication  of  applicant's  invention  and  not 
the  invention  of  another  is  competent  evi- 
dence for  the  consideration  of  a  primary  ex- 
aminer and  should  be  received  and  considered 
by  him.  (Ex  parte  Payen,  43  MS.  Dec,  73, 
cited.)  Ex  parte  Grosselin,  C.  D.  1898,  84 
O.  G.  1284. 

8.  An  invention  patented  in  the  United 
States  is  not  to  be  defeated  by  a  prior  for- 
eign patent  unless  its  description  or  drawings 
contain  or  exhibit  a  substantial  representation 
of  the  patented  invention  in  such  full,  clear, 
and  exact  terms  as  to  enable  any  person  skilled 
in  the  art  or  science  to  which  it  appertains, 
without  the  necessity  of  making  experiments, 
to  practice  the  invention.  (Seymour  v.  Os- 
borne, 11  Wall.  516,  555;  Cahill  v.  Brown,  C. 
D.  1879,  432,  15  O.  G.  69T,  3  B.  &  A.  580, 
587.)     d  Hanifen  v.  E.  H.  Godshalk  Co.  et  al., 

C.  D.  1898,  82  O.  G.  895. 

3.  Prophetical  suggestions  in  a  foreign  pat- 
ent of  what  can  be  done,  when  no  one  has 
ever  tested  by  actual  and  hard  experience  and 
under  the  stress  of  competition  the  truth  of 
the  suggestions  or  the  practical  difficulties  in 
the  way  of  their  accomplishment  or  even 
whether  the  suggestions  are  feasible,  are  not 
to  be  accepted  as  showing  that  a  subsequent 
patent  which  has  already  been  sustained  by 
the  courts  as  a  meritorious  one  is  without 
actual  invention.  d  Westinghouse  Airbrake 
Co.  v.  Great  Northern  Railway  Co.  et  al.,  C. 

D.  1898,  85  O.  G.  455. 

4.  Where  the  primary  examiner  cited  a  for- 
eign patent  as  being  a  pertinent  reference,  as 
it  appeared  upon  its  face  that  it  was  issued 
at  a  date  prior  to  the  filing  date  of  the  appli- 
cation under  consideration,  and  it  was  con- 
tended by  applicant  that  the  foreign  patent 
was  not  granted  at  the  date  shown  on  its 
face,  Held,  that  when  the  foreign  patent  was 
cited  the  burden  was  shifted  to  applicant  to 


prove  that  the  said  patent  was  not  entitled  to 
a  date  which  made  it  effective  as  an  antici- 
patory publication.  Hummel  v.  Tingley,  C. 
D.  1900,  90  O.  G.  959. 

5.  Held,  further,  that  the  question  is  analo- 
gous to  that  raised  by  the  citation  of  a  prior 
patent  to  negative  patentability  of  an  inven- 
tion claimed  by  an  applicant.  In  that  case  the 
burden  is  upon  the  applicant  to  show  such 
prior  patent  does  not  disclose  his  claimed  in- 
vention. (Durham  v.  Seymour,  Commission- 
er of  Patents,  C.  D.  1895,  307,  71  O.  G.  ooi.) 
Id. 

6.  .\  description  of  an  invention  in  a  foreign 
publication  in  order  to  defeat  a  patent  in  this 
country  must  be  so  cl^ar  as  to  enable  persons 
"skilled  in  the  art"  to  make  the  invention. 
Pupin  v.  Hutin  and  Leblanc  v.  Stone,  C.  D. 
1902,  100  O.  G.  931. 

7.  Where  the  primary  examiner  cited  a  for- 
eign patent  as  a  reference,  it  appearing  upon 
its  face  that  it  was  published  at  a  date  more 
than  two  years  prior  to  the  filing  date  of  the 
application  under  consideration,  and  it  was 
contended  by  the  applicant  that  the  foreign 
patent  was  not  published  at  the  date  shown 
on  its  face,  but  at  a  later  date,  Held,  that  when 
the  foreign  patent  was  cited  the  burden  was 
shifted  to  the  applicant  to  prove  that  the  pat- 
ent was  not  entitled  to  a  date  which  made  it 
a  bar  to  the  grant  of  the  patent  on  the  appli- 
cation under  consideration.  Ex  parte  Beck, 
C.  D.  1903,  105  O.  G.  1781. 

8.  When  a  reference  is  cited  by  an  exam- 
iner against  any  claims  presented  by  an  ap- 
plicant, the  burden  is  thereupon  shifted  to  the 
applicant  to  convince  the  examiner  that  he  is 
wrong.  If  the  examiner  still  adheres  to  his 
opinion  and  twice  rejects  the  claim  for  the 
same  reasons,  an  appeal  lies  to  the  examiners- 
in-chief  from  such  rejection.  The  question 
whether  or  not  the  reference  cited  constitutes 
a  bar  to  the  grant  of  the  applicant's  claim  will 
not  be  decided  on  petition,  as  this  is  a  matter 
which  relates  to  the  merits  of  the  case.     Id. 

9.  Evidence  considered  and  Held,  that  the 
testimony  "taken  in  connection  with  the  ap- 
plication itself,  is  sufficient,  in  the  absence  of 
any  evidence  to  the  contrary,  to  justify  the 
presumption  that  under  the  German  law  it  is 
permissible  to  file  an  application  in  the  name 
of  an  assignee."  *National  Metallurgic  Com- 
pany, assignee  of  Tom  Cobb  King  v.  Whit- 
man et  al.,  Whitman  v.  Hearne  et  al.,  C.  D. 
1910,  156  O.  G.  1068. 


FOREIGN  PATENTS,  II. 


153 


II.  As  Bar  to  .A.pplicants  United  States 
Patent. 

10.  The  date  of  a  British  application  within 
the  meaning  of  section  4887,  Revised  Statutes, 
is  the  date  when  the  provisional  specification 
is  filed  in  the  British  patent  office.  Ex  parte 
Smith,  C.  D.  1898,  85  O.  G.  2U91. 

11.  Since  the  British  act  provides  that  every 
patent  shall  be  dated  and  sealed  as  of  the 
day  of  the  application,  the  British  authorities 
have,  by  giving  the  patent  in  this  case  the 
date  of  August  28,  18U6,  when  the  provisional 
was  filed,  determined  that  to  be  the  date  of 
the  application.     Id. 

12.  This  office  should  accept  the  construc- 
tion of  the  British  patent  officia;ls  as  to  when 
the  British  application  was  filed,  unless  it  can 
be  shown  that  to  do  so  would  be  against  the 
spirit  and  intent  of  the  statutes  of  this  coun- 
try, since  this  is  the  rule  of  construction 
adopted  by  the  courts.  (Cathcart  v.  Robin- 
son, 5  Pet.  264.)     Id. 

13.  By  following  the  rule  of  our  courts  in 
regard  to  the  weight  to  be  given  to  foreign 
authorities  on  the  interpretation  of  their 
laws  it  must  result  that  the  date  of  filing  the 
British  application  on  which  the  British  pat- 
ent of  appellant  was  granted  is  the  date  given 
to  it  by  the  British  authorities,  which  is  Aug- 
ust 28,  1896.     Id. 

14.  A  British  provisional  specification  is  not 
analogous  to  a  petition  in  a  United  States  ap- 
plication, since  such  petition  gives  applicant 
no  protection,  no  date  for  any  purpose,  ex- 
cept a  date  from  which  an  applicant  must 
complete  his  application.  When  completed, 
however,  the  application  is  not  given  the  date 
of  the  petition.    Id. 

15.  There  is  no  analogy  between  a  British 
provisional  specification  and  an  incomplete 
United  States  application,  since  such  incom- 
plete application  gives  no  protection  and  does 
not  furnish  a  date  from  which  priority  of  in- 
vention is  determined,  while  the  British  pro- 
visional specification  gives  the  applicant  the 
date  of  priority  of  that  date,  and  he  is  saved 
from  the  consequences  arising  from  any  pub- 
lication or  use  after  the  filing  thereof  and 
prior  to  the  sealing  of  the  patent    Id. 

16.  The  complete  specification  is  required 
by  the  British  law  to  describe  substantially  the 
same  invention  as  the  provisional  specifica- 
tion and  is  nothing  more  than  a  supplement 
to  it,  but  conveying  additional  information, 
which  may  have  been  acquired  during  the  life 


of  the  provisional  specification,  as  to  the  man- 
ner in  which  the  invention  is  to  be  performed. 
Id. 

17.  If  the  complete  specification,  after  being 
accepted  by  the  British  authorities,  describes 
and  claims  any  invention  different  from  that 
described  in  the  provisional  specification,  the 
patentee  has  never  applied  for  a  patent  or  re- 
ceived provisional  protection  in  respect  to  that 
different  invention,  and  the  patent  would  be 
void.     Id. 

18.  The  provisional  specification  is  the 
foundation  on  which  the  patent  is  granted, 
and  when  the  British  patent  is  granted  on  an 
examination  by  the  British  authorities  the  pre- 
sumption is  that  the  British  patent  is  valid  and 
that  there  is  such  similarity  and  connection 
between  the  provisional  specification  and  the 
complete  specification  as  would  warrant  the 
grant,  and  this  office  should  accept  their  rul- 
ing, except  in  a  case  where  it  is  clearly  shown 
that  their  holding  was  wrong,  and  this  has  not 
even  been  intimated  here.     Id. 

19.  The  notice  of  acceptance  of  the  com- 
plete British  application  corresponds  to  the 
United  States  notice  of  allowance  and  not 
to  the  filing  of  the  complete  United  States  ap- 
plication.    Id. 

20.  The  words  "application"  and  "patent" 
in  section  8  of  the  act  of  March  3,  1897,  mean 
United   States  applications  and   patents.     Id. 

21.  When  it  is  sought  to  invalidate  a  United 
States  patent  under  Revised  Statutes,  sections 
488o  and  4920,  by  an  alleged  prior  foreign 
patent,  it  has  been  repeatedly  held,  that  such 
alleged  foreign  patent  must  be  one  that  is 
open  and  accessible  to  the  public — one  that 
is  a  public  and  not  a  secret  one.  Roschach  v. 
Walker,  C.  D.  1899,  88  O.  G.  1333. 

22.  Where    an    application    is    filed    in    this 
country   on   April   23,   1898,   for   an   invention 
patented   in  England  and  it  appears  that  the    ^  .^' 
application  and  provisional  specification  were     t       i 
filed   in   the   British   patent  office   on    May   1,       IV^ 
1897,  the  complete  specification  was  filed  Feb- 
ruary 28,  1898,  and  was  accepted  June  1,  1898, 

and  the  patent  was  sealed  and  delivered  .Aug- 
ust 10,  1898,  Held,  that  the  application  here 
cannot  be  allowed  in  view  of  section  4887,  Re- 
vised Statutes.  *In  re  Swinbourne,  C.  D. 
19U2,  99  O.  G.  1625. 

23.  The  time  of  filing  the  application  in  the 
British  patent  office  accompanied  only  by  the 
provisional  specification  must  be  taken  as  the 
date  of  the  application  for  the  foreign  patent 
within  the  meaning  of  section  4887,  Revised 


154 


FOREIGN  PATENTS,  III. 


Statutes.     (Ex  parte   Smith,  C.  D.  1898,  276, 
85  O.  G.  2091,  cited  with   approval.)     *Id. 

24.  Independent  of  the  form  or  function  of 
either  specification  that  may  be  filed  in  con- 
nection with  it  the  instrument  entitled  the  ap- 
plication throughout  the  British  patent  law  re- 
mains the  initiatory  step  in  the  proceeding  to 
obtain  a  patent  under  that  law  and  must  there- 
fore fix  the  date  from  which  the  limitation 
of  section  4887,  Revised  Statutes,  begins  to 
run.     *Id. 

25.  Held,  that  the  original  paper  called  the 
"application"  is  not  a  mere  introduction  to  the 
provisional  specification  and  that  the  provi- 
sional specification  is  not  the  equivalent  of  a 
caveat  under  the  United  States  law.    *Id. 

26.  The  act  of  March  3,  1903,  amending 
section  4887,  Revised  Statutes,  extending  the 
time  for  filing  applications  after  applications 
abroad  from  seven  to  twelve  months  applies 
to  all  applications  pending  whether  filed  be- 
fore or  after  the  passage  of  the  act  Ex 
parte  Klingelfuss,  C.  D.  1903,  104  O.  G.  2149. 

27.  The  part  of  the  act  of  March  3,  1903, 
extending  the  time  for  filing  applications  from 
seven  to  twelve  months  has  reference  to  the 
grant  of  patents  after  the  passage  of  the  act 
and  makes  no  e.xception  as  to  applications  filed 
before  the  passage  of  the  act.    Id. 

28.  By  extending  the  time  from  seven  to 
twelve  months  the  statutes  simply  removed  a 
disability  created  by  a  former  statute  and  is 
remedial  in  its  nature.  It  is  therefore  to  be 
liberally  construed.    Id. 

29.  Section  4887,  Revised  Statutes,  as 
amended  applies  to  cases  pending  at  the  time 
of  the  amendment,  but  not  to  cases  abandoned 
before  that  date.  Ex  parte  Casalonga,  C.  D. 
1903,  105  O.  G.  261. 

30.  Where  the  applicant  filed  an  application 
in  a  foreign  country  on  May  7,  1906,  and  a 
patent  was  granted  thereon,  an  application 
filed  in  this  country  after  May  7,  1907,  can  not 
be  received.  Applications  which  the  law  re- 
quires to  be  filed  in  this  office  within  a  cer- 
tain time  cannot  be  held  to  be  so  filed  by  rea- 
son of  the  fact  that  they  are  in  the  hands  of 
the  postal  authorities.  Ex  parte  Ravelli,  C. 
D.  1907,  130  O.  G.  982. 

31.  Section  4894  of  the  Revised  Statutes 
only  applies  to  applications  which  already 
have  a  status  in  this  office  and  is  not  appli- 
cable to  cases  in  which  an  application  is  filed 
in  this  office  more  than  one  year  from  the 
date  upon  which  the  applicant  filed  an  appli- 


cation in  a  foreign  country  and  upon  which 
he  has  received  a  patent.    Id. 

32.  The  second  clause  of  section  4887,  Re- 
vised Statutes,  as  amended  March  3,  1903, 
construed  and  Held,  not  to  be  retroactive 
and  not  to  apply  to  applications  pending  at 
the  time  of  its  passage.  *De  Ferranti  v.  Lind- 
mark,  C.  D.  1908,  134  O.  G.  515. 

33.  Under  the  provisions  of  this  section  an 
applicant  who  filed  an  application  in  this 
country  after  the  passage  of  the  act  is  enti- 
tled to  the  benefit  of  a  foreign  application  for 
the  same  invention  filed  less  than  twelve 
months  prior  to  the  domestic  application,  al- 
though such  foreign  application  was  filed  prior 
to  the  passage  of  the  act.     *Id. 

34.  The  act  of  March,  1903,  by  which  the 
limitation  within  which  an  application  must 
be  filed  in  this  country  after  the  filing  of  a 
foreign  application  for  the  same  invention  was 
e.\.tendcd  from  seven  months  to  twelve  months 
construed  and  Held,  not  to  apply  to  applica- 
tions pending  at  the  date  of  its  passage. 
*GuenifTet,  Benoit,  and  Nicault  v.  Wictorsohn, 

C.  D.  1908,  134  O.  G.  779. 

35.  In  computing  the  time  under  Revised 
Statutes,  section  4887,  as  amended  by  act  of 
March  3,  1903,  the  day  upon  which  the  ap- 
plication in  a  foreign  country  was  filed  should 
be  excluded,  and  where  such  an  application 
was  filed  on  February  23,  1903,  an  application 
filed  in  this  country  February  23,  1904,  was 
in  time,  c  Hess-Bright  Mfg.  Co.  et  al.  v. 
Standard  Roller  Bearing  Co.,  C.  D.  1909,  147 
O.  G.  521. 

36.  Where  an  application  was  rejected  on 
a  foreign  patent.  Held,  that  the  examiner 
properly  refused  to  withdraw  the  patent  as  a 
reference  in  the  absence  of  an  affidavit  by  the 
applicant  fully  identifying  it  as  his  own  or 
filed  on  his  behalf  with  his  knowledge  and 
consent.  Ex  parte  Wlost,  C.  D.  1911,  1G5  O. 
G.  729. 

III.  Proving. 

37.  The  date  of  publication  of  a  foreign 
patent  is  the  constructive  date  of  its  publica- 
tion in  this  country.     Rousseau  v.  Brown,  C. 

D.  1903,  103  O.  G.  659. 

38.  Where  an  alleged  official  copy  of  the 
specification  and  drawings  annexed  to  a 
French  patent  is  introduced  in  evidence,  but 
no  copy  of  the  patent  itself  is  produced,  Held, 
that  the  patent  cannot  be  regarded  as  in  evi- 
dence. 'Rousseau  v.  Brown,  C.  D.  1903,  104 
O.  G.  1120. 


FOREIGN  PATENTS,  V. 


155 


39.  Where  on  a  motion  to  dissolve  an  in- 
terference a  certified  copy  of  a  French  patent 
is  produced,  but  the  certificate  is  on  a  sep- 
arate sheet  from  the  specification  and  is  not 
attached.  Held,  that  the  certificate  may  be 
taken  to  show  the  grant  and  its  date  and  copy 
of  the  patent  in  the  scientific  Hbrary  of  this 
office  may  be  accepted  as  proving  the  contents 
of  the  patent.  Robin  v.  Muller  and  Bonnet, 
C.  D.  1904,   108  O.  G.  292. 

IV.  Effect  of  Expiration. 

40.  While  it  has  never  been  decided  by  the 
courts  whether  a  patent  granted  in  this  coun- 
try for  an  invention  previously  made  the  sub- 
ject of  a  Gebrauchsmuster  is  hmited  in  term 
under  section  4887  of  the  Revised  Statutes, 
the  data  as  to  such  Gebrauchsmuster  should 
be  given  in  the  specification,  the  question  of 
limitation  being  left  to  the  courts.  E.x  parte 
Gillie,  C.  D.  1898,  84  O.  G.  1143. 

41.  Where  a  French  patent  was  granted  for 
a  term  of  fifteen  years  before  the  date  of  ap- 
plication for  the  United  States  patent  for  the 
same  invention  and  the  French  patent  was 
in  full  force  at  that  date,  but  lapsed  for  the 
non-payment  of  annuity  before  the  United 
States  patent  issued,  Held,  that  there  was  no 
bar  to  the  issue  of  the  United  States  patent 
under  section  4887,  Revised  Statutes,  d  Wels- 
bach  Light  Company  v.  Apollo  Incandescent 
Gas  Light  Company  et  al.,  C.  D.  1899,  87  O. 
G.  1784. 

42.  When  a  foreign  patent  is  allowed  to 
lapse  by  reason  of  non-compliance  with  some 
statutory  provision  before  application  is  made 
in  the  United  States,  the  grant  of  a  patent 
in  the  United  States  is  not  prohibited  by  sec- 
tion 4887  of  the  Revised  Statutes,  but  such 
patent  is  invalid  under  a  different  section  on 
the  ground  of  abandonment  of  the  invention 
before  the  application  was  filed,     d  Id. 

43.  "To  expire  at  the  same  time"  in  section 
4887,  Revised  Statutes,  should  be  taken  to 
mean  that  the  United  States  patent  expires 
at  the  end  of  the  term  prescribed  in  the 
previous  foreign  patent  without  regard  to 
mishaps  occurring  after  the  application  was 
filed  in  this  country,  since  the  applicant  was 
at  that  time  entitled  to  his  patent  and  could 
then  have  obtained  it  if  the  office  could  have 
been  more  prompt,    d  Id. 

44.  The  provision  of  secion  4887  of  the  Re- 
vised Statutes  that  a  patent  shall  expire  at  the 
same  time  with  a  foreign  patent  on  the  inven- 


tion means  a  foreign  patent  granted  to  the 
same  party  or  with  his  consent.  *Hobbs  et  al. 
v.  Beach,  C.  D.  1901,  94  O.  K.  23.'->7. 

45.  A  claim  for  a  process  and  a  claim  for 
an  apparatus  by  which  the  process  is  per- 
formed are  distinct  inventions,  and  the  United 
States  patent  for  one  does  not  expire,  under 
section  4887,  Revised  Statutes,  by  reason  of 
the  expiration  of  a  foreign  patent  for  the 
other.  **Leeds  &  Catlin  Company  v.  Victor 
Talking  Machine  Company  and  United  States 
Gramophone  Company,  C.  D.  1909,  144  O.  G. 
1089. 

46.  A  combination  of  elements  is  an  in- 
vention distinct  from  one  of  the  elements 
thereof,  and  a  patent  containing  claims  for 
both  does  not  expire,  as  to  the  combination 
claim,  by  reason  of  the  expiration  of  a  for- 
eign patent  covering  one  of  the  elements. 
**Id. 

47.  Under  section  4887,  Revised  Statutes,  a 
United  States  patent  is  not  limited  to  its 
term  by  reason  of  the  expiration  of  a  prior 
Canadian  patent  before  the  end  of  the  term 
for  which  it  was  granted  by  failure  to  pay  the 
annual  taxes  thereon.  (Pohl  v.  Anchor  Brew- 
ing Co.,  C.  D.  1890,  275,  51  O.  G.  15G,  1.34  U. 
S.  381.)      **Id. 

V.  Benefit  of  Date. 

48.  R.  applied  for  a  Swiss  patent  on  March 
2,  1896,  and  on  June  30,  1896,  a  certificate  was 
issued  by  the  Swiss  patent  office  stating  that 
a  provisional  specification,  dated  March  2, 
189G,  had  been  registered  under  No.  11,743  and 
that  the  patent  document  would  immediately 
after  the  publication  of  the  description  and 
drawing  be  executed.  Notice  of  the  registra- 
tion was  published  in  the  Patent-Lisle  of  the 
Swiss  office,  a  copy  of  which  publication  was 
received  in  the  United  States  patent  office  on 
.August  7,  1897;  but  it  contained  no  descrip- 
tion of  the  Swiss  patent.  The  making  pub- 
lic of  the  specification  of  the  Swiss  patent 
and  its  publication  and  printing  were  post- 
poned for  six  months,  which  ended  September 
2,  1896.  Held,  that  R.'s  Swiss  patent  was  a 
secret  patent  until  September  2,  1896,  a  date 
subsequent  to  W.'s  filing  date  in  this  country, 
and  that  no  date  can  be  given  to  R.'s  Swiss 
patent  which  will  overcome  W.'s  date  of  filing 
his  application  in  this  country,  and  priority 
awarded  to  W.  Roschach  v.  Walker,  C.  D. 
1899,  88  O.  G.  1333. 

49.  The  benefit  of  the  date  of  a  foreign  ap- 
plication   filed   under   the   International    Con- 


150 


FORFEITED   APPLICATIONS— GUARDIANS. 


vention  cannot  be  secured  by  mere  allega- 
tions that  such  application  has  been  tiled,  but 
only  by  proving  such  foreign  application.  Ex 
parte  Pauling,  C.  D.  1905,  115  O.  G.  1848. 

50.  There  is  no  necessity  for  proving  a  for- 
eign application  and  thereby  securing  the  ben- 
efit of  its  date  under  section  4887  of  the  Re- 
vised Statutes  until  some  occasion  arises  for 
wishing  to  secure  the  benefit  of  that  date. 
Such  proof  need  not  be  filed  with  the  appli- 
cation.    Id. 

51.  Even  where  a  party  secures  for  his  ap- 
plication here  the  benefit  of  the  filing  date  of 
a  foreign  application  the  actual  filing  date  in 
this  country  must  appear  and  cannot  be 
changed  to  the  foreign  filing  date.     Id. 


FORFEITED  APPLICATIONS. 

1.  An  application  that  has  been  allowed  to 
lapse  or  become  forfeited  and  before  it  is  re- 
newed, ceases  to  have  vital  or  operative  ef- 
fect, except  for  a  very  limited  and  special 
purpose.  *Christensen  v.  Noyes,  C.  D.  1900, 
90  O.  G.  223. 

2.  Where  the  examiner  allows  an  applica- 
tion and  the  notice  of  allowance  is  properly 
sent,  Held,  that  the  allowance  cannot  be  set 
aside  after  a  forfeiture  of  the  case  for  fail- 
ure to  pay  the  final  fee  upon  the  allegation 
that  it  was  an  error  for  the  examiner  to  have 
allowed  it.  Ex  parte  Bryant,  C.  D.  1902,  100 
O.  G.  3773. 

3.  Where  a  notice  of  allowance  is  sent  to 
the  attorney  who  has  been  prosecuting  the 
case  and  he  afterward  raises  the  question  as 
to  his  right  to  prosecute  the  case  and  the 
final  decision  is  in  favor  of  his  right.  Held, 
that  the  case  was  regularly  allowed  and  that 
the  final  fee  not  having  been  paid  within  six 
months  it  is  forfeited.     Id. 

4.  In  the  case  of  payment  of  final  fees  the 
certificate  of  deposit  under  Rule  207  must  be 
deposited  in  the  mail  for  transmission  to  the 
patent  office  within  six  months  from  the  al- 
lowance of  the  application.  Where  it  is  mail- 
ed by  the  applicant  to  his  attorney  and  is 
filed  in  this  office  after  the  six  months  the  ap- 
plication is  forfeited.  Ex  parte  Younger  C. 
D.  1902,  101  O.  G.  662. 


))y  means  of  circulars  or  letters  distributed 
among  agents  and  customers  of  a  manufac- 
turer of  goods  claimed  to  infringe  give  no- 
tice of  his  rights  as  he  understands  them  and 
of  his  intention  to  enforce  them  by  suits  when 
done  in  good  faith,  the  sending  of  such  no- 
tices and  circulars  in  bad  faith  and  without 
any  intention  of  bringing  the  suits  therein 
threatened,  but  solely  for  the  purpose  of  de- 
stroying the  business  of  such  manufacturer, 
constitutes  a  fraudulent  invasion  of  property 
rights,  against  which  the  party  injured  is  en- 
titled to  relief  in  equity  by  injunction.  <f  Far- 
quhar  Company  v.  National  Harrow  Company, 
C.  D.  1900,  93  O.  G.  192. 

2.  Held,  that  it  is  not  necessary  to  believe 
positive  testimony  of  witnesses  when  the  sur- 
rounding circumstances  indicate  strongly  that 
the  facts  are  otherwise  than  testified  to  by 
them.  Blackman  v.  Alexander,  C.  D.  1904, 
113  O.  G.  17(13. 

3.  To  establish  fraud,  it  is  not  necessary  to 
prove  it  by  direct  and  positive  evidence.  Cir- 
cumstancial  evidence  is  not  only  sufficient,  but 
in  most  cases  it  is  the  only  proof  that  can  be 
adduced.     Id. 

4.  Held,  that  circumstances,  although  incon- 
clusive if  separately  considered,  may  by  their 
number  and  joint  operation,  especially  when 
corroborated  by  "moral  coincidence,"  be  suffi- 
cient to  constitute  conclusive  proof  of  fraud. 
Id. 

5.  Where  it  appears  that  a  claim  involved 
in  an  interference  proceeding  between  a  pat- 
entee and  an  applicant  for  the  reissue  of  a 
patent  covers  substantially  the  same  inven- 
tion as  a  claim  of  a  prior  interference  be- 
tween the  same  parties  in  which  the  patentee 
filed  a  concession  of  priority,  the  question  of 
priority  is  res  adjudicala.  and  evidence  offered 
by  the  patentee  that  the  concession  was  ob- 
tained from  him  by  duress  will  not  be  con- 
sidered. Judgment  obtained  by  fraud  or 
duress  must  be  attacked  in  a  direct  proceeding 
and  not  collaterally.  Nelson  v.  Felsing  and 
Felsing  v.  Nelson,  C.  D.  1909,  142  O.  G.  289. 


FRAUD. 


1.  While  the  owner  of  a  patent  may  law- 
fully  warn   others   against    infringement   an(l 


GUARDIANS. 

1.  As  the  guardian  of  an  insane  person  ap- 
pointed in  a  foreign  jurisdiction  is  merely 
the  guardian  of  that  person  and  his  estate 
within  that  jurisdiction,  and  such  appointment 
has  no  extraterritorial  force  and  gives  to 
the  guardian  no  power  over  the  lunatic's  prop- 


HEARINGS— INFRINGEMENTS,  I. 


157 


erty  in  other  jurisdictions,  Held,  that  a  re- 
quest that  a  guardian  appointed  by  a  foreign 
court  be  recognized  as  the  guardian  of  an 
applicant  who  is  alleged  to  be  insane  and  be 
permitted  to  intervene  and  take  out  a  patent 
under  section  4896,  Revised  Statutes,  should 
not  be  granted.  Ex  parte  Hummel,  C.  D. 
1901,  94  O.  G.  583. 


HEARINGS. 

1-  The  time  of  hearing  is  a  matter  resting 
in  the  discretion  of  the  tribunal  before  whom 
the  case  is  pending.  Cazin  v.  Von  Welsbach, 
C.  D.  1905,  119  O.  G.  650. 

2.  Where  petition  was  brought  relating  to 
the  time  of  hearing  by  the  primary  examiner 
and  it  appears  that  decision  upon  the  matter 
to  be  heard  had  been  rendered  favorable  to 
petitioner.  Held,  that  the  question  raised  is 
a  moot  one.     Id. 

3.  A  hearing  will  not  be  postponed  because 
hearings  before  two  tribunals  of  the  office 
were  set  for  the  same  hour.  The  hearing  be- 
fore one  tribunal  can  be  easily  arranged  to 
follow  the  termination  of  the  hearing  before 
the  other.  Bombard  v.  United  States  Graph- 
ite Company,  C.  D.  1907,  129  O.  G.  479. 

4.  Order  to  show  cause  properly  issued 
without  setting  the  case  down  for  a  hearing. 
Id. 

5.  A  decision  of  the  examiner  of  interfer- 
ences denying  a  motion  to  extend  time  to 
show  cause  will  not  be  reversed  in  the  ab- 
sence of  a  clear  showing  of  abuse  of  discre- 
tion.   Id. 


HOLIDAYS. 

1.  As  section  1389  of  the  code  of  the  Dis- 
trict of  Columbia  provides  that  every  Satur- 
day after  twelve  o'clock  noon  shall  be  a  holi- 
day in  the  District  "for  all  purposes,"  Held, 
that  the  afternoon  of  Saturday  is  dies  non 
juridiciis.  *Ocumpaugh  v.  Norton — Gallagher 
V.  Hicn,  C.  D.  1905,  114  O.  G.  545. 

2.  Held,  that  the  Saturday  half  holiday  pre- 
scribed by  the  code  of  the  District  of  Colum- 
bia should  be  taken  into  account  in  the  rule 
of  the  court  of  appeals  of  the  District  of  Co- 
lumbia requiring  that  appeals  from  the  deci- 
sion of  the  commissioner  of  patents  to  that 
court  should  be  taken  within  forty  days  from 
the  date  of  the  ruling  or  order  appealed  from, 
exclusive  of  Sundays  and  legal  holidays,  and 
not  afterward.     *Id. 


3.  Held,  that  for  every  Saturday  occurring 
in  the  forty-day  limit  of  appeal  prescribed  by 
the  rule  of  the  court  of  appeals  there  should 
be  deducted  one-half  day,  as  the  statute  spe- 
cifically and  in  express  words  divides  the  Sat- 
urday into  two  parts,  one  for  business  pur- 
poses and  the  other  for  a  holiday.    *Id. 

4.  Held,  that  a  notice  of  a  motion  in  an 
interference  case  received  on  a  Saturday  af- 
ternoon in  the  District  of  Columbia  is  valid, 
notwithstanding  the  fact  that  Saturday  after- 
noon is  a  legal  holiday.  Goodfellow  v.  Jolly, 
C.   D.   1905,  115  O.  G.  1064. 

5.  The  time  limit  fixed  in  the  rules  for  mo- 
tions means  actual  time,  and  Sundays  and  hol- 
idays are  not  to  be  excluded  in  computing  it. 
Dickinson  v.  Norris,  C.  D.  1905,  116  O.  G. 
503. 


INFRINGEMENT. 

I.  In  General. 
II.  Claims  tor  Combination. 

III.  Contributory. 

IV.  Making  and  Selling. 
V.  Process. 

VI.  Mechanical  Equivalent. 
VII.  Composition  ok  Matter. 
VIII.  Repairing. 
IX.  Identity  of  Invention. 
X.  .\rticles  Purchased  Abroad. 
XI.  Particular  Cases. 

I.  In  General. 

1.  If  it  be  conceded  that  Boyden's  device 
corresponds  with  the  letter  of  Westinghouse's 
claims  1  and  4,  that  does  not  settle  conclu- 
sively the  question  of  infringement.  A  charge 
of  infringement  is  sometimes  made  out, 
though  the  letter  of  the  claims  be  avoided. 
The  converse  is  equally  true.  The  patentee 
may  bring  the  defendant  within  the  letter  of 
his  claims,  but  if  the  latter  has  so  far  changed 
the  principle  of  the  device  that  the  claims  of 
the  patent,  literally  construed,  have  ceased  to 
represent  his  actual  invention  he  is  as  little 
subject  to  be  adjudged  an  infringer  as  one 
who  has  violated  the  letter  of  a  statute  is  to 
be  convicted  when  he  has  done  nothing  in 
conflict  with  its  spirit  and  intent.  **Boyden 
Power  Brake  Co.  et  al.  v.  Westinghouse  et  al, 
C.  D.  1S98,  83  O.  G.  1067. 

2.  The  ruling  of  the  supreme  court  that 
where  the  invention  is  functional  and  the  de- 
fendant's device  differs  from  that  of  the  pat- 


158 


INFRINGEMENTS,  II,  III. 


cntec  only  in  form  or  in  rearrangement  of  the 
same  elements  of  a  combination  he  would  be 
adjudged  an  infringer,  even  if  in  certain  par- 
ticulars his  device  be  an  improvement  upon 
that  of  the  patentee,  is  in  no  way  qualified. 
Id. 

3.  Where  a  suit  is  brought  against  a  cor- 
poration and  certain  individual  defendants 
and  infringement  is  found,  the  decree  need 
not  be  limited  to  the  joint  infringement  of  all 
the  defendants,  but  may  also  go  against  the 
individual  defendants  for  their  several  indi- 
vidual infringements,  d  Simonds  Rolling-Ma- 
chine Company  v.  Hathorn  Manufacturing 
Company  ct  al.,  C.  D.  1899,  8S  O.  O.  2066. 

4.  The  case  at  bar  distinguished  from  an 
interference  in  the  patent  office  or  a  contest 
in  the  courts  between  original  inventors  for 
priority  of  invention,  d  Welsbach  Light  Com- 
pany V.  American  Incandescent  Lamp  Com- 
pany and  Berlinicke,  C.  D.  1900,  90  O.  G.  960. 

5.  After  rights  under  a  patent  have  been 
granted  any  person  who  gets  control  of  the 
patent  with  knowledge  or  notice,  actual  or 
constructive,  must  be  assumed  to  have  taken 
subject  to  such  rights  and  is  disqualified  from 
infringing  those  rights.  *Whitson  et  al  v. 
The  Columbia  Phonograph  Company,  C.  D. 
1902,  98  O.  G.  418. 

6.  Where  the  alleged  infringing  device  is 
patented  and  it  is  apparent  from  the  face  of 
the  instrument  that  extrinsic  evidence  is  not 
needed  to  explain  terms  of  art  therein,  so  as 
to  enable  the  court  to  compare  the  devices 
and  determine  ihe  question  of  infringement. 
Held,  that  the  question  of  infringement  is 
one  of  law  susceptible  of  determination  on 
writ  of  error.  **Singer  Manufacturing  Com- 
pany v.  Cramer,  C.  D.  1904,  108  O.  G.  1869. 

7.  In  determining  infringement  we  are  en- 
titled to  look  at  the  practical  operation  of  the 
machines,  and  where  the  device  of  the  re- 
spondents shows  a  substantially  different 
mode  of  operation,  even  though  the  result  of 
the  operation  of  the  machine  remains  the 
same,  infringement  is  avoided.  **Cimiotti 
Unhairing  Company  et  al.  v.  American  Fur 
Refining  Company  ct  al.,  C.  D.  1905,  116  O.  G. 
1452. 

II.  Claims  i'qr  Combination. 

8.  One  using  the  essential  elements  of  a 
combination  as  enumerated  in  one  claim  can- 
not escape  infringement  because  he  does  not 
use  subordinate  or  unimportant  elements  of 
combinations    described    in   other   claims   and 


which  were  manifestly  omitted  from  the  claim 
in  question  that  the  inventor  might  more  per- 
fectly secure  the  essential  elements  of  his  in- 
vention, c  Mast,  Foss  &  Co.  v.  Dempster  Mill 
Mfg.  Co.,  C.  D.  1898,  82  O.  G.  338. 

9.  A  combination  as  claimed  is  an  entirety 
and  disappears  with  the  removal  of  one  of  its 
elements,  and  therefore  it  is  a  settled  princi- 
ple of  patent  law  that  where  an  clement  of 
the  combination  claimed  is  omitted  there  is 
no  infringement.  *Lanc  v.  Levi,  C.  D.  1903, 
104  O.  G.   189S. 

10.  Where  the  claim  includes  a  stationary 
card  as  an  essential  element  of  the  combina- 
tion. Held,  that  it  cannot  be  disregarded  in  de- 
termining the  question  of  infringement  upon 
the  theory  that  it  is  unnecessary.  **Cimiotti 
Unhairing  Co.  v.  American  Fur  Refining  Co., 
C.  D.  190.i,  116  O.  G.  1452. 

11-  A  claim  including  a  stationary  stretcher- 
bar.  Held,  not  infringed  by  mechanism  having 
a  movable  stretcher-bar,  since  the  two  are  not 
to  be  regarded  as  mechanical  equivalents  in 
the  combination.     **Id. 

12.  No  one  is  an  infringer  of  a  combina- 
tion claim  unless  he  uses  all  the  elements 
thereof.     *Id. 

III.  Contributory. 

13.  Where  a  machine  is  sold  under  the  re- 
striction that  it  was  to  be  used  only  with 
supplies  made  by  the  vendor,  a  defendant  who 
sells  supplies  which  are  used  with  such  ma- 
chine cannot  be  held  liable  as  a  contributory 
infringer  of  the  patent  for  the  machine  where 
it  does  not  appear  that  the  defendant  ever  so- 
licited an  order  for  such  supplies,  or  was 
ever  notified  by  the  plaintiffs  of  the  rights 
which  they  claimed,  or  that  the  executive  of- 
ficers of  defendant  had  knowledge  of  the  spe- 
cial character  of  such  machines  or  the  re- 
strictions on  the  purchase  of  supplies.  **Cor- 
tclyou  and  Cortelyou,  administrators,  et  al.  v. 
Charles  Eneu  Johnson  &  Company,  C.  D. 
1907,  131   O.  G.  2147. 

14.  Notice  to  a  salesman  of  a  company  who 
was  not  an  officer  or  general  agent  of  the 
company  is  not  such  notice  as  will  bind  the 
principal  with  respect  to  all  future  transac- 
tions.    *Id. 

15.  The  manufacture  and  sale  of  unpatent- 
ed disk  records  for  use  in  a  talking-machine 
covered  by  the  Berliner  patent,  No.  534,  543, 
in  which  the  disk  record  is  an  essential  ele- 
ment,   constitutes    contributory    infringement 


INFRINGEMENTS,  IV-IX. 


159 


of  that  patent.  **Lceds  &  Catlin  Company  v. 
Victor  Talking  Machine  Company  and  United 
States  Gramophone  Company,  C.  D.  1900,  144 
O.  G.  1095. 

16.  The  scale  of  unpatented  disk  records 
for  use  in  talking-machines  made  in  accord- 
ance with  the  Berliner  patent,  No.  534,  54.'5, 
which  covers  the  combination  of  the  record 
and  a  reproducing-stylus  shaped  for  engage- 
ment with  the  record  and  free  to  be  vibrated 
and  propelled  by  the  same,  docs  not  come 
within  the  doctrine  of  permissible  repair  of 
the  patented  device,  but  amounts  to  recon- 
struction. The  record  is  not  perishable  or 
subject  to  decay  within  the  meaning  of  this 
doctrine,  but  is  capable  of  remaining  useful 
for  an  indefinite  period,  and  the  sale  of  such 
records  was  not  for  the  purpose  of  replacing 
worn-out  parts,  but  for  the  purpose  of  in- 
creasing the  repertory  of  tunes.    **Id. 

IV.  Making  and  Selling. 

17.  The  fact  that  a  defendant  is  merely  a 
user  of  infringing  machines  and  not  a  manu- 
facturer does  not  affect  the  right  of  com- 
plainant to  a  preliminary  injunction  unless 
under  exceptional  circumstances,  as  where  it 
appears  that  his  general  market  is  not  jeop- 
ardized and  that  he  can  be  made  entirely  good 
by  the  payment  of  damages  equivalent  to  a 
license  fee.  d  Bresnahan  et  al.  v.  Tripp  Giant 
Leveller  Co.,  C.  D.  1900,  92  O.  G.  2508. 

V.  Process. 

18.  The  broad  proposition  that  the  vendor 
of  a  product  which  has  been  made  in  infringe- 
ment of  a  patented  process  is  an  infringer  or 
liable  to  any  extent  to  the  patentee  is  unten- 
able. The  patentee's  remedy  is  against  the 
manufacturer,  d  Welsbach  Light  Company  v. 
Union    Incandescent    Light    Company,    C.    D. 

1900,  01  O.  G.  2574. 

19.  The  owner  of  a  patent  for  a  process  is 
not  entitled  to  a  preliminary  injunction  in  a 
suit  for  infringement  restraining  the  defend- 
ant from  selling  articles  made  in  infringement 
of  the  patented  process,     d  Id. 

20.  The  making  and  selling  of  machines  for 
carrying  out  a  patented  process  must  be  con- 
sidered as  taking  part  in  the  infringement  of 
the  process,  cjohn  R.  Williams  Co.  et  al.  v. 
Miller,   Du    Brul   &   Peters    Mfg.    Co.,   C.    D. 

1901,  97  O.   G.  2308. 


VI.  Mechanical  Equivalent. 

21.  Where  the  claim  of  the  patent  calls  for 
a  "treadle  provided  with  trunnions,"  Held, 
that  to  find  infringement  it  is  not  necessary 
to  show  the  use  of  trunnions  if  their  mechan- 
ical equivalents  are  employed  as  bearings, 
(i  Singer  Mfg.  Co.  v.  Cramer,  C.  D.  1901,  97 
O.  G.  552. 

22.  Infringement  is  not  avoided  by  mere 
change  of  form,  or  renewal  of  parts,  or  re- 
duction of  dimensions,  or  the  substitution  of 
mechanical  equivalents,  or  the  studious  avoid- 
ance of  the  literal  dellnitions  of  specifications 
and  claims,  or  the  superadding  of  some  im- 
provement, d  Crown  Cork  &  Seal  Co.  of 
Balto.  City  v.  Aluminum  Stopper  Co.  of  Balto. 
City  et  al,  C.  D.  1901,  96  O.  G.  2573. 

VII.  Composition  of  Matter. 

23.  The  substitution  of  one  ingredient  for 
another  in  a  composition  will  not  avoid  in- 
fringement if  the  two  ingredients  were  well 
known  at  the  date  of  the  patent  as  endowed 
with  the  same  capacity.  *Lane  v.  Levi,  C.  D. 
1903,   104  O.   G.   1898. 

24.  The  addition  to  a  composition  of  sub- 
stances that  do  not  by  their  interaction  change 
the  properties,  effect,  or  usefulness  of  the 
composition  does  not  destroy  its  identity.  The 
composition  is  the  same  if  its  properties  sub- 
stantially remain.     *Id. 

VIII.  Repairing. 

25.  Held,  on  a  motion  for  a  preliminary  in- 
junction that  infringement  of  a  patent  for  a 
machine  for  sorting  cards  had  not  been  es- 
tablished by  a  showing  that  the  owner  of  a 
machine  covered  thereby  had  widened  the 
same  to  carry  larger  cards  and  altered  parts 
of  the  machine  to  improve  its  operation  where 
it  appeared  that  the  identity  of  the  machine 
had  not  been  destroyed  and  that  the  changes 
did  not  contain  anything  patentable,  a  The 
Tabulating  Machine  Company  v.  Durand,  C. 
D.   1010,  156  O.  G.  258. 

IX.  Identity  of  Invention. 

26.  Where  the  defendant's  stopper  follows 
the  same  plan  as  Painter's  and  uses  the  same 
elements  which  co-operate  in  the  same  way  to 
effect  the  same  purpose,  Held,  that  there  is 
infringement,  notwithstanding  the  different 
phraseology  employed  by  the  defendants  in 
describing    their    stopper,      d  Crown    Cork    & 


160 


INOPERATIVENESS. 


Seal  Co.  of  Baltimore  City  v.  Aluminum  Stop- 
per Co.  of  Baltimore  City  et  al.,  C.  D.  1001, 
96  O.  G.  2573. 

27.  Where  the  defendant's  spool-carrier  was 
of  a  different  construction  from  that  of  the 
complainant  and  operated  in  a  different  way 
and  could  not  he  substituted  for  it,  Held,  that 
the  machines  lack  that  identity  of  means  and 
identity  of  operation  which  must  be  com- 
bined with  identity  of  result  to  constitute  in- 
fringement. *Kokomo  Fence  Machine  Com- 
pany V.  Kitselman,  C.  D.  1003,  103  O.  G.  1417. 

X.  Articles  Purchased  Abroad. 

28.  Preliminary  injunction  granted  where  a 
party  purchases  abroad  articles  covered  by  a 
United  States  patent  and  imports  them  for 
sale  in  this  country,     d  Dickerson  v.  Tinling, 

C.  D.  1898,  83  O.  G.  1663. 

XI.  Particular  Cases. 

29.  If  there  be  any  invention,  it  is  not  to 
be  found  in  the  combination  described  in  the 
claims,  but  by  reference  to  the  drawing  and 
in  the  words  "substantially  as  described."  This 
would  confine  the  plaintiff  to  a  metallic  frame 
divided  longitudinally  into  three  sections, 
each  fitted  with  short  rollers,  two  of  which 
project  above  and  forward  of  the  front  bar 
of  the  frame,  which  is  bent  inward  in  front 
of  the  middle  section  to  form  the  "re-entrant 
bend  or  recess"  for  the  insertion  of  the  hand. 
**Office  Specialty  Manufacturing  Company  v. 
Fenton   Metallic  Manufacturing  Company,   C. 

D.  1899,  87  O.  G.   1608. 

30.  Limiting  the  patent  to  the  precise  con- 
struction shown, none  of  the  defendant's  devices 
can  be  treated  as  infringements,  since  none 
of  them  shows  a  shelf  divided  into  three  sec- 
tions, and  none  of  them,  except  possibly  one, 
the  manufacture  of  which  was  stopped,  indi- 
cates a  bend  in  the  front  bar  of  the  frame  to 
form  the  recess  for  the  insertion  of  the  hand. 
**Id. 

31.  Patent  No.  322,393,  granted  July  14, 
188.-),  to  Clayton  and  Albert  Potts  for  an  im- 
provement in  clay-disintegrators,  which  con- 
sists in  a  rotating  cylinder  carrying  cutting- 
bars  fixed  in  longitudinal  grooves  and  pro- 
jecting beyond  the  surface  of  the  cylinder, 
acting  in  combination  with  a  vibratory  plate 
mounted  on  a  shaft  opposite  the  cylinder  and 
moved  automatically  toward  the  cylinder  in 
operation  so  as  to  continue  to  press  the  clay 
against  it   as  the  successive  portions  are   cut 


away  by  the  cutting-bars.  Held,  not  antici- 
pated by  the  prior  art,  valid,  and  infringed  as 
to  claim  6.  d  C.  &  A.  Potts  &  Co.  v.  Creager 
et  al.,  C.  D.  1900,  90  O.  G.  2134. 

32.  Claim  1  of  Letters  Patent  No.  384,893, 
granted  to  James  C.  Cutcheon,  June  19,  1888, 
for  improvements  in  machines  for  beating  out 
the  soles  of  boots  and  shoes,  construed  to  be 
conlincd  to  that  portion  of  the  mechanism 
which  lies  between  the  actuating-jacks  and  the 
crank-shaft,  and  infringement  of  the  claim  is 
not  avoided  by  the  substitution  of  mechanism 
different  from  that  described  in  claim  4  be- 
tween the  crank-shaft  and  the  source  of 
power,  d  Brcsnahan  et  al.  v.  Tripp  Giant 
Leveller  Company,  C.  D.  1900,  92  O.  G.  2508. 


INOPERATIVENESS. 

1.  Where  a  device  as  illustrated  is  inoper- 
ative and  it  is  obvious  that  the  defects  in  the 
illustration  are  such  as  could  only  have  oc- 
curred through  a  clerical  error  in  making  the 
drawing.  Held,  that  the  drawing  may  be 
amended  to  cure  the  defects.  (Citing  ex 
parte  Snyder,  C.  D.  1882,  22,  22  O.  G.  197.').) 
Ex  parte  Bailey,  C.  D.  1808,  82  O.  G.  894. 

2.  An  examiner  in  making  the  objection  of 
inoperativeness  should  point  out  the  particu- 
lars in  respect  to  which  the  device  objected 
to  is  inoperative,  if  there  be  any  such.  Ex 
parte  Isenhart,  C.  D.  1890,  87  O.  G.  179. 

3.  There  is  a  great  difference  between  in- 
operativeness and  imperfection.  It  is  well 
known  that  many  inventions  were  extremely 
crude  in  their  inception,  and  it  is  not  always 
easy  to  recognize  the  original  conception  in 
the  perfected  device.  *Fowler  v.  Dodge,  C. 
D.   1899,  87  O.  G.  89.';. 

4.  As  it  is  not  usual  for  courts  to  disturb 
the  conclusions  of  the  patent  office  on  such  a 
question  as  the  operativeness  of  a  device  as 
shown  and  described  by  an  application  for  pat- 
ent without  very  cogent  proof  of  error,  and 
there  being  no  such  proof  in  this  case.  Held, 
that  the  decision  of  the  patent  office  that  the 
Dodge  application  describes  an  operative  de- 
vice should  be  affirmed.     *Id. 

5.  Where  a  machine  turned  out  satisfactory 
work,  but  it  was  not  commercially  successful, 
for  the  reason  that  it  did  not  turn  out  the 
work  with  desirable  rapidity.  Held,  that  such 
device  was  not  so  inoperative  as  to  be  deficient 
in  patentability.  *Bechman  v.  Wood,  C.  D. 
1899,  89  O.  G.  2459. 


INOPERATIVENESS. 


J61 


6.  A  party  whose  claim  stands  rejected  on 
the  ground  that  his  device  is  inoperative  is 
not  entitled  to  an  interference  with  a  patent 
making  the  same  claim.  Ex  parte  Reagan, 
C.  D.  190a,  98  O.  G.  1038. 

7.  If  a  device  is  inoperative,  it  is  because 
of  some  defect  in  principle  or  mechanical  con- 
struction and  not  because  similar  devices  have 
not  been  made  operative,  and  the  examiner 
should  point  out  the  real  reasons  why  he  re- 
gards the  device  as  inoperative.  Ex  parte 
Gibon,  C.  D.  1902,  99  O.  G.  227. 

8.  As  a  matter  of  practice  this  office  should 
not  arbitrarily  place  upon  the  applicant  the 
burden  of  proving  that  the  device  is  operative 
without  stating  the  reasons  why  it  is  regarded 
as  inoperative,  since  the  objection  of  inoper- 
ativeness is  not  a  welcome  one  and  should  not 
be  made  dogmatically.     Id. 

9.  Where  an  examiner  rejects  claims  for 
an  aeroplane  on  the  ground  of  inoperativeness 
upon  the  allegation  that  there  is  no  instance 
in  the  history  of  the  art  of  a  successful  ascent 
and  prolonged  flight  without  the  aid  of  a  gas- 
tield.  Held,  that  he  has  not  complied  with  the 
rule  which  requires  him  to  state  his  reasons 
for  rejection.     Id. 

10.  This  office  was  created  and  exists  for 
the  sole  purpose  of  encouraging  inventors  to 
furnish  means  to  accomplish  results  which 
have  not  before  been  accomplished,  and  there- 
fore it  cannot  consistently  refuse  a  patent 
upon  the  sole  ground  that  no  one  has  here- 
tofore succeeded  in  accomplishing  the  result 
had  in  view.     Id. 

11.  The  mere  filing  of  an  application  in  this 
office  cannot  be  accepted  as  proof  that  the 
invention  disclosed  therein  is  operative,  for 
to  so  hold  would  mean  that  no  case  could  be 
rejected  on  the  ground  of  inoperativeness.  Ex 
parte  Brisbane,  C.  D.  1903,  107  O.  G.  1097. 

12.  When  the  disclosure  of  the  invention 
is  clear  and  complete,  but  the  examiner  takes 
the  position  that  the  invention  is  not  opera- 
tive as  stated.  Held,  that  a  model  should  not 
be  required  to  demonstrate  the  operativeness 
of  the  invention,  but  the  claim  should  be  re- 
jected. (Ex  parte  Stocker,  C.  D.  1902,  .53,  98 
O.  G.  170.5.)  Ex  parte  Beath,  C.  D.  1904,  111 
O.  G.  2220. 

13.  Where  claim  is  made  to  a  perpetual- 
motion  machine,  Held,  that  the  examiner  may 
properly  reject  the  claim  on  the  ground  of 
inoperativeness  without  making  a  search 
through  and  citing  the  prior  art.  Ex  parte 
Payne,  C.  D.  1904,  108  O.  G.  1049. 

11 


14.  As  an  ordinary  rule  all  reasons  for  re- 
jection should  be  given;  but  an  exception  may 
be  made  properly  where  the  alleged  invention 
is  based  on  principles  in  direct  conflict  with 
the  fundamental  laws  of  science  and  mechan- 
ics.    Id. 

15.  The  objection  of  inoperativeness  on  the 
ground  that  the  machine  is  a  perpetual-motion 
machine  does  not  stand  upon  the  same  footing 
as  an  objection  of  inoperativeness  based  upon 
some  mechanical  defect  in  the  device.     Id. 

16.  The  presumption  that  an  application  de- 
scribes an  operative  machine  is  in  favor  of 
the  applicant,  and  this  presumption  can  only 
be  overcome  by  evidence  which  clearly  shows 
that  the  alleged  defects  are  present  in  prac- 
tice. Mere  theoretical  defects  which  do  not 
make  it  certainly  appear  that  the  device  is 
inoperative  are  not  sufficient  to  overcome  the 
presumption  of  operativeness.  Bowditch  v. 
Todd,  C.  D.  1904,  112  O.  G.  1477. 

17.  The  examiner  is  not  bound  to  accept 
the  conclusions  stated  in  affidavits  filed  to 
overcome  a  rejection  on  the  ground  of  inop- 
erativeness, nor  is  he  compelled  to  cite  ref- 
erences and  authorities,  and  his  judgment  will 
not  be  controlled  on  interlocutory  petition. 
Ex  parte  Davidson,  C.  D.  1906,  120  O.  G.  2753. 

18.  Where  claims  are  rejected  on  the  ground 
of  inoperativeness,  the  applicant's  remedy  is 
by  appeal  to  the  examiners-in-chief  and  not  by 
petition.  Ex  parte  Davidson,  C.  D.  1906,  120 
O.  G.  2753. 

19.  An  applicant  will  not  be  deprived  of  the 
benefit  of  a  prior  application  as  a  construc- 
tive reduction  to  practice  on  the  ground  that 
a  device  made  in  accordance  with  such  appli- 
cation would  be  inoperative  where  the  defect 
is  clearly  one  that  could  be  obviated  by  any 
mechanic.  Howell  v.  Hess,  C.  D.  1906,  122 
O.  G.  2393. 

20.  It  must  appear  from  the  showing  ac- 
companying a  motion  to  take  testimony  on 
the  question  of  operativeness  that  the  mov- 
ing party  is  acting  in  good  faith  and  that  the 
matters  alleged  in  support  of  the  motion  are 
such  as  to  justify  the  setting  of  times  for 
taking  testimony.  Clement  v.  Browne  v. 
Stroud,  C.  D.  1907,  126  O.  G.  2589. 

21.  Motions  to  take  testimony  on  the  ques- 
tion of  the  operativeness  of  an  opposing 
party's  device  will  generally  be  disposed  of  on 
the  showing  made  by  the  moving  party,  and 
when  the  moving  party  files  affidavits  in  sup- 
port of  his  motion  the  office  will  hear  the 
opposing  party  on  the  sufficiency  of  the  show- 


162 


INJUNCTION— INTERFERENCE. 


ing ;  but  counter  affidavits  should  not  be  ad- 
mitted.    Id. 

22.  Where  the  specification  of  an  applica- 
tion clearly  describes  the  device  sought  to  be 
patented  and  the  examiner  is  of  the  opinion 
that  the  device  disclosed  is  inoperative,  he 
should  not  refuse  action  on  the  merits  until 
its  inoperativeness  is  demonstrated,  but  he 
should  reject  the  claims  on  the  ground  that 
they  cover  an  inoperative  device  and  on  all 
other  grounds  set  forth  in  Rule  133  which 
may  be  applicable.  Ex  parte  V'iniello,  C.  D. 
1909,  144  O.  G.  276. 


INJUNCTION. 

1.  The  question  whether  a  plaintiff  is  enti- 
tled to  a  temporary  injunction  pendente  lite 
upon  affidavits  and  immediately  upon  the  fil- 
ing of  a  bill  before  answer  filed  or  proofs 
taken  must  be  determined  by  the  circum- 
stances of  the  particular  case.  **Mast,  Foos 
&  Company  v.  Stover  Manufacturing  Com- 
pany, C.  D.  1900,  91  O.  G.  1239. 

2.  The  decision  of  a  lower  court  upon  an 
application  for  a  preliminary  injunction 
against  infringement  will  not  be  reversed  on 
appeal  unless  it  appear  after  a  consideration 
of  all  the  evidence  upon  which  its  action  was 
based  that  its  legal  discretion  was  improvi- 
dently  exercised,  d  Pacific  Steam  Whaling 
Company  ef  al.  v.  Alaska  Packers'  Associa- 
tion, C.  D.  1900,  91  O.  G.  1803. 

3.  Where  the  patent  was  recently  granted 
and  was  involved  in  litigation  to  determine 
its  validity,  Held,  that  the  fact  that  the  pat- 
entee has  not  made  and  sold  the  invention  of 
his  patent  does  not  deprive  a  court  of  equity 
of  jurisdiction  to  enjoin  infringement, 
rf  Crown  Cork  &  Seal  Co.  of  Baltimore  City 
V.  Aluminum  Stopper  Co.  of  Baltimore  City, 
et  al,  C.  D.  1901,  96  O.  G.  2573. 

4.  Since  it  appears  that  the  complainant  ac- 
quired from  the  owners  of  the  patents  the  ex- 
clusive right  to  deal  in  phonographs  in  this 
district.  Held,  that  an  injunction  pendente 
lite  was  properly  granted  restraining  the  de- 
fendants from  dealing  in  phonograph  supplies. 
•Whitson  et  al.  v.  The  Columbia  Phono- 
graph Company,  C.  D.  1902,  98  O.  G.  418. 

5.  On  a  motion  for  a  preliminary  injunction 
the  court  cannot  dismiss  the  bill  unless  the 
merits  of  the  case  were  fully  before  the  court. 
(Mast,  Foos  &  Co.  v.  Stover  Co.,  C.  D.  1900, 


28.5,  91  O.  G.  1239,  177  U.  S.  485,  distinguished.) 
*•  Brill  et  al.  v.  Peckham  Motor  Truck  and 
Wheel  Company  et  al.,  C.  D.  1903,  103  O.  G. 
1915. 

8.  On  a  motion  for  a  preliminary  injunction 
the  bill  may  be  dismissed  where  there  is  no 
dispute  upon  the  facts  and  there  appears  to 
be  no  reasonable  possibility  that  complainant 
may  succeed.    **Id. 

7.  Where  on  a  motion  for  a  preliminary  in- 
junction the  defendants  on  the  day  of  the 
hearing  filed  affidavits  which  the  complainant 
apparently  had  no  opportunity  to  inspect  be- 
fore argument.  Held,  that  the  court  cannot  in 
view  of  those  affidavits  dismiss  the  bill  as 
well  as  refuse  the  preliminary  injunction. 
**Id. 

8.  The  complainants  in  the  case  are  enti- 
tled to  their  day  in  court  and  should  be  per- 
mitted to  meet  and  explain  affidavits  and  other 
evidence  presented  by  the  defendants.     **Id. 

9.  The  non-use  of  a  patented  invention  by 
the  owner  of  the  patent  occasioned  by  a  desire 
to  save  the  expense  incident  to  changing  from 
an  old  type  of  machine  to  the  patented  device 
is  not  so  unreasonable  as  to  warrant  a  court 
in  refusing  injunctive  relief  during  the  latter 
part  of  the  term  of  the  patent,  there  being  no 
question  of  a  diminished  supply  of  the  pro- 
duct of  such  machine  or  of  an  increase  of 
prices.  "Continental  Paper  Bag  Company  v. 
Eastern  Paper  Bag  Company,  C.  D.  1908,  136 
O.  G.  1297. 

10.  A  decree  enjoining  infringement  of  a 
patent  may  properly  provide  that  it  shall  not 
apply  to  a  sale  by  defendant  of  articles  made 
by  the  defendant  in  another  suit  brought  by 
complainant  in  another  circuit  in  which  the 
patent  was  adjudged  void;  but  the  proviso 
will  not  be  extended  to  cover  other  articles 
made  in  the  latter  circuit  where  the  question 
of  such  right  is  not  directly  involved  under 
the  evidence.  Diamond  Rubber  Co.  of  New 
York  V.  Consolidated  Rubber  Tire  Co.  and 
Rubber  Tire  Wheel  Co.,  C.  D.  1911,  166  O.  G. 
2.^1. 


INTERFERENCE. 

I.  In  General. 

II.  Access  to  and  Production  of  Papers 
IN  Patent  Office. 

(a)  In  General. 

(b)  Part    only    of    Application    In- 

volved. 


INTERFERENCE. 


163 


III.  Amending  Application. 

(a)  In  General. 

(b)  Adding  Claims  to  Issue. 

(c)  After    Termination   of   Interfer- 

ence. 

IV.  AppKal. 

(a)  In  General. 

(b)  Petition    to    Commissioner. 

(c)  Supervisory  Authority  of  Com- 

missioner. 

(d)  Primary  Examiner  or  Examin- 

er of  Interferenees  to  Exam- 
iners-in-Chief. 

(e)  Examiners-in-Chief    to    Commis- 

sioner. 

(f)  Commissioner    to    Secretary    of 

the  Interior. 

(g)  Commissioner  to   Court   of  Ap- 

peals. 
(h)  Limit  for. 

1.  In   General. 

2.  Expired. 

3.  Extending. 
V.  Assir.NEEs. 

VI.  Addition  of  Parties. 
VII.  Burden  oi"  Proof. 

(a)  In  General. 

(b)  Patentee  v.  Applicant. 

(c)  Earlier    Application    or    Patent 

Disclosing  Issue. 

(d)  Shifting. 

(e)  On  Parly  Last  to  File. 

(f)  On  Party  Last  to  Claim. 

VIII.  Chancing  Scope  of  Application  to  Ob- 
tain Interference. 
IX.  Caveat. 

X.  Conception  of  Invention. 
XI.  Consolidation  of  Interferences. 
XII.  Companion  Interferences. 

XIII.  Copying  Claims  of  Opponent. 

XIV.  Declaration  of. 

(a)  In  General. 

(b)  Suggesting  Claims. 

(c)  Irregularity. 

(d)  Application  and  Patent. 

(e)  Party  Already  in  Interference. 

(f)  Putting    Case    in    Condition    for 

Interference. 

(g)  Claims;    Subject    Matter    .Must 

Conflict. 
(h)   Claims;  Genus  and  Species. 
XV.  Disclaimer,  Concession,  Etc. 
XVI.  Dissolution. 

(a)  In  General. 

(b)  Appeal. 

1.  In  General. 


2.  Supervisory    Authority    of 

Commissioner. 

3.  Favorable       Decision       on 

Merits. 

4.  No  Right  to  Make  Claims. 

5.  Irregularity  in  Declaration. 

6.  Non-Interfcrcnce   in   Fact. 

7.  Non-Patentability  of  Issue. 

(c)  Appeal  Lies. 

1.  In  General. 

2.  Supervisory    Authority    of 

Commissioner. 
:j.  No  Right  to  Make  Claims. 

(d)  No   Appeal   Lies. 

1.  In  General. 

2.  Supervisory     Authority    of 

Commissioner. 

3.  Favorable       Decision       on 

Merits. 

4.  Irregularity   in    Declaration. 

(e)  Time  Allowable  for  Piling  Mo- 

tions. 

(f)  Transmittal   of   Motion    to   Pri- 

mary Examiner. 

1.  In  General. 

2.  Transmitted. 

3.  Not  Transmitted. 

(g)  .Motion  Delayed. 

1.  In  General. 

2.  Delay  Excused. 

3.  Delay  not  Excused, 
(h)  Dcfiniteness  of  Motion. 

1.  In  General. 

2.  Sufficiently   Definite. 

3.  Not   Sufficiently  Definite, 
(i)  Irregularity    in    Declaration. 

1.  Dissolved. 

2.  Not  Dissolved, 
(j)  Right  to  Make  Claims. 

1.  In  General. 

2.  Dissolved. 

3.  Not  Dissolved. 

(k)  Non-interference  in  Fact. 

1.  In  General. 

2.  Dissolved. 

(1)  Non-Patentability  of  Issue. 

1.  In   General. 

2.  Dissolved. 

(m)  Applicant  t'.  Patentee. 

(n)  Claims  Identical  in  Two  Appli- 
cations. 

(o)  Ex  parte  Affidavits  and  Exhibits. 

(p)  Testimony  and  Facts  Outside 
Record. 

(q)  New  Grounds. 

(r)  Partial. 


164 


INTERFERENCE. 


(s)  Inoperativeness. 
(f)  Review  or  Rehearing. 
XVI 11.  Divisional  Applications. 
XIX.  Effkct  01-   Patent  Ofiice   Deci- 
sions IN  THE  Courts. 
XX.  Estoppel. 
XXI.  Evidence. 

(a)  /Idiiiissahilily. 

(b)  Admissions. 

(c)  Best. 

(d)  Documentary. 

1.  In  General. 

2.  Business   Entries. 

3.  Drawings,  Etc 

(e)  Exhibits. 

(f)  Presuinption. 

1.  In  General. 

2.  From    Conduct. 
XXII.  E.\  Parte  Proceedings. 

XXIII.  Interference  in  Fact. 

XXIV.  Issue. 

(a)  In  General. 

(b)  Patentability  nf. 

(c)  Bar  to  Other  Applications. 

(d)  Counts  of. 

1.  In   General. 

2.  Interpretation. 

(e)  Questionable  Disclosure. 
XXV.  Joint  anp  Sole. 

XXVI.  Judgment  on  the  Record. 
XXVII.  Jurisdiction. 
XXVIII.  Motions. 

(a)  1)1   General. 

(b)  Delay  in  Bringing. 

(c)  Notice   of. 

(d)  Piecemeal. 

XXIX.  Practice  on  Final  Hearing  and 

AiTER  Judgment. 
XXX.  Originality. 

(a)  In  General. 

(b)  Employer  and  Employee. 
XXXI.  Preliminary  Statement. 

(a)  In  General. 

(b)  Amendment   of. 

1.  In  General. 

2.  Permitted. 

3.  Not  Permitted. 

(c)  Inspection  of. 

(d)  Delay  in  Filing. 

(e)  Testimony  at  Variance. 

(f)  Extension   of  Time. 
XXXII.  Patentee. 

XXXIII.  Priority. 

(a)  In  General. 

(b)  Foreign  Patents. 


(c)  Foreign  Applications. 

(d)  Prior  Conception  and  Re- 

duction. 

(e)  Questionable  Diligence. 

1.  In  General. 

2.  In  Filing  Application. 

3.  In  Reduction  to  Prac- 

tice. 

4.  In  Prosecuting  Appli- 

cation. 

(f)  Held  Diligent. 

1.  In   General. 

2.  In  Filing  Application. 

3.  In  Reduction  to  Prac- 

tice. 

(g)  Not  Held  Diligent. 

1.  In  General. 

2.  In  Filing  Application. 

3.  In  Reduction  to  Prac- 

tice, 
(h)   Concealment. 

1.  In  General. 

2.  Rights    Lost. 

3.  Rights  Not  Lost. 

(i)   Prior  Inventor  Not  Party. 
(j )  As  to  Different  Counts. 
(k)  Disclosure  in  Prior  Appli- 
cation or  Patent. 
(I)   Concession. 
(m)  Ancillary   Questions. 
(n)  Appeal. 
XXXIV.  Redeclaration. 
XXXV.  Reduction  to  Practice. 

(a)  In  General. 

(b)  Actual. 

1.  In   General. 

2.  Held  a  Reduction. 

3.  Not  Held  a  Reduction. 

(c)  Constructive. 

(d)  Abandoned     and     Unsuc- 

cessful Experiment. 

1.  Held   Abandoned   Ex- 

periment. 

2.  Not    Held   Abandoned 

Experiment. 

(e)  Model. 

(f)  Tests. 

1.  In  General. 

2.  Necessary. 

3.  Not  Necessary. 

(g)  Accidental  Production. 
(h)   Process,  Product,  Compo- 
sition of  Matter,  Etc. 

(i)  In    Foreign    Country. 
(j)  Drawings  and  Sketches. 
XXXVI.  Rehearing. 


INTERFERENCE.  I. 


165 


XXXVII 

XXXVIII. 
XXXIX. 


XL. 

xu. 

XLII. 

XLIII. 
XLIV. 


XLV. 


XLVI. 
XLVII. 

XLVIII. 


XLIX. 

L. 


Reinstatement  or  Reopening. 

(a)  In  General. 

(b)  To  Take  More  Testimony. 

(c)  Neivly     Discovered     Evi- 

dence. 
Reopened  to  Take   More   Testi- 

MORY. 

Not  Reopened. 

(a)  In  General. 

(b)  To  Take  More  Testimony. 

(c)  Newly     Discovered     Evi- 

dence. 
Reissue  Application. 
Renewal  Application. 
Second     Application     on     Same 

Subject. 
Second  Interference. 
Statutory   Bars. 

(a)  In  General. 

(b)  Public  Use. 
Suspension. 

(a)  In  General. 

(b)  For  Adding  New  Parties. 

(c)  New  References. 

Suggestions  to  Commissioner. 

Remanding  to  Primary  Exam- 
iner. 

Suspending  Action  on  Other  Ap- 
plications During  Interfer- 
ence. 

Stipulations  and  Waivers. 

Testimony. 

(a)  /)!  General. 

(b)  Admissability    of    Record 

in  Other  Cases. 

(c)  Relevancy. 

(d)  Admissability. 

(e)  Correction  of. 

(f)  Corroborative. 

(g)  Confiicling. 

(h)   Compelency   or   Weight. 

(i)  Delay  or  failure  to   Take. 

(j)  Extension  of  Time. 

(k)  Expert. 

(1)  Leading   Questions. 

(m)  Notice  of  Taking. 

(n)  Operativeness. 

(o)   Perpetuation   of. 

(p)   Printing. 

(q)   Rebuttal. 

(r)   Retaking. 

(s)  Suppression     or     Striking 

Out. 
(t)  Surprise. 
(u)  Surrebultal. 


(v)   Taken  Abroad. 
(w)   Of  Applicant. 
LI.  Vacating  Judgment. 
LII.  Witnesses. 

(a)  Cross  Examination. 

(b)  Compelling   Attendance. 

(c)  Compelling   Testimony. 

(d)  Credibility  of. 

(e)  Failure  to  Call. 

(f)  Wife  of  Party. 

(g)  Refreshing     Memory     by 

Documents. 

I.  In  General. 

—  1.  Where  claims  presented  by  amendment 
interfere  with  claims  made  in  another  pending 
case  and  they  are  required  to  be  supported 
by  a  supplemental  oath,  but  the  inventor  be- 
cause of  his  hostility  to  the  assignee  refuses 
to  execute  the  oath,  Held,  that  the  interfer- 
ence may  be  declared,  leaving  the  require- 
ment for  the  oath  to  be  subsequently  settled. 
Ex  parte  Richards,  C.  D.  1901,  9.-)  O.  G.  18.53. 

2.  Where  the  examiner  has  rejected  certain 
claims,  but  subsequently  declares  an  interfer- 
ence as  to  them.  Held,  that  this  amounts  to 
an  allowance  of  them,  although  no  formal 
notice  to  that  effect  was  sent.  Luger  v. 
Browning,  C.  D.  1902,  100  O.  G.  231. 

3.  Where  it  is  apparent  at  the  outset  that  no 
patent  can  issue  on  the  application,  it  will  not 
be  placed  in  interference,  since  a  party  is  not 
entitled  to  an  interference  except  as  to  an 
allowable  application.  In  re  Crane,  C.  D.  1903, 
IOC  O.  G.  999. 

4.  Delays  in  the  prosecution  of  an  inter- 
ference will  not  be  permitted  as  a  matter  of 
course  merely  because  the  parties  file  stipula- 
tions for  extensions  of  time.  A  showing  of 
good  reasons  for  the  delays  must  be  made. 
Sponsel  V.  Darling,  C.  D.  1903,  10,'-.  O.  G.  498. 

5.  Where  the  same  claim  is  made  by  differ- 
ent parties  to  inventions  in  the  same  art,  the 
office  must  either  reject  one  of  the  claims  or 
conduct  an  interference  to  determine  which 
party  was  the  first  inventor.  Elspass  v.  Tay- 
lor, C.  D.  1905,  117  O.  G.  1798. 

6.  If  it  becomes  apparent  during  the  course 
of  an  interference  that  its  further  prosecu- 
tion would  be  useless,  the  proper  proceeding 
is  a  motion  for  dissolution.  *Lattig  and  Good- 
rum  V.  Dean,  C.  D.  1905,  117  O.  G.  1798. 

7-  Held,  that  an  interference  is  not  pending 
within  the  meaning  of  Rule  128  prior  to  the 
opening  and  approval  of  the  preliminary  state- 


166 


INTERFERENCE,  II,   (a). 


ments.     Belirend  v.  Lamme  v.  Tingley,  C.  D. 
I90(i,  124  O.  G.  2."i.if,. 

8.  Wlicre  the  claims  of  a  patent  arc  nar- 
rower than  the  real  invention,  the  error  or 
mistake  cannot  be  corrected  by  inserting  the 
broader  claims  in  a  subsequent  patent  for  im- 
provements on  the  first,  but  only  by  a  reissue. 
d  Union  Typewriter  Co.  v.  L.  C.  Smith  & 
Bros.  Typewriter  Co.,  C.  D.  1911,  102  O.  G. 
271. 

II.  AccFss  TO  ANn  PRoni'CTioN  or  P.^rKRS  ix 
Pati-nt  Ori-iCK. 

(a)  /»  General. 

"^ —  9.  The  abandont'd  application  of  Hill  hav- 
ing been  spccilically  mentioned  by  him  in  a 
motion  to  shift  the  burden  of  proof,  which 
motion  was  decided,  is  a  part  of  the  record 
and  necessarily  open  to  his  opponent's  in- 
spection. McGuire  v.  Hill,  C.  D.  1898,  84  O. 
G.  98."!. 

-10.  Where  in  an  application  involved  in  an 

interference  there  is  a  statement  that  it  is  a 
division  of  a  prior  application,  and  by  reason 
of  the  prior  application  the  applicant  is  made 
the  senior  party  and  his  preliminary  statement 
refers  to  such  prior  application  and  it  appears 
tliat  he  intends  to  rely  upon  it  to  cstablisli  his 
claim  to  priority.  Held,  that  an  opposing  party 
is  entitled,  under  Rule  108,  to  see  and  obtain 
copies  of  the  original  application.  (In  re 
Swihart,  ante,  10,  90  O.  G.  601,  cited.)  In  re 
Gillespie,  C.  D.  1900,  92  O.  G.  2159. 

11.  R.  is  entitled  to  see  and  obtain  copies 
of  an  application  referred  to  by  B.  in  a  mo- 
tion to  shift  the  burden  of  proof;  but  B. 
is  not  required  to  serve  copies  upon  him,  since 
it  is  not  the  practice  of  the  office  to  require  a 
party  to  serve  upon  his  opponent  copies  of  all 
office  records  referred  to  in  a  motion  made  by 
him.  Bundy  v.  Rumbarger,  C.  D.  1900,  92 
O.  G.  2001. 

12.  Since  there  is  no  provision  in  the  rules 
whereby  the  examiner  of  interferences  is  em- 
powered to  dismiss  an  interference.  Held,  that 
he  properly  refused  to  dismiss  an  interference 
on  the  ground  that  the  question  of  priority 
is  res  adjudicata.  Cammett  v.  Hallett,  C.  D. 
1900,  93  O.  G.  939. 

13.  Where  it  appears  that  there  was  an  in- 
terference between  two  applications  and  after 
judgment  of  priority  had  been  finally  render- 
ed one  of  the  applications  became  a  patent 
and  the  other  application  became  abandoned. 


Held,  that  the  patentee  has  no  right  to  have 
access  to  the  abandoned  application  merely 
because  he  previously  had  the  right  of  inspec- 
tion of  the  application  when  it  was  involved 
in  the  interference.  Ex  parte  Warner,  C.  D. 
1901,  96  O.  G.  1238. 

14.  Applications  are  placed  in  interference 
by  the  office  without  consulting  the  appli- 
cants, and  disclosures  are  made  to  the  inter- 
fering applicants  during  the  interference  as 
a  matter  of  necessity.  After  the  proceeding 
is  ended  the  necessity  for  the  disclosure  is 
ended.  The  fact  that  a  party  has  enjoyed  a 
privilege  temporarily  through  necessity  does 
not  entitle  him  to  that  privilege  indefinitely 
against  the  protest  of  the  other  party.    Id. 

15.  The  junior  party  to  an  interference  is 
clearly  entitled  to  have  access  to  an  earlier 
application  of  the  senior  party  when  the  senior 
party's  application  involved  in  the  interfer- 
ence is  alleged  to  be  a  division  of  said  earlier 
application.  (Citing  In  re  Swihart,  C.  D. 
1900,  10,  90  O.  G.  601.)  Dittgen  v.  Parmenter, 
C.  D.  1902,  98  O.  G.  1707. 

—  16.  Affidavits  filed  by  a  party  under  Rule 
7."i  carrying  his  date  of  invention  Ijack.nf^  ref- 
erences cited  should  be  sealed  up  or  removed 
?rom  thp  file  before  the  papers  in  the  case  are 
thrown  open  to  the  inspection  of  opposing 
parties  in  an  interference.  Davis  v.  Ocum- 
paugh  V.  Garrett,  C.  D.  1903,  103  O.  G.  1679. 

17.  A  party  to  an  interference  is  entitled  to 
see  everything  in  his  opponent's  record  re- 
lating to  the  invention  in  issue,  and  this  in- 
cludes testimony  taken  in  public-use  proceed- 
ings. The  bar  of  public  use  stands  upon  the 
same  footing  as  would  anticipation  in  refer- 
ences. Mills  V.  Torrance,  C.  D.  1903,  100  O. 
G.  -.44. 

18.  Where  a  party  in  interference  testifying 
in  his  own  behalf  refers  to  his  earlier  appli- 
cation not  in  interference  and  its  subject- 
matter.  Held,  that  the  petition  of  his  oppo- 
nent to  inspect  said  application  will  be  grant- 
ed. In  re  Patterson,  C.  D.  1904,  109  O.  G. 
1070. 

19.  A  party  in  interference  cannot  by  re- 
ferring to  his  application  not  in  interference 
take  advantage  of  allegations  of  fact  and  at 
the  same  time  invoke  the  rule  of  secrecy  to 
deprive  his  opponent  of  the  means  of  contro- 
verting those  facts  or  discrediting  him.     Id. 

'"  20.  Where  a  party  in  interference  refers 
to  his  application  not  in  interference  to  estab- 
lish allegations  of  fact,  the  right  of  his  oppo- 
nent to  inspect  this  application  exists  without 


INTERFERENCE,  II,  (a). 


167 


regard  to  any  supposed  identity  of  its  subject 
and  that  of  the  case  in  interference.  Id. 
~~  21.  The  fact  that  a  contestant  in  an  inter- 
ference mentions  in  his  preliminary  statement 
an  earher  application  of  his  as  disclosing  the 
invention  in  issue  shows  that  he  hopes  to  ob- 
tain certain  advantages  from  it  as  evidence, 
and  therefore,  Held,  that  the  other  party 
should  be  permitted  to  inspect  it.  Claassen  v. 
Steffen,  C.  D.  1904,  113  O.  G.  2507. 

22.  Where  it  is  established  that  a  contestant 
in  interference  has  a  right  to  inspect  an  earlier 
application  of  his  opponent's,  Held,  that  he  has 
a  right  to  obtain  copies  of  such  application. 
Id. 

23.  Held,  that  the  commissioner  of  patents 
was  right  in  refusing  to  permit  Davis  to  in- 
spect and  obtain  copies  of  affidavits  filed  by 
Garrett  in  support  of  his  application  and  re- 
lating to  claims  not  involved  in  the  interfer- 
ence declared  between  Davis  and  Garrett. 
iDavis  v.  Garrett,  C.  D.  1904,  112  O.  G.  1211. 

24.  The  commissioner  of  patents  is  not 
bound  to  submit  for  either  public  or  private 
inspection  any  papers  filed  in  his  office  in  sup- 
port of  applications  for  patents,    fid. 

25.  No  good  reason  appears  why  a  party 
to  an  interference  proceeding  should  be  per- 
m.itted  to  examine  papers  relating  to  claims 
not  involved  in  the  interference,  even  though 
the  party  in  whose  interest  the  papers  were 
filed  happens  to  be  a  party  to  such  proceed- 
ing,    fid. 

26.  Where  after  declaration  of  interference 
the  attorney  appointed  by  the  inventor  died 
and  assignee  of  entire  interest  appointed  at- 
torneys to  prosecute  the  case,  Held,  that  the 
contentions  that  such  attorneys  wero  not  en-~ 
titled  to  irfspect  the  papers  of  the  other  party 
and  that  such  inspection  violated  the  rule  of 
secrecy  were  without  foundation.  Cazin  v. 
Von  Welsbach,  C.  D.  1905,  119  O.  G.  050. 

27.  Where  an  applicant  involved  in  an  in- 
terference had  previously  filed  an  affidavit 
under  Rule  75  for  the  purpose  of  antedating 
certain  references  cited  against  claims  not  in- 
cluded in  the  interference  issue  and  where 
there  is  nothing  in  the  record  tending  to  show 
any  connection  between  said  affidavit  and  the 
interference  issue.  Held,  that  the  decision  of 
the  commissioner  of  patents  refusing  to  per- 
mit the  other  party  to  the  interference  to  in- 
spect the  affidavit  was  of  an  interlocutory  na- 
ture and  not  the  subject  of  review.  (West- 
inghouse  v.  Duncan,  C.  D.  1894,  170,  66  O.  G. 
1009,  2  App.  D.  C.  131 ;   In  re  Mill,  11  App. 


D.  C.  584,  588;  In  re  Frasch,  C.  D.  1902,  560, 
100  O.  G.  1977,  20  App.  D.  C.  298,  301,  192  U. 
S.  566.)  *Davis  v.  Garrett,  C.  D.  1906,  123 
O.  G.  1991. 

28.  The  grant  or  denial  of  a  request  for 
permission  to  inspect  an  affidavit  filed  under 
Rule  75  by  the  opposing  party  in  an  inter- 
ference rests  within  the  discretion  of  the 
commissioner  of  patents  and  will  not  be  dis- 
turbed unless  clearly  shown  to  have  worked 
a  material  injury  to  the  applicant.  The  mere 
possibility  that  such  an  affidavit  might  contain 
some  contradiction  of  the  testimony  given  in 
the  interference  held,  insufficient  to  warrant  a 
review  of  the  decision  of  the  commissioner 
of  patents.     *Id. 

29.  Where  in  an  interference  proceeding 
one  of  the  parties  admits  on  cross-examina- 
tion that  an  application  has  been  filed  on  the 
matter  disclosed  in  certain  blue-prints  offered 
in  evidence,  but  the  application  is  not  intro- 
duced in  evidence  and  is  not  relied  upon  for 
any  purpose  whatever,  Held,  that  a  request  by 
the  other  party  to  the  proceeding  for  access  to 
said  application  should  be  denied.  Lindstrom 
V.  Lipschultz,   C.   D.   190G,   121   O.  G.   1977. 

30.  Where  Thomas's  application  involved 
in  the  interference  was  filed  October  19,  1904, 
and  contained  a  statement  to  the  effect  that  it 
was  a  division  of  an  application  filed  Decem- 
ber 24,  1903,  and  Steinmetz  in  his  preliminary 
statement  alleged  conception  of  the  invention 
during  the  period  between  December  15,  1903, 
and  April  2,  1904,  Held,  that  Steinmetz  should 
be  given  access  to  Thomas's  earlier  applica- 
tion. Steinmetz  v.  Thomas,  C.  D.  1906,  125 
O.  G.  1351. 

"-  31.  Where  the  joint  applicants  H.,  G.,  and 
F.  filed  a  concession  in  favor  of  the  sole  ap- 
plicant H.  and  judgment  was  thereupon  enter- 
ed against  the  joint  applicants,  Held,  that  the 
application  of  H.,  G.,  and  F.  is  no  longer 
involved  in  the  interference  proceeding,  and 
the  fact  that  it  was  formerly  so  involved  is 
no  reason  for  permitting  D.,  another  party  to 
said  interference,  to  obtain  a  copy  of  it  at 
this  time.  Herr  v.  Herr,  Groves,  and  Foreman 
V.  Dodds,  C.  D.  1907,  126  O.  G.  758. 

32.  Where  it  appears  that  the  inventor  has 
entered  the  employment  of  a  company  which 
is  the  assignee  of  his  opponent  in  an  inter- 
ference proceeding,  the  exclusive  licensee  of 
said  inventor  will,  upon  request,  be  furnished 
with  copies  of  all  notices  in  the  interference 
and  papers  accompanying  the  same,  including 
the    preliminary    statements,    when    approved, 


168 


INTERFERENCE,  II,  (b). 


and  the  notices  for  taking  testimony,  and  will 
also  be  permitted  to  be  present  at  all  proceed- 
ings in  tile  interference.  In  re  The  National 
Railways  Materials  Co.,  C.  D.  1907,  129  O. 
G.  481. 

33.  The  patent  office  will  not,  upon  the  re- 
quest of  the  defeated  party  of  an  interference 
proceeding,  furnish  copies  of  an  affidavit  filed 
ex  parte  by  his  opponent  under  Rule  75  to 
overcome  a  reference  against  claims  not  in- 
volved in  the  interference  merely  upon  a 
showing  that  petitioner  has  brought  a  suit  in 
equity  under  section  4915,  Revised  Statutes, 
to  determine  priority  of  invention  and  de- 
sires a  copy  of  such  affidavit  for  use  in  such 
suit.  Under  such  circumstances  a  copy  will 
be  furnished  only  upon  a  certificate  of  the 
court  that  such  affidavit  would  constitute  ma- 
terial and  proper  evidence  in  such  suit.  In 
re  U.  S.  Standard  Voting  Machine  Company, 

C.  D.   1907,  130  O.  G.  I486. 

34.  Where  S.  requested  copies  of  the  deci- 
sion of  the  examiner  upon  a  motion  for  dis- 
solution in  another  interference  to  which  F. 
was  a  party  and  which  is  referred  to  in  F.'s 
record,  Held,  that  since  S.  was  not  a  party 
to  the  other  interference  and  the  claims  form- 
ing the  issue  of  that  interference  are  not  made 
by  S.  he  should  be  denied  access  to  the  record 
of  that  interference,  even  though  the  issue 
thereof  is  based  upon  the  same  structure  as 
that  upon  which  the  claims  in  the  present  in- 
terference are  drawn.     Stone  v.  Fessenden,  C. 

D.  1907,   130   O.   G.   1487. 

"~  35.  A  party  to  an  interference  is  not  enti- 
tled to  see  the  parent  application  of  a  patent 
of  the  opposing  party  referred  to  in  his  pre- 
liminary statement  when  it  does  not  appear 
that  the  opposing  party  is  relying  on  such 
parent  application  to  establish  a  date  of  con- 
structive reduction  to  practice.  Babcock  v. 
Pickard  v.  Ashton  and  Curtis,  C.  D.  1908,  137 
O.  G.  1942. 

36.  After  an  interference  is  finally  decided 
the  parties  thereto  are  not  entitled  to  further 
inspect  each  other's  application.  Ex  parte 
Sirl,  C.  D.  1909,  138  O.  G.  529. 

37.  The  fact  that  claims  have  been  rejected 
as  not  patentable  over  the  issue  of  the  inter- 
ference which  has  been  finally  decided  does 
not  entitle  an  applicant  to  obtain  a  copy  of 
the  drawing  of  his  opponent  in  the  interfer- 
ence.    Id. 

38.  Where  one  of  the  parties  to  an  inter- 
ference files  a  disclaimer  to  the  subject-matter 
thereof  and  judgment  is  rendered  against  him. 


Held,  that  permission  to  inspect  his  applica- 
tion will  not  be  granted  to  the  opposing  party 
in  such  interference.  In  re  Hick,  C.  D.  1911, 
172  O.  G.  261. 

(b)   Part  Only  of  Apflicalion  Involved. 

39.  It  was  never  intended  by  Rules  105  and 
106  that  a  party  should  be  permitted  to  con- 
ceal from  his  opponent  in  interference  any- 
thing but  a  clearly  divisible  invention  not 
claimed  by  his  oponent,  and  this  construc- 
tion is  in  harmony  with  Rule  108.  Ex  parte 
Walrath,  C.  D.  1899,  87  O.  G.  1397. 

40.  To  permit  a  party  to  disclose  to  his  op- 
ponent only  the  claim  involved  in  interfer- 
ence when  he  has  other  claims  based  upon 
the  same  indivisible  structure  upon  which 
the  interfering  claim  is  based  would  be  in  ef- 
fect to  nullify  Rule  109.     Id. 

41.  Rule  106  cannot  fairly  be  construed  to 
mean  that  an  original  application  upon  which 
a  party  relies  for  an  award  of  priority  or  for 
the  benefits  of  the  burden  of  proof  may  be 
concealed  from  his  opponent.  The  rule  means 
that  where  a  part  only  of  an  application  is 
involved  in  interference  it  may  be  divided, 
so  that  the  subject-matter  not  involved  may 
be  sent  to  patent  before  the  termination  of 
the  interference  proceedings.  It  does  not  pro- 
vide either  by  express  terms  or  by  implica- 
tion that  an  opposing  party  shall  be  denied 
access  to  an  original  application  so  divided. 
In  re  Swihart,  C.  D.  1900,  90  O.  G.  601. 

42.  If  an  original  application  is  to  be  used 
in  favor  of  a  party  in  interference  and  against 
his  opponent,  under  the  rules  of  evidence  the 
opponent  should  be  permitted  to  examine  it 
and  raise  all  the  objections  thereto  to  which 
the  rules  give  him  a  right.    Id. 

43.  Where  judgment  is  entered  against  a 
junior  party  on  the  record,  to  deprive  such 
party  of  the  right  to  see  the  papers  of  his  op- 
ponent by  virtue  of  which  that  judgment  was 
made  would  be  giving  a  judgment  against 
him  on  a  piece  of  evidence  which  he  is  de- 
nied the  right  to  see  and  of  the  character  and 
contents  of  which  he  is  ignorant,  which  would 
be  contrary  to  the  laws  of  evidence.     Id. 

44.  Where  a  party  relies  upon  a  prior  ap- 
plication, of  which  the  one  in  interference  is 
said  to  be  a  division.  Held,  that  the  opposing 
party  is  entitled  to  see  and  obtain  copies  of 
the  prior  case  unless  the  applicant  takes  ad- 
vantage of  Rule  105  and  files  certified  copies 
of  the  parts  relating  to  the  invention  in  inter- 


INTERFERENCE,  II,  (b). 


169 


ference.     Reece   v.    Fenwick,    C.    D.    1901,   96 
O.  G.  643. 

45.  .\fter  the  declaration  of  an  interference 
each  party  has  rights  with  respect  to  the 
(ilher's  application  which  he  did  not  previous- 
ly have  and  is  not  to  be  treated  as  a  stranger 
without  interest ;  but  at  the  same  time  each 
is  entitled  to  withhold  from  the  other  a  knowl- 
edge of  any  part  of  his  invention  contained 
in  the  application  which  is  not  involved  in 
or  does  not  in  any  way  relate  to  the  subject- 
matter  of  the  interference.    Id. 

46.  The  words  "part  only  of  the  invention" 
and  "part  or  parts  of  the  specification,  claims, 
and  drawings  which  cover  the  interfering  mat- 
ter" in  Rule  105  mean  everything  contained  in 
the  original  application  except  w-hat  may  re- 
late to  a  separate  and  independent  invention, 
such  as  could  be  properly  divided  therefrom 
and  sent  to  patent  before  the  termination  of 
the  interference  proceedings.     Id. 

47.  Where  a  party  furnishes  certified  copies 
of  parts  of  his  application  and  it  appears  that 
the  disclosure  therein  is  sufficient  to  enable 
his  oponent  to  intelligently  determine  all  of 
the  questions  which  he  is  entitled  to  raise  by 
motions.  Held,  that  the  copy  is  sufficient  and 
may  be  used  in  place  of  the  original.     Id. 

48.  Where  an  interference  is  declared  as  to 
a  process  and  one  of  the  parties  has  claims  to 
the  product  which  is  the  necessary  result  of 
the  process,  Held,  that  he  will  not  be  per- 
mitted to  conceal  his  product  claims  from  his 
opponent  by  filing  certified  copies  of  the 
parts  of  his  application  relating  to  the  pro- 
cess under  Rule  lo.'i.  Ex  parte  Powrie,  C. 
D.    1902,  99  O.   G.  2549. 

49.  Where  an  interference  is  declared  as  to 
a  process  and  one  of  the  parties  has  claims  to 
an  additional  step  performed  after  the  pro- 
cess as  set  forth  in  the  issue  is  completed  and 
the  opposing  party  does  not  disclose  that  step, 
Held,  that  the  additional  step  may  be  conceal- 
ed from  the  other  party  to  the  interference 
under  Rule  105.     Id. 

50.  Where  a  part  only  of  an  application  is 
involved  in  an  interference  and  the  applicant 
desires  to  use  a  certified  copy  of  the  interfer- 
ing subject-matter  in  place  of  the  original 
application,  his  opponent  is  entitled  to  see  and 
obtain  copies  of  everything  contained  in  the 
original  application,  including  the  official  ac- 
tions thereon,  except  what  may  relate  to  a 
separate  and  independent  invention,  by  which 
is  meant  such  an  invention  as  might  properly 
be  made  the  subject-matter  of  another  appli- 


cation and  sent  to  patent  before  the  termina- 
tion of  the  interference  proceedings.  It  is 
such  an  invention  as  cannot  be  affected  in 
any  way  by  the  outcome  of  the  interference. 
Fenwick  v.  Dormandy,  C.  D.  1903,  102  O.  G. 
228. 

51.  A  party  to  an  interference  is  not  enti- 
tled to  conceal  from  his  opponent  claims  re- 
lating to  the  subject-matter  of  the  claims 
in  issue  and  differing  therefrom  only  in  scope 
merely  because  it  is  alleged  that  those  claims 
are  not  patentable  to  his  opponent.  Davis  v. 
Ocumpaugb  v.  Garrett,  C.  D.  1903,  103  O.  G. 
1079. 

52.  Rule  lOj  provides  for  concealing  from 
an  opponent  a  clearly  divisible  invention ;  but 
it  does  not  provide  for  concealing  any  part 
of  the  disclosure  and  claims  relating  to  the 
indivisible  invention  in  issue.     Id. 

53.  Where  a  party  files  a  copy  of  portions 
of  his  application  fur  use  in  interference  pro- 
ceedings in  an  attempt  to  comply  with  Rule 
105,  the  question  of  the  sufficiency  of  the 
copy  is  a  matter  to  be  determined  by  the  pri- 
mary examiner  in  the  first  instance.  In  de- 
termining this  question  the  primary  examiner 
should  fix  a  day  upon  which  the  parties  may 
be  heard  and  should  render  a  decision  upon 
the  matter  in  issue.  Riker  v.  Law,  C.  D.  1900, 
120  O.   G.  2T34. 

54.  Where  a  party  contends  that  the  opera- 
tion of  the  mechanism  shown  in  the  drawing 
of  his  opponent's  application  cannot  be  un- 
derstood from  the  part  of  the  specification  in- 
cluded in  the  copies  filed  in  accordance  with 
Rule  105,  Held,  that  the  question  raised  should 
be  decided  in  the  first  instance  by  the  pri- 
mary examiner,  who  should  fix  a  day  for 
hearing  the  parties.  (Riker  v.  Law,  ante,  86, 
120  O.  G.  2754.)  Kugele  v.  Blair,  C.  D.  1906, 
125    O.   G.    1350. 

55.  Where  Fagan  files  a  certified  copy  of 
those  parts  of  his  application  which  are  sup- 
posed to  relate  to  the  subject-matter  of  the 
interference  and  a  motion  for  dissolution  is 
based  on  said  copy  denying  Pagan's  right  to 
make  the  claims,  Held,  that  it  will  be  assumed 
that  the  certified  copy  includes  everything  per- 
tinent to  the  subject-matter  in  issue.  Fagan 
v.  Graybill,  C.  D.  190G,  121  O.  G.  1013. 

56.  The  examiner  may  upon  a  motion  for 
dissolution  of  an  interference  wherein  one 
party  has  filed  a  certified  copy  determine 
whether  or  not  it  is  necessary  for  the  other 
party  to  see  other  parts  or  the  whole  of  the 
original  application.     Id. 


170 


INTERFERENCE,  III,  (a). 


57.  Where  a  rejected  claim  is  included  in  a 
certified  copy  under  Rule  lO:.,  Held,  that  all 
actions  relative  thereto  should  be  included  in 
the  copy.     Id. 

58.  Where  the  interfering  subject-matter  of 
the  application  of  one  of  the  parties  to  an  in- 
terference is  disclosed  to  the  other  by  means 
of  a  certified  copy,  as  provided  by  Rule  lO-S, 
an  auxiliary  invention  which  has  been  de- 
scribed and  claimed  by  the  former,  but  which 
might  be  omitted  without  destroying  the  oper- 
ativeness  of  the  invention  in  issue,  will  not 
be  disclosed  where  the  latter  has  presented  no 
claim  which  includes  this  invention  either 
broadly  or  specifically.  Kugele  v.  Blair,  C.  D. 
1907,  127  O.  G.  3253. 

59.  Where  a  certified  copy  of  a  part  of  an 
application  was  filed  under  Rule  10.'),  but  later 
the  entire  case  was  thrown  open  to  inspection 
by  order  of  the  commissioner.  Held,  to  ex- 
cuse delay  in  bringing  a  motion  to  amend 
under  Rule  109  as  to  claims  which  were  not 
in  certified  copy.  Bastian  v.  Champ,  C.  D. 
1907,  128  O.  G.  2837. 

60.  Where  certified  copies  are  filed  under 
Rule  10.')  and  timely  objection  is  not  made  to 
the  sufficiency  thereof,  objection  thereto  upon 
this  ground  is  considered  as  waived.  Dilg  and 
Fowler  v.  Shaver,  C.  D.  1909,  144  O.  G.  561. 

61.  Where  a  party  to  an  interference  had 
filed,  under  the  provisions  of  Rule  105,  a  cer- 
tified copy  of  such  portions  of  a  parent  appli- 
cation as  related  to  the  invention  in  issue,  but 
during  the  taking  of  testimony  introduced 
further  portions  of  such  parent  application. 
Held,  that  the  other  party  to  the  interference 
was  entitled  to  inspect  and  obtain  copies  of 
the  whole  of  such  application.  Shaver  v.  Dilg 
and  Fowler,  C.  D.  1910,  157  O.  G.  1001. 

62.  Where  a  party  to  an  interference  asks, 
under  the  provisions  of  Rule  105,  to  have  a 
certified  copy  of  that  portion  of  the  applica- 
tion relating  to  the  interfering  matter  sub- 
stituted for  the  application,  such  copy  should 
include  not  only  the  original  specification  and 
claims,  so  far  as  they  relate  to  the  invention 
in  issue,  but  also  the  actions  of  the  office  upon 
such  invention  and  the  amendatory  papers  and 
arguments  in  behalf  of  the  applicant.  Harris 
V.  Kennedy,  C.  D.  1910,  IGl  O.  G.  530. 

III.  Amending  Appltcatton. 
(a)  In  General. 

63.  There  being  no  appeal  from  the  exam- 
iner's holding  that  an  amendment  does  not  in- 


volve new  matter,  the  application  must  be  con- 
sidered in  its  amended  form  in  determining 
the  question  of  interference  in  fact  Kane  v. 
Brill  and  Adams,  C.  D.  1898,  84  O.  G.  1142. 

64.  .An  amendment  canceling  the  claims  in- 
volved in  interference,  but  unaccompanied  by 
a  disclaimer  or  abandonment  of  the  invention 
covered  by  them,  should  not  be  entered  during 
the  pendency  of  the  interference.  Curtis  v. 
Marsh,  C.  D.  1900,  92  O.  G.  1236. 

65.  Where  each  party  files  an  amendment 
canceling  the  claims  in  interference,  thus  in- 
dicating that  neither  wishes  the  interference 
to  continue.  Held,  that  under  the  rules  the 
amendments  cannot  be  entered.  (Rule  130.) 
Under  Rules  107  and  125  they  may  disclaim 
or  abandon  the  invention,  and  thus  terminate 
the  proceedings.     Id. 

66.  Where  on  a  motion  to  dissolve  the  ex- 
aminer has  held  that  a  party  has  no  right  to 
make  the  claim  and  the  limit  of  appeal  has 
expired  without  any  appeal  having  been  taken. 
Held,  that  the  party  cannot  be  permitted  to 
reopen  the  entire  question  by  merely  filing  an 
amendment  to  the  specification  laying  a  foun- 
dation for  the  claim.  Smith  v.  Carmicheal,  C. 
D.  1900,  93  O.  G.  1123. 

67.  Where  an  amendment  is  filed  after  the 
limit  of  time  specified  inserting  a  claim  sug- 
gested under  the  provisions  of  Rule  96  for 
the  purpose  of  interference  and  the  examiner 
rejects  said  claim  in  accordance  with  said 
rule,  Held,  that  the  question  involved  relates 
to  the  merits,  is  not  reviewable  by  the  com- 
missioner on  petition,  but  should  be  consid- 
ered on  appeal  in  the  first  instance  by  the  ex- 
aminers-in-chief. Ex  parte  Haug,  C.  D.  1901, 
97  O.  G.  192. 

68.  Where  a  claim  has  been  suggested  to  a 
party  under  the  provision  of  Rule  96  for  the 
purposes  of  interference  and  said  party  subse- 
quently requests  that  an  extension  of  the 
original  "time  specified"  be  granted  him  for 
the  purpose  of  filing  the  claim.  Held,  that  the 
application  being  still  with  the  examiner  and 
that  Rule  96  explicitly  provides  that  an  ex- 
tension of  the  time  specified  in  which  to  make 
a  claim  and  place  an  application  in  condition 
for  allowance  may  be  extended  as  a  proper 
showing  that  it  is  within  the  discretion  of  the 
examiner  to  so  extend  such  time  if,  in  his 
opinion,  the  showing  so  warrants,  and  this 
whether  the  request  for  the  extension  and  the 
accompanying  showing  be  filed  before  or  after 
the  expiration  of  the  limit  of  time  previously 


INTERFERENCE,  III,  (a). 


171 


specified.    Ex  parte  Curtis,  C.  D.  1901,  97  O. 
G.  189. 

69.  The  time  at  which  the  request  is  filed 
for  an  extension  may  affect  the  character  of 
the  showing  required,  but  it  does  not  affect 
the  jurisdiction  of  the  examiner  over  the  ap- 
phcation  and  his  right  to  consider  the  show- 
ing and  to  determine  whether  or  not  the  re- 
quest should  be  granted.     Id. 

70.  In  considering  the  showing  made  by  the 
party  requesting  that  an  extension  of  time  be 
granted  the  right  of  the  other  party  should 
also  be  considered  in  determining  the  ques- 
tion at  issue.     Id. 

71.  Where  during  the  progress  of  an  inter- 
ference one  party  presents  an  amendment  em- 
bodying new  claims  not  made  by  the  other 
party  and  not  decided  to  be  patentable.  Held, 
that  they  should  not  be  entered  (Rule  130) 
and  that  the  interference  should  not  be  trans- 
mitted to  the  examiner  to  consider  them.  Rob- 
inson V.  Copeland,  C.  D.  1901,  97  O.  G.  2531. 

72.  Ordinary  amendments  to  applications  in- 
volved in  an  interference  will  not  be  permit- 
ted. The  applications  constitute  the  founda- 
tion for  the  interference  proceedings  and 
should  therefore  remain  fixed  until  the  inter- 
ference is  concluded.  Annand  v.  Spalckhaver, 
C.  D.  1901,  97  O.  G.  2741. 

73.  To  permit  amendment  and  change  in  ap- 
plications before  the  primary  examiner  while 
an  interference  involving  them  is  pending  be- 
fore the  examiner  of  interferences  would  lead 
to  confusion  and  render  impossible  the  order- 
ly course  of  procedure  which  is  so  necessary 
to  the  proper  conduct  of  interference  proceed- 
ings.   Id. 

74.  Where  a  motion  is  filed  before  prelim- 
inary statements  are  approved  asking  that  an 
amendment  canceling  the  claims  of  the  inter- 
ference issue  be  entered,  Held,  that  the  motion 
was  properly  refused  transmission  to  the  pri- 
mary examiner.  Colley  v.  Copenhaver,  C.  D. 
1903,  107  O.  G.  268. 

75.  A  party  cannot  avoid  a  continuation  of 
an  interference  by  merely  canceling  the  claims 
said  to  be  involved.     Id. 

76.  Rule  130,  prohibiting  amendments  to 
cases  in  interference,  applies  as  soon  as  the 
interference  is  declared  and  before  preliminary 
statements  are  approved.  During  that  time 
the  interference  may  be  terminated  only  by 
filing  the  disclaimer  provided  for  in  Rule  107. 
Id. 

77.  The  provisions  of  Rule  93  that  the 
claims  of  the  respective  parties  must  be  put 


in  such  condition  that  they  will  not  require 
alteration  after  the  interference  shall  have 
been  linally  determined  relate  only  to  the 
claims  involved  in  the  interference.  Ex  parte 
Thurman,  C.  D.  1904,  111  O.  G.  1623. 

78.  An  application  which  is  in  condition  for 
appeal  or  which  has  been  formally  allowed 
has  had  the  benefit  of  the  careful  considera- 
tion of  the  applicant,  and  the  amendments 
have  been  filed  at  his  own  pleasure  within  the 
one-year  limit.  Therefore  after  consideration 
of  the  case  has  been  closed  some  restriction 
must  of  necessity  be  placed  upon  the  right  of 
further  amendment.     Id. 

79.  Where  an  interference  has  been  de- 
clared, whether  the  cases  are  then  believed 
to  be  ready  for  allowance  or  not,  the  prep- 
aration of  the  case  for  interference  is  usually 
done  within  a  fixed  time  set  by  the  office,  and 
as  some  light  is  often  thrown  upon  an  inven- 
tion while  involved  in  interference  it  would 
be  unjust  to  an  applicant  to  hold  that  no  fur- 
ther amendment  could  be  presented  and  con- 
sidered after  the  termination  of  the  proceed- 
ing.    Id. 

80.  As  the  application  is  within  the  jurisdic- 
tion of  the  examiner  after  the  termination  of 
an  interference  and  as  it  is  the  province  and 
aim  of  the  office  to  grant  to  an  applicant  a 
patent  which  will  fully  cover  his  invention. 
Held,  that  all  amendments  not  prohibited  by 
the  rules  filed  after  the  interference  should 
be  entered  and  acted  upon.    Id. 

81.  Where  motion  was  made  before  exam- 
iner of  interferences  to  amend  an  application 
in  interference  by  the  addition  of  claims.  Held 
that  the  examiner  of  interferences  properly 
denied  the  motion  as  not  within  his  juris- 
diction. Moore  v.  Hewitt  v.  Potter,  C.  D. 
190:-),  11.-)  O.  G.  .509. 

82.  Where  one  party  to  an  interference  pro- 
posed to  make  and  add  to  the  issue  claims 
from  the  patent  of  a  second  party  to  the  inter- 
ference, but  a  third  party  to  the  interference 
had  not  made  nor  offered  to  make  these 
claims.  Held,  that  unless  made  by  all  parties 
the  said  claims  could  not  be  included  in  that 
interference.  Maxwell  v.  Bryon  v.  Henry,  C. 
D.  1902,  C7,  98  O.  G.  1968.     Id. 

83.  Where  the  primary  examiner  obtained 
jurisdiction  of  an  interference  to  consider  the 
patentability  of  the  issue  and  rejected  the 
claims  in  issue,  Held,  that  the  primary  exam- 
iner rightly  refused  to  enter  or  consider  an 
amendment  substituting  new  claims  for  those 
rejected   prior  to   the  termination  of   the  in- 


INTERFERENCE,  III,  (b). 


tcrference.     Sanders   v.   Hawthorne   v.    Hoyt, 
C.  D.  1906,  IL'.--.  O.  G.  1347. 

84.  Where  ckiring  the  interference  proceed- 
ing one  of  tlie  parties  filed  an  amendment  can- 
celing the  claims  rejected  under  Rule  134  and 
substituted  a  substitute  specification  and 
drawing.  Held,  that  the  amendment  is  not  of 
the  character  permitted  under  the  rules  dur- 
ing the  interference  proceeding  and  that  the 
special  circumstances  are  not  such  as  to  war- 
rant its  admission.  Harnisch  v.  Gueniffet,  Be- 
noit,  and  Nicault,  C.  D.  1907,  128  O.  G.  4.53. 

85.  \  motion  to  amend  the  specification  of 
an  application  involved  in  an  interference  for 
the  purpose  of  curing  an  alleged  error  therein 
should  not  he  transmitted.  Wheeler  v.  Palm- 
ros,  C.  D.  1908,  133  O.  G.  230. 

(b)  Adding  Claims  to  Issue. 

86.  Where  a  motion  to  amend  an  applica- 
tion under  the  provisions  of  Rule  109  was 
not  filed  within  the  twenty  days  provided  for 
by  the  rule,  but  a  sufficient  showing  was  made 
why  it  was  not  tiled  sooner,  Held,  that  the  mo- 
tion may  be  received  and  transmitted  to  the 
primary  examiner.  (House  v.  Butler,  C.  D. 
1893,  14,  G2  O.  G.  387,  cited.)  Richards  v. 
Tracy,  C.  D.  1898,  83  O.  G.  288. 

87.  Where  it  was  insisted  by  Tracy  that  in 
view  of  Rule  143  the  motion  of  Richards  to 
amend  his  application  was  prematurely 
brought,  as  a  motion  to  dissolve  the  interfer- 
ence had  been  decided  by  the  primary  exam- 
iner and  the  decision  was  subject  to  appeal, 
Held,  that  Richards  would  have  been  guilty 
of  laches  if  he  had  not  made  the  motion  to 
transmit  and  amend  as  early  as  he  did.     Id. 

88.  The  office  should  be  commended  rather 
than  censured  for  doing  all  in  its  power  to 
expedite  the  final  disposition  of  interference 
cases  by  deciding  all  interlocutory  questions 
at  as  early  a  date  as  possible,  especially  where 
no  substantial  rights  of  either  party  are  inter- 
fered with  by  such  prompt  action.     Id. 

89.  Motion  to  amend  an  application  in  in- 
terference under  the  provisions  of  Rule  109 
should,  if  seasonably  presented,  be  transinitted 
to  the  primary  examiner  for  decision  even 
where  judgment  of  priority  has  been  rendered 
on  the  record  under  Rule  114.  Dempsey  et  al. 
V.  Wood,  C.  D.  1899,  86  O.  G.  182. 

90.  It  is  the  policy  of  the  office  to  have  all 
questions  which  may  be  presented  brought  up 
and  considered  at  one  time  in  one  proceeding, 
and  since  the  contested  proceedings  are  not 
at  an  end   until   the  limit  of  appeal  has   ex- 


pired, it  is  proper  within  that  time  to  make  a 
motion  to  amend  under  Rule  109  after  judg- 
ment on  the  record.     Id. 

91.  It  may  be  that  no  substantial  advantage 
is  apparent  in  a  particular  case  for  consider- 
ing the  matter  on  motion,  but  it  is  always  best 
that  the  course  of  procedure  should  follow 
that  seemingly  indicated  in  the  rule  unless 
there  is  some  good  reason  why  the  rule  does 
not  and  was  not  intended  to  apply.    Id. 

92.  Rule  109  contemplates  only  amendments 
inserting  a  claim  to  matter  claimed  by  another 
party  to  the  interference,  and  therefore  the 
examiner  of  interferences  properly  refused  to 
transmit  to  the  primary  examiner  a  motion  to 
amend  involving  merely  descriptive  matter  in 
the  specification.  Smith  v.  Carmicheal,  C.  D. 
1900,  93  O.  G.  1123. 

93.  Where  after  the  expiration  of  the  twen- 
ty days  allowed  by  the  rule  and  after  the  tes- 
timony-in-chief has  been  taken  by  one  of  the 
parties  a  party  moves  that  he  be  permitted  to 
insert  a  new  claim,  which  he  argues  can  be 
made  by  the  other  parties,  and  asks  that  it  be 
made  a  new  count  of  the  interference  issue. 
Held,  that  the  motion  should  not  be  granted. 
Potter  v.  Van  VIeck  v.  Thomson,  C.  D.  1901, 
93  O.  G.  2484. 

94.  Where  to  grant  a  motion  to  insert  a 
new  claim  and  make  it  a  new  count  of  the 
interference  issue  might  cause  great  delays 
and  would,  in  effect,  involve  a  new  declara- 
tion of  the  interference  in  that  new  prelim- 
inary statements  might  have  to  be  filed  and 
further  testimony  have  to  be  taken.  Held. 
that  the  motion  should  be  denied.     Id. 

95.  When  a  motion  is  made  before  the  ex- 
aminer of  interferences  to  transmit  an  inter- 
ference to  the  primary  examiner  under  the 
provisions  of  Rule  109  for  the  purpose  of  con- 
sidering a  proposed  amendment.  Held,  that  it 
is  not  within  the  province  of  the  examiner  of 
interferences  to  consider  the  patentability  or 
non-patentability  of  the  claims.  Such  con- 
sideration is  within  the  province  of  the  pri- 
mary examiner  in  the  first  instance  after  the 
interference  has  been  transmitted  to  his  jur- 
isdiction. Reece  v.  Fenwick,  C.  D.  1901,  97 
O.  G.  188. 

96.  Where  a  motion  is  made  before  the  ex- 
aminer of  interferences  to  transmit  an  inter- 
ference to  the  primary  examiner  under  the 
provisions  of  Rule  109  for  the  purpose  of 
considering  a  proposed  amendment.  Held,  that 
if  the  examiner  of  interferences  finds  that  the 
motion   is   made   within   the   twenty   days   al- 


INTERI-ERENCE,  III,  (b). 


173 


lowed  by  the  rule  and  is  in  compliance  with 
all  the  other  formal  requirements  of  said  rule 
and  the  claims  submitted  in  the  amendment 
accompanying  the  motion  cover  an  invention 
claimed  by  the  opposing  party  and  said  claims 
arc  not  already  included  as  counts  in  the  in- 
terference it  is  the  duty  of  the  examiner  of 
interferences  as  a  matter  of  right  to  transmit 
the  interference  to  the  primary  examiner.  It 
then  becomes  the  duty  of  the  primary  exam- 
iner to  consider  the  question  of  the  patenta- 
bility of  the  claims.    Id. 

97.  Where  before  testimony  is  taken  both 
parties  by  common  consent  wish  to  present 
certain  claims  as  additional  counts  of  the  in- 
terference and  tile  amendments  embodying 
those  claims,  Held,  that  the  interference  will 
be  remanded  to  the  primary  examiner  to  de- 
termine if  the  claims  are  allowable  and  should 
be  included  in  the  interference.  Reece  v.  Fen- 
wick,  C.  D.  1903,  09  O.  G.  669. 

98.  It  is  the  general  policy  of  the  office  to 
have  all  questions  which  may  be  brought  in 
issue  between  the  parties  settled  in  one  inter- 
ference where  possible.    Id. 

99.  Where  a  motion  is  made  by  one  party 
to  an  interference  to  amend  his  application 
under  the  provisions  of  Rule  KU)  and  the  ex- 
aminer denies  said  motion  on  the  ground  that 
the  moving  party  has  no  right  to  make  the 
claims.  Held,  that  said  decision  involves  a 
question  of  merits  and  an  appeal  therefrom 
lies  in  the  first  instance  to  the  examiners-in- 
chief.  Berry  v.  Fitzsimmons,  C.  D.  1902,  99 
O.  G.  862. 

100.  The  fact  that  a  motion  to  dissolve 
under  Rule  122  is  pending  does  not  prevent 
the  filing  of  a  motion  to  amend  under  Rule 
t09  or  excuse  delay  in  filing  such  a  motion. 
Perrussel  v.  Wichmann,  C.  D.  1902,  99  O.  G. 
2970. 

101.  Where  one  application  includes  the 
claims  of  the  issue  and  others  which  diflfer 
so  slightly  therefrom  that  the  decision  as  to 
the  issue  will  settle  the  question  of  priority 
as  to  the  others,  Held,  that  it  is  not  necessary 
to  make  those  other  claims  counts  of  the  in- 
terference and  that  an  amendment  by  the 
other  party  including  those  claims  under  Rule 
109  should  not  be  admitted.     Id. 

102.  A  claim  which  is  regarded  as  unpatent- 
able cannot  be  inserted  under  Rule  109,  and 
the  question  of  patentability  will  not  be  con- 
sidered by  the  commissioner  on  petition,  but 
must  first  be  considered  by  the  examiners-in- 


chief.    Hilland  v.  Fisher,  C.  D.  1902,  101  O.  G. 
2290. 

103.  Where  the  examiner  is  of  the  opinion 
that  the  counts  already  included  in  an  inter- 
ference adequately  cover  the  invention  in- 
volved, Held,  that  the  interference  should  not 
be  dissolved  for  the  purpose  of  allowing  the 
parties  to  present  additional  claims.  Hillard 
V.  Eckert,  C.  D.  1902,  101  O.  G.  18.U. 

104.  Where  the  examiner  grants  a  motion 
to  amend  an  application  in  interference  under 
Rule  109,  in  case  an  alifidavit  is  filed  over- 
coming a  reference  cited  against  the  claim 
within  the  limit  of  appeal.  Held,  to  be  a  prop- 
er proceeding.    Id. 

105.  Where  the  examiner  denies  a  motion 
to  amend  under  Rule  109  on  the  ground  that 
the  claims  presented  are  not  patentable.  Held, 
that  an  appeal  from  said  decision  on  this  ques- 
tion goes  in  the  first  instance  to  the  exam- 
iners-in-chicf.     Id. 

106.  A  delay  of  four  months  in  filing  a  mo- 
tion to  amend  under  Rule  109  cannot  be  ex- 
cused upon  the  ground  that  the  party  did  not 
know  whether  or  not  the  amendinent  would 
be  necessary  until  a  final  decision  was  render- 
ed upon  a  motion  to  dissolve  which  was  pend- 
ing. Perrussel  v.  Wichmann,  C.  D.  1902,  99 
O.  G.  2970. 

107.  A  motion  under  Rule  109  to  add  claims 
as  counts  of  the  interference  issue  must  be 
denied  where  the  examiner  is  of  the  opinion 
that  one  party  has  no  right  to  make  them. 
Rule  109  has  reference  only  to  claims  which 
arc  allowable  to  the  parties.  O'Connor  v. 
Vanderbill,  C.  D.  1903,  102  O.  G.  1782. 

108.  Rule  105  provides  for  concealing  from 
an  opponent  a  clearly  divisible  invention ;  but 
it  does  not  provide  for  concealing  any  part 
of  the  disclosure  and  claims  relating  to  the 
indivisible  invention  in  issue.     Id. 

109.  Where  a  new  count  is  to  be  added  to 
the  issue  of  an  interference  under  Rule  109, 
Held,  that  the  interference  should  not  be  dis- 
solved and  a  new  interference  declared,  but 
supplementary  notices  should  be  prepared 
adding  the  new  count.  Mitchell  v.  Fitts,  C. 
D.   1903,  103  O.  G.  1915. 

110.  Where  some  of  the  counts  of  the  issue 
are  found  to  be  unpatentable  and  one  of  the 
parties  presents  proposed  substitutes  for  them, 
Held,  that  the  question  whether  an  interfer- 
ence as  to  the  proposed  claims  will  be  neces- 
sary should  be  determined  before  testimony 
is  taken  in  the  interference.  A  second  inter- 
ference  between   the   same   parties   should   be 


174 


INTERFEREN'CE,  III,  (b). 


avoided.     Churchward   v.   Douglas   v.   Cutler, 
C  D.   19(t3,   106  O.  G.   2016. 

111.  All  issues  to  be  brought  in  controversy 
between  the  parties  should  be  contested  in 
one  proceeding.  Held,  therefore,  that  where 
a  party  promptly  presents  claims  as  proposed 
additional  counts  to  the  interference  issue 
they  should  be  considered  by  the  primary  ex- 
aminer although  they  are  not  claims  already 
made  by  another  party.     Id. 

112.  Where  proposed  additional  counts  are 
presented,  they  should  be  accompanied  by  a 
motion  similar  to  that  under  Rule  109  and 
by  a  motion  before  the  examiner  of  interfer- 
ences to  transmit.    Id. 

113.  Where  a  motion  to  add  proposed  counts 
to  the  issue  is  transmitted  to  the  examiner,  he 
should  determine  whether  the  claims  are  pat- 
entable to  the  parties,  and  if  so  he  should  fix 
a  time  limit  within  which  the  parties  may 
make  the  claims.  Failure  to  make  the  claims 
should  be  given  the  same  effect  as  in  the  case 
of  suggested  claims  under  Rule  96.     Id. 

114.  Where  proposed  additional  counts  are 
not  acceptable  to  the  examiner,  the  moving 
party  has  not  the  right  to  amend  or  to  appeal 
upon  the  merits.    Id. 

115.  Where  on  a  motion  to  amend  under 
Rule  109  it  appears  that  the  claim  is  made  in 
a  divisional  application  not  involved  in  the 
interference.  Held,  that  it  is  nevertheless  prop- 
er to  add  it  as  a  count  to  the  issue.  Meyers 
v.  Tyden,  C.  D.  1904,  108  O.  G.  287. 

IIG.  Where  a  motion  to  amend  under  Rule 
109  by  inserting  a  claim  made  by  another 
party  to  the  interference  is  transmitted  to  the 
primary  examiner.  Held,  that  he  should  grant 
a  hearing  to  the  parties  and  render  a  decision 
and  should  not  merely  write  a  letter  in  the 
case  where  the  amendment  is  presented  stating 
his  views.     Id. 

117.  Where  a  party  and  his  attorneys  reside 
at  a  great  distance  from  this  office  and  were 
unable  to  obtain  a  copy  of  their  opponent's 
application  within  the  time  for  motions,  and 
within  twelve  days  after  the  copies  were  re- 
ceived a  motion  was  made  to  amend  the  ap- 
plication under  Rule  109,  Held,  that  the  mo- 
tion should  be  transmitted  to  the  examiner. 
Connell  v.  Tobey,  C.  D.  1904,  110  O.  G.  2015. 

118.  Where  a  motion  is  brought  to  trans- 
mit an  interference  for  the  purpose  of  includ- 
ing therein  as  counts  certain  "allowable 
claims,"  which  claims  were  not  specified  in  the 
motion.  Held,  that  the  interference  should 
not  be  transmitted  for  the  inclusion  of  some 


claims  about  which  the  opposing  party  had 
no  notice.  Normand  v.  Krimmelbein,  C.  D. 
1905,  iir,  O.  G.  249. 

119.  When  an  interference  is  transmitted  to 
the  examiner  to  determine  whether  claims 
corresponding  to  certain  claims  made  by  the 
other  party  can  be  admitted  as  a  part  of  the 
issue,  Held,  that  if  there  exists  a  broad  in- 
vention which  is  common  to  both  parties  and 
a  patentable  claim  can  be  agreed  upon  by  all 
the  parties  at  the  hearing  such  claim  may  be 
included  in  the  issue  of  the  interference.     Id. 

120.  Where  the  examiner  refuses  to  admit 
claims  for  the  purpose  of  interference  under 
Rule  109  because,  in  his  opinion,  they  are  not 
patentable.  Held,  that  his  decision  will  not  be 
reviewed  upon  direct  appeal  to  the  commis- 
sioner. Lemp  V.  Ball,  C.  D.  1905,  115  O.  G. 
249. 

121.  Where  it  appears  that  an  applicant  has 
had  ample  opportunity  to  present  such  claims 
as  he  wished  to  contest  in  the  interference, 
and  in  fact  has  presented  several  sets  of 
claims  at  different  times  for  that  purpose, 
Held,  that  a  motion  to  transmit  the  interfer- 
ence in  order  to  permit  the  examiner  to  con- 
sider another  set  of  claims  was  properly  de- 
nied. Scott  V.  Emmet  and  Hewlett,  C.  D. 
1905,  116  O.  G.  1184. 

122.  Where  testimony  has  been  taken  in  an 
interference  proceeding.  Held,  that  new  and 
patentable  counts  should  not  be  suggested  to 
the  parties  by  the  examiner  before  judgment 
of  priority  of  invention.  Freeman  v.  Parks, 
C.  D.  1905,  117  O.  G.  276. 

123.  The  practice  of  suggesting  new  pat- 
entable counts  to  form  an  issue  of  interference 
announced  in  the  case  of  Reece  v.  Fenwick 
(C.  D.  1902,  145,  99  O.  G.  669)  did  not  con- 
template the  suggestion  of  new  counts  in  in- 
terferences where  the  testimony  had  already 
been   taken.     Id. 

124.  Where  testimony  has  been  taken  and 
the  addition  of  new  counts  would  necessitate 
the  taking  of  further  testimony.  Held,  that 
proceedings  would  not  be  expedited  by  add- 
ing new  counts  before  judgment,  as  the  judg- 
ment might  preclude  the  necessity  for  the 
new  counts.     Id. 

125.  Where  party  considers  that  a  claim  of 
his  opponent  could  be  made  by  him  under 
Rule  109,  but  believes  that  the  claim  is  so 
vague  and  indefinite  that  proper  determina- 
tion of  the  question  of  priority  could  not  be 
based  thereon.  Held,  that  the  party  should  not 
ask  the  office  to  make  this  claim  an  issue,  but 


INTERFERENCE.  Ill,  (b). 


175 


should  suggest  some  issue  which  would  prop- 
erly describe  the  invention.  Wickers  and 
Furlong  v.  Wernraourns,  C.  D.  1905,  117  O. 
G.  1707. 

126.  Where  Scott  after  dissolution  of  the 
interference  as  to  certain  of  the  original 
counts  and  after  a  second  dissolution  as  to 
certain  additional  counts  which  had  been  pre- 
sented brings  a  petition  for  the  addition  of 
new  counts  to  the  issue  and  contends  that  E. 
and  H.  did  not  act  in  good  faith  in  presenting 
upon  the  successive  motions  for  dissolution 
new  references  of  which,  he  claims,  they  must 
have  known  from  the  beginning  of  the  pro- 
ceedings, and  alleges  that  the  delays  in  the 
case  also  arose  through  the  failure  of  the 
patent  office  to  find  in  the  first  place  all  per- 
tinent references,  and  charges  that  E.  and  H. 
wilfully  delayed  the  case  in  view  of  knowledge 
obtained  from  access  to  affidavits  in  S.'s  case 
improperly  permitted  by  the  office,  and  S.  has 
secured  recommendation  of  the  examiners-in- 
chief  that  the  proposed  counts  be  allowed, 
but  E.  and  H.  oppose  the  grant  of  the  peti- 
tion, pointing  out  that  the  proposed  claims 
were  found  patentable  only  upon  ex  parte 
representations  and  that  in  the  event  of  their 
admission  another  motion  for  dissolution  is 
not  improbable,  with  attendant  delay  and  ex- 
pense and  that  it  is  not  apparent  why  decision 
on  the  counts  now  forming  the  issue  will  not 
be  controlling  as  to  the  recommended  claim 
if  made  hereafter  by  either  party,  under 
Phelps  V.  Wormley  v.  McCuUough  (ante,  374, 
118  O.  G.  1069),  Held,  that  no  sufficient  rea- 
son appears  to  justify  further  delay  by  the 
addition  of  the  proposed  counts.  Scott  v. 
Emmet  &  Hewlett,  C.  D.  1905,  119  O.  G.  2233. 

127.  Upon  petition  to  include  additional 
counts  in  the  issue  of  interference  after  dis- 
solution as  to  certain  of  the  original  counts. 
Held,  that  the  petitioner  has  no  standing  in 
his  attempt  to  introduce  new  counts  unless 
the  proposed  counts  are  drawn  with  additional 
limitations  to  the  same  invention  as  claimed 
with  respect  to  which  the  interference  was 
dissolved  and  that  if  the  proposed  counts  ful- 
fill these  contentions  they  fall  within  the  scope 
of  the  preliminary  statements  already  made 
and  the  parties  may  present  all  their  proofs 
in  regard  to  the  subject-matter  of  the  issue 
and  the  office  may  determine  the  question  of 
priority  of  invention  with  respect  to  any 
claim  thereto  which  may  be  hereafter  pre- 
sented without  declaring  another  interfer- 
ence for  that  purpose.    Id. 


128.  The  purpose  of  Rule  109  is  clearly  to 
avoid  a  second  interference,  and  where  a 
party  fails  to  take  advantage  of  that  rule  he 
loses  the  right  to  contest  the  question  of  pri- 
ority as  to  the  claims  made  by  his  opponent. 
Ex  parte  Sutton,  Steele,  and  Steele,  C.  D. 
1906,  121  O.  G.  1012. 

129.  Where  a  party  fails  to  make  claims 
under  Rule  109  which  are  made  by  his  oppo- 
nent in  the  interference,  Held,  that  he  is 
estopped  from  thereafter  making  the  claims, 
notwithstanding  that  there  is  a  newly-appear- 
ing party  before  the  office  making  them.     Id. 

130.  Upon  petition  that  the  examiner  be  di- 
rected to  hear  a  party  upon  his  opponent's  mo- 
tion to  amend  on  the  question  of  his  oppo- 
nent's right  to  make  proposed  claims.  Held, 
that  petitioner  may  present  his  arguments  upon 
motion  for  dissolution  in  case  the  proposed 
claims  are  admitted.  Moore  v.  Curtis,  C.  D. 
1906,  120  O.  G.  324. 

131.  Where  in  a  three-party  interference 
one  of  the  parties  moves  before  the  examiner 
of  interferences  for  the  transmission  to  the 
primary  examiner  of  an  accompanying  mo- 
tion to  amend  his  application  by  adding  claims 
which  cannot  be  made  by  one  of  the  other 
parties  to  the  interference.  Held,  that  the  mo- 
tion should  not  be  transmitted.  Townsend 
V.  Copeland  v.  Robinson,  C.  D.  1906,  124  O.  G. 
623. 

132.  Where  before  testimony  has  been 
taken  one  of  the  parties  moves  for  the  trans- 
mission to  the  primary  examiner  of  a  motion 
to  amend  the  issue  by  adding  new  counts 
thereto  and  the  other  parties,  both  of  whom 
have  presented  similar  motions,  do  not  object. 
Held,  that  the  motion  should  be  transmitted. 
Id. 

133.  Where  a  motion  to  amend  the  issue 
was  brought  long  after  the  time  specified  in 
the  rules  and  no  excuse  was  given  for  the 
delay,  but  the  motion  was  transmitted  at  the 
original  hearing  on  the  understanding  that  the 
opposite  parties  waived  objection  by  failure 
to  oppose  transmission.  Held,  on  rehearing 
that  in  view  of  vigorous  opposition  the  mo- 
tion should  not  be  transmitted.  Townsend  v. 
Copeland  v.  Robinson,  C.  D.  1906.  124  O.  G. 
1845. 

134.  Delay  in  obtaining  from  the  patent  of- 
fice copies  of  an  opponent's  file-wrapper  and 
contents.  Held,  a  sufficient  excuse  for  not 
filing  a  motion  under  Rule  109  within  the 
period  named  in  the  rule.  Kugele  v.  Blair, 
C.  D.  1906,  125  O.  G.  1350. 


176 


INTERFERENXE,  III.  (b). 


135.  The  reasons  which  led  to  the  change 
in  Rule  124,  set  forth  in  Ncwcomb  v.  Thom- 
son (C.  D.  I!t06,  232.  122  O.  G.  3012),  apply 
with  nearly  the  same  force  to  motions  under 
Rule  109.  The  purpose  of  Rule  109  is  to  avoid 
a  second  interference.  If  a  party  wishes  to 
appeal  from  an  adverse  decision  an  the  merits 
of  his  claims  presented  under  Rule  109,  he 
should  be  permitted  to  do  so  to  the  full  extent 
provided  by  law  in  order  that  the  necessity  for 
a  subsequent  ex  parte  appeal  and  the  possi- 
bility of  a  second  interference  may  be  avoid- 
ed. Townsend  v.  Copeland  v.  Robinson,  C.  D. 
1907,  126  O.  G.  1355. 

136.  The  practice  concerning  motions  to  add 
claims  under  Rule  109  should  follow  the  pro- 
cedure set  forth  in  Rule  124  relative  to  mo- 
tions for  dissolution.  The  amendment  accom- 
panying the  motion  made  under  Rule  109 
should  be  entered  in  the  application,  and  if  the 
examiner  holds  that  the  claims  arc  not  allow- 
able to  the  party  bringing  the  motion  he  will 
reject  the  claims.  Following  Rule  124,  the  ex- 
aminer will  also  set  a  time  for  reconsidera- 
tion, and  if  after  reconsideration  he  adhers 
to  his  original  decision  he  will  finally  reject 
the  claims  and  fix  a  limit  of  appeal.     Id. 

137.  No  appeal  lies  from  a  favorable  deci- 
sion rendered  on  a  motion  to  amend  under 
Rule  109  whether  rendered  by  the  examiner 
or  the  examiners-in-chief.  Josleyn  v.  Hulse, 
C.  t).  ]9l)S,  132  O.  G.  679. 

138.  Where  an  examiner  rejects  claims  pre- 
sented by  a  party  for  interference  under  Rule 
109,  he  should  set  a  limit  of  appeal  from  his 
decision  whether  the  claims  had  been  allowed 
to  the  other  party  or  had  been  made  for  the 
first  time  by  the  moving  party.  Mattice  v. 
Langworthy,  C.  D.  1908,  132  O.  G.  678. 

139.  A  motion  to  amend  the  issue  of  an 
interference  under  Rule  109  was  properly  re- 
fused transmission  where  it  contained  a  pro- 
viso that  the  claims  shall  be  added  "without 
prejudice  to  the  right  to  contest  such  claims 
under  the  provisions  of  Rule  122."  Wheeler 
v.  Palmros.  C.  D.  1908,  133  O.  G.  230. 

140.  Where  a  motion  to  amend  under  Rule 
109  by  the  addition  of  two  claims  was  trans- 
mitted, the  primary  examiner  properly  refused 
to  consider  two  other  claims  presented  for 
the  first  time  at  the  hearing  of  the  motion. 
Mattice  v.  Langworthy,  C.  D.  1908,  132  O.  G. 
678. 

141.  A  motion  to  amend  under  Rule  109 
brought  after  the  thirty  days  allowed  by  the 
rules  and  accompanied  by  no  excuse  for  the 


delay    is    entitled    to    no    consideration    and 
should  not  be  transmitted.     Id. 

142.  Where  the  examiner  of  interferences 
refused  to  transmit  a  motion  under  Rule  109 
unless  the  moving  party  filed  within  a  fixed 
time  a  statement  pointing  out  the  parts  or 
elements  of  his  application  covered  by  the  ele- 
ments of  the  claims  submitted,  Held,  that  this 
is  a  question  of  procedure  which  is  clearly 
within  the  jurisdiction  of  the  examiner  of  in- 
terferences and  should  not  be  reviewed  unless 
there  is  a  clear  abuse  of  discretion  on  his  part. 
Hoch  v.  McCaskey  v.  Hopkins,  C.  D.  1909, 
141  O.  G.  1161. 

143.  A  motion  to  dissolve  the  interference 
and  a  motion  to  amend  under  Rule  109  were 
transmitted  to  the  primary  examiner,  who 
granted  the  former,  but  denied  the  latter. 
Held,  that  the  fact  that  appeal  was  not  taken 
from  the  decision  on  the  motion  to  dissolve 
constitutes  no  ground  for  the  dismissal  of 
the  appeal  from  the  decision  on  the  motion  to 
amend.  Hammond  and  Donahue  v.  Collcy  v. 
Norris,  C.  D.  1909,  148  O.  G.  573. 

144.  Rule  109  does  not  permit  the  transmis- 
sion of  a  motion  to  dissolve  relating  to  counts 
added  under  its  provisions  merely  because  a 
party  alleges  surprise  that  the  claims  were 
hold  patentable  to  his  opponent.  Gibson  v. 
Kitser,  C.  D.  1909,  145  O.  G.  1249. 

145.  A  motion  to  amend  the  issue  under 
Rule  109  brought  long  after  the  time  set  for 
bringing  such  motions  and  after  the  case  is 
ready  for  final  hearing.  Held,  properly  refused 
transmission  where  the  only  excuse  for  the 
delay  in  bringing  such  motion  was  that  the 
moving  party  did  not  order  a  complete  copy 
of  his  opponent's  application  until  shortly 
prior  to  the  bringing  of  the  motion  and  it  ap- 
peared that  the  delay  in  obtaining  such  copy 
was  inspired  by  a  policy  of  economy  rather 
than  impelled  by  poverty.  Haudenschild  v. 
Huyck,  C.  D.  1910,  154  O.  G.  51,5. 

146.  Where  a  motion  to  amend  the  issue  of 
an  interference  is  transmitted  to  the  primary 
examiner,  he  should  consider  all  the  grounds 
raised  in  opposition  to  the  motion.  Lotter- 
hand  v.  Cornwall,  C.  D.  1910,  154  O.  G.  515. 

147.  The  fact  that  transmission  of  a  motion 
to  amend  under  Rule  109  was  not  opposed  be- 
fore the  examiner  of  interferences  is  a  suffi- 
cient reason  for  the  dismissal  of  an  appeal 
from  his  decision  transmitting  such  motion. 
Hollifield  V.  Cummings,  C.  D.  1910,  154  O. 
G.  1107. 


INTERFERENCE,  III,  (c),  IV,  (a). 


177 


148.  Where  the  primary  examiner  finds  that 
claims  proposed  under  Rule  109  do  not  differ 
in  a  patentable  sense  from  the  claims  already 
constituting  the  issue  of  the  interference,  they 
should  not  be  admitted,  since  to  admit  them 
would  permit  the  filing  of  new  preliminary 
statements  without  sufficient  excuse  therefor. 
Id. 

149.  No  appeal  lies  from  a  decision  grant- 
ing a  motion  to  add  counts  under  Rule  109 
whether  rendered  by  the  primary  examiner  or 
the  examiners-in-chief.  Leonard  v.  Pardee, 
C.  D.  1911,  164  O.  G.  249. 

150.  W.  moved  to  dissolve  the  interference, 
and  G.  moved,  under  the  provisions  of  Rule 
109,  to  amend  the  issue.  W.'s  motion  was 
granted,  and  the  interference  was  redeclared 
as  to  certain  of  the  claims  presented  by  G. 
Thereupon  W.  brought  a  motion  to  add  fur- 
ther counts  to  the  issue.  Held,  that  in  view 
of  the  record  of  the  case  this  motion  should 
have  been  transmitted.  Walker  and  Walker 
V.  Gilchrist,  C.  D.  1911,  164  O.  G.  507. 

151.  A  motion  to  amend  the  issue  of  an 
interference  under  Rule  109  filed  after  the  de- 
cision of  the  primary  examiner  dissolving  the 
interference  had  become  final.  Held,  properly 
dismissed  by  the  examiner  of  interferences. 
Davis  V.  Zellers,  C.  D.  1911,  167  O.  G.  513. 

(c)  After  Termination  of  Interference. 

152.  After  an  interference  has  proceeded 
to  a  decision  upon  the  question  of  priority  of 
invention  it  is  too  late  to  amend  the  issue 
or  add  a  new  count,  since  that  would  make 
it  necessary  to  take  new  testimony,  as  in  a 
new  interference.  Sarfert  v.  Meyer,  C.  D. 
1904,  109  O.  G.  1885. 

153.  The  right  of  an  applicant  to  make  a 
claim  should  not  be  confused  with  the  right 
of  an  applicant  to  submit  and  have  considered 
an  amendment  containing  the  claim.     Id. 

154.  Held,  that  it  is  not  intended  to  rule 
that  the  parties  to  an  interference  may  as  a 
matter  of  course  present  other  claims  of  dif- 
ferent scope  to  the  subject-matter  of  the  issue 
after  the  conclusion  of  the  interference.  Such 
claims  as  are  desired  should  be  presented  or- 
dinarily before  the  declaration  of  interference 
and  amendment  should  be  necessary  thereafter 
only  where  the  special  circumstances  make  it 
necessary  or  justify  it.  Phelps  v.  Wormley  v. 
McCuIlough,  C.  D.  1905,  118  O.  G.  1069. 

155.  Where  following  the  termination  of  an 
interference  and  the  rejection  of  the  defeated 

12 


party's  claims  he  filed  an  amendment  cancel- 
ing the  rejected  claims  and  adding  new  claims, 
which  amendment  was  refused  admission  by 
the  examiner  on  the  ground  that  the  prosecu- 
tion before  the  primary  examiner  was  closed 
by  reason  of  the  fact  that  the  application  had 
been  appealed  to  the  examiners-in-chief,  al- 
lowed, and  passed  to  issue  prior  to  the  decla- 
ration of  the  interference.  Held,  that  the  re- 
jection of  the  claims  involved  in  the  inter- 
ference under  Rule  132  is  a  new  ground  of 
rejection  and  that  the  rules  and  statute  give 
applicant  the  right  to  amend  in  an  endeavor 
to  overcome  said  ground  of  rejection.  Ex 
parte  Klepetko,  C.  D.  1907,  126  O.  G.  387. 

IV.  Appeal. 

(See  Dissolution;  Priority.) 

(a)  In  General. 

156.  It  is  well  settled  that  an  appeal  must 
be  from  a  decision  and  not  from  the  grounds 
thereof.  Breul  v.  Smith,  C.  D.  1898,  84  O.  G. 
809. 

157.  Hearing  on  an  appeal  in  an  interference 
will  not  be  suspended  to  permit  a  contestant 
to  be  heard  on  a  motion  to  compel  his  oppo- 
nent to  take  prompt  action  upon  a  recommen- 
dation of  the  examiners-in-chief.     Id. 

158.  Petition  from  the  decision  of  the  pri- 
mary examiner  that  a  French  patent  cited  on 
a  motion  to  dissolve  was  not  proved  dismissed 
because  not  served  upon  the  opposing  party  to 
the  interference.  The  question  is  an  inter 
f'artes  one.  Robin  v.  Muller  and  Bonnet,  C. 
D.  1903,  107  O.  G.  2.527. 

159.  When  an  appeal  in  an  interference  is 
filed  and  subsequently  withdrawn,  Held,  that 
the  interference  is  left  in  the  same  condition 
by  such  action  as  though  no  appeal  had  been 
filed.  Cole  v.  Zorback  v.  Greene,  C.  D.  1905, 
116  O.  G.  1451. 

160.  No  appeal  will  be  permitted  on  inter- 
locutory motion  to  shift  the  burden  of  proof; 
but  the  matter  may  be  taken  up  on  appeal 
from  the  final  decision  upon  the  question  of 
priority  of  invention.  Raulet  and  Nicholson 
V.  .A.dams,  C.  D.  190.5,  114  O.  G.  827. 

161.  Interferences  are  instituted  for  the  pur- 
pose of  deciding  the  question  of  priority  of 
invention,  and  for  no  other  purpose,  and  the 
reviews  or  appeals  provided  are  from  the  de- 
cision awarding  priority  by  the  officer  author- 
ized to  decide  the  question  of  priority  in  the 
first  instance.     *Allen,  Commissioner  of  Pat- 


178 


INTERFERENCE,  IV,  (b),  (c),  (d). 


ents  V.  United  States  of  America,  ex  rel. 
Lowny,  and  Planters  Compress  Co.,  C.  D. 
1905,  116  O.  G.  2253. 

162.  Tlie  right  of  appeal  given  to  the  ex- 
amincrs-in-chicf  in  interference  cases  was  to 
review  the  question  of  priority  and  such  an- 
cillary questions  as  the  examiner  had  passed 
upon  in  deciding  the  question  of  priority  for 
which  the  interference  is  situated.    *Id. 

163.  Section  5909,  Revised  Statutes,  is  to  be 
construed  as  though  it  read :  Every  applicant 
for  a  patent  or  for  the  reissue  of  a  patent  any 
of  the  claims  of  which  have  been  twice  re- 
jected may  appeal  from  the  decision  of  the 
primary  examiner,  and  every  party  to  an  in- 
terference may  appeal  from  the  decision  of 
the  examiner  in  charge  of  interferences  in 
such  case  to  the  board  of  examiners-in-chief. 
*Id. 

164.  Where  appellee  moves  to  dismiss  the 
appeal  or  to  affirm  the  decision  below  on  the 
ground  that  that  decision  could  not  have  been 
other  than  in  its  favor,  and  that  the  appeal 
was  therefore  taken  for  delay,  and  appellant 
moves  that  hearing  upon  appellee's  motion  be 
postponed  until  the  hearing  upon  the  appeal 
on  the  ground  that  it  is  necessary  to  have 
certain  testimony  made  part  of  the  record  al- 
ready filed,  Held,  that  the  appellant's  motion 
to  postpone  should  be  denied,  as  no  good  ex- 
cuse is  advanced  for  failing  to  make  the  al- 
leged testimony  a  part  of  the  record  already 
filed,  and  appellant's  good  faith  in  making 
the  motion  is  open  to  grave  doubt.  *Jones  v. 
Starr,  C.  D.  1905,  117  O.  G.  1495. 

165.  Where  the  decision  appealed  from  was 
filed  January  16,  1905,  the  appeal  filed  March 
3,  1905,  and  the  record  filed  on  the  court  April 
18,  1905,  or,  in  other  words,  the  appellant 
availed  himself  of  all  the  time  allowed  by  the 
rules  for  taking  and  perfecting  his  appeal, 
though  by  so  doing  he  necessarily  prevented 
the  hearing  of  the  appeal  until  next  November, 
Held,  that  in  so  doing  he  was  within  his  legal 
rights,  and  the  court  would  not,  on  that  ground 
alone,  feel  justified  in  dismissing  his  appeal. 
*Id. 

166.  The  statutes  limit  the  declaration  of 
interferences  to  the  question  of  priority  of 
invention,  and  the  appeals  provided  by  the 
statutes  relating  to  interferences  are  only 
those  upon  the  question  of  priority  of  inven- 
tion. Appeals  upon  other  questions,  and  par- 
ticularly those  taken  from  decisions  of  the 
primary  examiners  upon  motion  affirming  the 
patentability  of  claims,  are  left  to  the  regula- 


tion of  the  patent  office  under  the  grant  of 
power  contained  in  section  483.  *The  United 
States,  ex  rel.  Lowry  and  Planters  Compress 
Company  v.  Commissioner  of  Patents,  C.  D. 
1906,   125  O.   G.  2365. 

(b)  Petition  to  Commissioner. 

167.  Where  a  party  requests  an  interfer- 
ence and  the  examiner  rules  that  he  is  not 
entitled  to  make  the  interfering  claim.  Held, 
that  the  matter  will  not  be  reviewed  upon  in- 
terlocutory petition  or  appeal.  Ex  parte  Han- 
sen, C.   D.  1905,  117  O.  G.  2632. 

(c)  Supervisory  Authority  of  Commissioner. 

168.  Where  the  records  show  that  the  ques- 
tions of  patentability  and  interference  in  fact 
were  presented  for  consideration  on  motion, 
but  not  pressed,  and  that  they  were  argued 
before  the  examiner  of  interferences  and  the 
examiners-in-chief  on  final  hearing  and  these 
tribunals  asked  to  make  a  recommendation 
under  Rule  126  and  such  recommendation  was 
refused.  Held,  that  these  facts  do  not  warrant 
a  review  of  the  question  by  the  commissioner. 
Ball  v.  Flora,  C.  D.  1905,  117  O.  G.  2088. 

169.  The  question  of  the  patentability  of 
issue  will  be  considered  on  appeal  on  priority 
only  under  the  supervisory  authority  of  the 
commissioner  for  the  purpose  of  correcting  a 
manifest  error.  Dixon  and  Marsh  v.  Graves 
and  Whittemore,  C.  D.  1907,  130  O.  G.  2374. 

170.  A  petition  to  dismiss  an  appeal  from  a 
decision  of  the  examiner  of  interferences  on 
priority  rendered  on  the  record  will  not  be 
considered  by  the  commissioner  in  the  exer- 
cise of  his  supervisory  authority,  since  peti- 
tioner has  adequate  remedies  provided  by  the 
rules.  Brown  v.  Gammeter,  C.  D.  1908,  133 
O.  G.  679. 

(d)  Primary  Examiner  nr  E.vaminer  of  In- 

terferences to  Examiners-in-Chief. 

171.  Section  4900,  Revised  Statutes,  is  con- 
strued to  mean  that  every  applicant  for  a 
patent  or  for  the  reissue  of  a  patent  any  of 
the  claims  of  which  have  been  twice  rejected 
may  appeal  from  the  decision  of  the  primary 
examiner  to  the  board  of  examiners-in-chief, 
having  once  paid  the  fee  for  such  appeal,  and 
that  every  party  to  an  interference  may  appeal 
from  the  decision  of  the  examiner  in  charge 
of  interferences  in  such  case  to  the  board  of 
examiners-in-chief  having  once   paid   the   fee 


INTERFERENCE,  IV,  (e),  (f),  (g). 


179 


for   such    (latter)    appeal.     Cliency   v.    Venn, 
C.   D.    1906,   125  O.  G.   1703. 

172.  Where  a  motion  for  permission  to  take 
testimony  in  opposition  to  an  opponent's  right 
to  make  the  claims  in  issue  for  use  at  final 
hearing  under  the  provisions  of  Rule  I'W  is 
denied  by  the  examiner  of  interferences,  Held, 
that  an  appeal  will  he  permitted  from  his  ad- 
verse decision.  (Practice  announced  in  Lowry 
and  Cowley  v.  Spoon,  C.  D.  1906,  381,  124  O. 
G.  1846,  and  Hanan  and  Gates  v.  Marshall, 
ante,  6.i,  126  O.  G.  3423  modified.)  Pym  v. 
Hadaway,  C.  D.  1907,  128  O.  G.  4.57. 

173.  On  appeal  to  the  examiners-in-chief 
from  a  decision  of  the  examiner  of  interfer- 
ences an  assignment  of  error  which  assails 
the  decision  of  the  examiner  of  interferences 
in  awarding  priority  on  the  whole  case  to  the 
opposing  party  is  sufficient  to  preserve  ap- 
pellant's right  to  argue  the  question  of  res 
adjudkata  by  reason  of  a  judgment  in  a  prior 
interference.  *Carroll  v.  Hallwood,  C.  D. 
1908,   135  O.   G.   896. 

(e)  Examiners-in-Chief  to  Commissioner. 

174.  The  primary  examiners,  who  are  given 
statutory  authority  to  decide  questions  of  pat- 
entability, are  under  the  supervision  of  the 
commissioner,  and  it  would  seem  to  be  not 
only  his  right  but  his  duty  to  correct  any  man- 
ifest error  committed  by  any  of  the  primary 
examiners  relative  to  the  patentability  of  a 
supposed  invention  or  of  the  right  of  an  ap- 
plicant to  claim  it  whenever  such  error  was 
called  to  his  attention.  To  warrant  any  ac- 
tion on  his  part  in  such  a  case,  the  error 
must  be  so  gross  that  it  would  be  a  wrong  to 
the  public  to  permit  a  patent  to  issue.  It 
manifestly  should  not  be  based  upon  a  mere 
difference  of  opinion.  Sobey  v.  Ilolsclaw, 
C.  D.  1907,  126  O.  G.  3041. 

175.  Where  a  ruling  is  made  that  an  appeal 
from  the  examiner  of  interferences  will  not 
be  entertained  by  the  commissioner  on  a  given 
question,  an  appeal  on  that  question  will  not 
be  considered,  even  though  filed  prior  to  the 
rendition  of  the  decision.  Hanan  and  Gates 
V.  Marshall,  C.  D.  1907,  126  O.  G.  3423. 

(f)   Commissioner    to    Secretary    of    the    In- 
terior. 

176.  The  duty  imposed  upon  the  commis- 
sioner to  determine  which  of  certain  rules 
were  applicable  to  an  interference  and  upon 
whom  the  burden  of  proof  should  be  placed 


involved  the  exercise  of  a  judicial  discretion 
and  authority  the  same  as  the  admission  or 
rejection  of  evidence  or  the  making  of  any 
other  interlocutory  ruling,  and  for  that  reason 
his  decision  on  this  question  cannot  be  re- 
viewed by  the  Secretary  of  the  Interior  on 
appeal  to  him  from  the  decision  of  the  com- 
missioner. tPoole  v.  Avery,  C.  D.  1899,  87 
O.  G.  357. 

(g)   Commissioner  to   Court   of  Appeals. 

177.  Where  each  party  to  an  interference 
attacks  the  invention  of  the  other  as  imprac- 
ticable and  therefore  devoid  of  patentable  nov- 
elty. Held,  that  that  is  a  question  which  the 
court  of  appeals  of  the  District  of  Columbia 
cannot  consider  in  an  interference  proceed- 
ing. That  there  may  be  extreme  cases  in 
which  it  would  be  proper  in  interference  pro- 
ceedings to  raise  and  determine  the  question 
of  the  patentability  of  the  device  in  contro- 
versy may  be  conceded,  but  ordinarily  no  such 
question  can  arise  in  this  court  in  such  pro- 
ceedings. *Dodge  V.  Fowler,  C.  D.  1898,  82 
O.  G.  595. 

178.  Where  it  is  claimed  that  an  alleged  in- 
vention is  wanting  in  patentability  or  wanting 
in  identity  with  a  rival  applicant's  device.  Held, 
that  the  proper  course  to  pursue  is  to  move 
for  a  dissolution  of  the  interference.  The  mo- 
tion cannot  be  made  in  the  court  of  appeals 
of  the  District  of  Columbia,  and  except,  per- 
haps, in  very  extraordinary  cases  no  such 
question  can  properly  be  raised  in  or  consid- 
ered by  this  court.  This  must  be  regarded 
both  as  good  practice  and  well-settled  law. 
(Hisey  v.  Peters,  C.  D.  1895,  349,  71  O.  G. 
892,  fi  D.  C.  App.  68.)     *Id. 

179.  While  no  motion  was  made  by  F.  to 
dissolve  the  interference,  yet  if  under  the  law 
and  the  rules  of  the  patent  office  it  is  not  im- 
proper after  adjudication  of  priority  of  in- 
vention to  refuse  a  patent  to  the  successful 
party  in  the  interference  proceedings  upon 
grounds  that  have  first  been  developed  in 
those  proceedings  or  upon  grounds  manifested 
at  any  time  after  the  declaration  of  interfer- 
ence the  court  in  its  decision  on  priority  is 
not  to  be  understood  as  precluding  such  ac- 
tion by  the  office.     *Id. 

180.  The  practice  of  the  patent  office  is  not 
a  matter  for  regulation  by  the  court  of  ap- 
peals of  the  District  of  Columbia,  and  irreg- 
ularities therein,  even  if  patent  on  the  record, 
would  only  be  considered  by  this  court  when 


180 


INTERFERENCE,  IV,  (g). 


some  substantial  right  of  a  party  has  been 
denied  and  the  point  saved  for  presentation 
on  appeal.  *Neill  v.  Commissioner  of  Patents, 
C.   D.   1898,  82  O.  G.  749. 

181.  Where  appellant  claimed  that  patents 
were  wrongly  granted  to  E.  and  after  he 
had  adopted  E.'s  claims  his  application  should 
have  been  placed  in  interference  with  E.,  Held, 
that  whether  the  grant  of  E.'s  patents  was 
right  or  wrong  or  capable  of  satisfactory  ex- 
planation and  whether  an  interference  should 
be  declared  are  matters  not  within  the  juris- 
diction of  the  court  of  appeals  of  the  Dis- 
trict of  Columbia.    *Id. 

182.  If  the  court  of  appeals  of  the  District 
of  Columbia  had  a  right  to  inquire  into  the 
propriety  of  the  issue  of  the  patents  to  E.,  and 
it  was  plain  that  an  error  had  been  committed 
therein,  that  would  not  excuse  a  similar  error 
in  favor  of  the  appellant  in  order  that  he 
might  be  put  in  interference  with  him.    *Id. 

183.  Appeals  do  not  lie  to  this  court  from 
all  or  any  preliminary  decisions  in  matters  of 
interference,  though  seriously  affecting  the 
rights  of  the  parties,  but  only  from  those 
wherein  the  priority  of  the  claim  to  the  inven- 
tion has  been  finally  awarded.  (Westinghouse 
V.  Duncan,  C.  D.  1894,  170,  66  O.  G.  1009.) 
♦Cross  V.  Phillips,  C.  D.  1899,  87  O.  G.  1399. 

184.  Where  appeal  was  taken  to  the  court 
of  appeals  on  the  ground  that  the  commis- 
sioner of  patents  erred  (1)  in  refusing  to 
consider  whether  a  patent  granted  to  one  of 
the  parties  to  the  interference  was  for  the 
same  invention  as  that  involved  in  the  inter- 
ference and  if  so  whether  it  is  not  a  statutory 
bar  to  the  grant  of  a  patent  for  said  invention 
to  said  party;  (2)  in  holding  that  this  ques- 
tion of  a  statutory  bar  was  an  ex  forte  one 
and  therefore  not  involved  in  the  interfer- 
ence; (3)  in  declining  to  consider  whether 
an  application  as  filed  disclosed  the  invention 
in  controversy,  and  (4)  in  refusing  to  hold 
that  the  subject-matter  of  the  interference 
was  inserted  in  one  of  the  applications  by 
amendment  after  the  application  had  been  filed 
in  the  patent  office  and  subsequently  to  the  ap- 
plication filed  by  the  other  party,  upon  which 
his  patent  had  issued,  Held,  that  these  ques- 
tions are  of  a  preliminary  nature  and  do  not 
arise  for  consideration  by  the  court  of  ap- 
peals upon  a  decision  by  the  commissioner  of 
patents  in  an  interference  case.  *Hulett  v. 
Long,  C.  D.  1899,  89  O.  G.  1141. 

185.  Held,  further,  that  the  mode  of  raising 
these    questions    in    the    patent    office    and    of 


their  determination  therein  is  specially  pro- 
vided for  and  prescribed  by  Rules  122,  124, 
and  126  of  the  Rules  of  Practice  of  that  of- 
fice.   *Id. 

186.  The  appeal  allowed  to  the  court  of  ap- 
peals for  the  District  of  Columbia  by  the  act 
of  congress  of  February  9,  1893,  in  cases  of 
interference  is  for  the  purpose  of  having  the 
final  decision  of  the  commissioner  of  patents 
on  the  question  of  priority  of  invention  re- 
viewed and  determined  as  that  question  is 
contemplated  and  provided  for  in  section 
4904,  Revised  Statutes,  and  not  for  the  pur- 
pose of  having  decisions  upon  collateral  or 
interlocutory  questions  reviewed  and  decided. 
*Id. 

187.  If  all  collateral  and  interlocutory  pro- 
ceedings in  the  patent  office  were  subjects  of 
appeal  to  the  court  of  appeals  the  proceedings 
for  patents  might  be  made  almost  intermin- 
able, to  say  nothing  of  the  enormous  costs 
that  would  be  incurred  in  prosecuting  and 
defending  against  such  appeals.     *Id. 

188.  Where  it  was  urged  on  appeal  to  the 
court  of  appeals  from  the  decision  of  the  com- 
missioner in  an  interference  case  that  the 
application  of  one  of  the  parties  as  originally 
filed  did  not  claim  or  disclose  the  subject- 
matter  of  the  interference  and  that  the  mat- 
ter of  interference  is  new  matter  put  in  the 
case  by  amendment  since  the  original  appli- 
cation was  filed,  and  therefore  said  party  had 
no  right  to  make  the  claim  in  issue,  and  that 
he  could  not  be  given  the  benefit  of  construc- 
tive reduction  to  practice  as  of  the  date  of 
filing  his  original  application.  Held,  that  this 
is  a  preliminary  question  which  has  been  dis- 
posed of  by  the  tribunals  of  the  oflfice  on  mo- 
tion to  dissolve  under  Rule  123.     *Id. 

189.  The  court  should  not  be  called  upon 
to  decide  priority  between  rival  claimants  to 
an  invention  where  the  patent  oflfice  expressly 
reserves  for  future  consideration  the  ques- 
tion of  patentability  of  the  invention.  It  is 
not  the  province  of  the  court  to  decide  moot 
causes.  *01iver  v.  Felbel,  C.  D.  1902,  100  O. 
G.  2384. 

190.  Patentability  of  the  invention  is  a  nec- 
essary prerequisite  to  the  declaration  of  an 
interference,  and  the  court  is  without  juris- 
diction in  a  case  where  there  is  not  a  final 
favorable  decision  on  that  question  by  the 
patent  office.     *Id. 

191.  Where  a  question  as  to  the  patenta- 
bility of  the  invention  is  raised  by  some  tribu- 
nal of  the  patent  office  after  the  declaration 


INTERFERENCE,  IV,  (g). 


181 


of  an  interference.  Held,  that  it  should  be 
finally  settled  before  a  decision  on  priority  is 
rendered  which  entitles  the  defeated  party  to 
appeal  to  the  court.    *Id. 

192.  Where  the  commissioner  in  considering 
the  question  of  priority  dissolves  the  inter- 
ference as  to  some  of  the  counts,  Held,  that 
it  is  not  within  the  province  of  the  court  of 
appeals  to  review  his  order  in  that  regard. 
♦Hillard  v.  Brooks,  C.  D.  1904,  111  O.  G.  302. 

193.  Where  the  examiners-in-chief  express- 
ed the  opinion  that  some  of  the  counts  were 
anticipated  by  a  patent  issued  to  other  parties 
and  the  commissioner  did  not  adopt  their 
recommendation.  Held,  that  that  question  is 
nnt  for  the  court  of  appeals  to  consider.  ♦Id. 

194.  Where  an  interference  is  before  the 
court  of  appeals  on  appeal  from  the  decision 
of  the  commissioner  of  patents.  Held,  that  the 
court  cannot  and  should  not  interfere  with 
the  rulings  of  the  patent  office  upon  inter- 
locutory matters  that  occurred  in  the  office 
during  the  pendency  of  the  cause,  such  as 
motions  for  rehearing,  motions  to  vacate 
orders  and  to  remand  the  cause,  which  have 
no  reference  to  the  merits  of  the  controversy, 
unless  perhaps  in  extreme  cases  it  should  be 
necessary  for  the  maintenance  of  the  juris- 
diction of  the  court.  *Ritter  v.  Krakau  and 
Connor,  Jr.,  C.  D.  190.5,  114  O.  G.   1553. 

195.  Where  the  primary  examiner  has  held 
claims  to  be  patentable  and  the  examiner  of 
interferences  and  the  examiners-in-chief  have 
omitted  or  declined  to  call  the  attention  of 
the  commissioner  to  the  unpatentability  of  the 
issue  or  where  the  commissioner  has  declined 
to  review  the  decision  of  the  primary  exam- 
iner after  his  attention  has  been  called  to  the 
alleged  unpatentability  of  the  issue,  the  court 
of  appeals  of  the  District  of  Columbia  should 
hold  the  question  of  patentability  to  be  set- 
tled, except  in  an  extraordinary  case.  The 
statute  does  not  provide  for  an  appeal  to  the 
court  from  a  ruling  by  the  commissioner  or  of 
any  subordinate  tribunals  affirming  the  patent- 
ability of  a  claimed  invention.  It  is  only  from 
a  decision  adverse  to  the  patentability  of  a 
claim  that  an  appeal  will  lie.  *Sobey  v. 
Holsclaw,  C.  D.  1907,  126  O.  G.  3041. 

196.  On  an  appeal  from  the  commissioner 
of  patents  to  the  court  of  appeals  of  the  Dis- 
trict of  Columbia  on  the  question  of  priority 
of  invention  the  court  has  no  power  to  hold 
that  the  commissioner  has  committed  an  error 
for  which  a  case  should  be  reversed  because 
of  a  claim  that  he  refused  to  permit  counsel 


to  be  heard  in  support  of  a  given  contention. 
The  court  cannot  in  such  a  proceeding  con- 
trol his  action  in  a  discretionary  matter  such 
as  the  extent  of  oral  argument  he  will  permit 
at  a  hearing  of  an  interference.     *Id. 

197.  After  an  adverse  decision  by  the  pri- 
mary examiner  upon  a  motion  to  dissolve  de- 
cisions on  priority  were  rendered  by  the  ex- 
aminer of  interferences  and  the  examiners-in- 
chief  and  appeal  was  taken  to  the  commis- 
sioner of  patents  from  the  latter  decision. 
Pending  this  appeal  a  successor  of  the  pri- 
mary examiner  requested  jurisdiction  of  the 
interference  for  the  purpose  of  considering 
the  patentability  of  the  issue.  Such  request 
was  granted,  and  the  primary  examiner  dis- 
solved the  interference  upon  the  ground  that 
the  issue  was  not  patentable.  Upon  petition  to 
the  commissioner  the  decision  of  the  primary 
examiner  was  set  aside  and  the  interference 
was  restored  to  its  prior  condition  of  appeal 
to  the  commissioner  on  priority.  On  appeal 
to  the  court  of  appeals  from  the  decision  of 
the  commissioner.  Held,  that  the  regularity 
of  the  action  of  the  commissioner  in  setting 
aside  the  decision  of  the  primary  e.xaminer 
dissolving  the  interference  is  not  a  question 
for  the  consideration  of  the  court.  *Mell  v. 
Midgely,  C.  D.  1908,  136  O.  G.  1534. 

198.  The  question  of  the  patentability  of 
the  issue  of  an  interference  is  not  a  jurisdic- 
tional one,  and  the  court  of  appeals  of  the 
District  of  Columbia  will  not  review  the  ac- 
tion of  the  patent  office  holding  the  issue  pat- 
entable, but  will  confine  its  consideration  to 
the  question  of  priority.  *Johnson  v.  Mueser, 
C.    D.   1909,  145  O.   G.  764. 

199.  Where  a  party  fails  to  test  before  the 
proper  tribunal  in  the  patent  office  the  pro- 
priety of  the  declaration  of  the  interference 
or  the  opponent's  right  to  make  the  claims  of 
the  issue,  Held,  that  these  questions  will  not 
be  reviewed  on  appeal.  *McFarland  v.  Wat- 
son and  Watson,  C.  D.  1909,  146  O.  G.  257. 

200.  .\fter  a  decision  on  priority  has  been 
rendered  by  the  commissioner  and  notice  of 
appeal  to  the  court  of  appeals  of  the  District 
of  Columbia  has  been  given,  the  filing  of  a 
model  alleged  to  have  been  made  in  accord- 
ance with  the  drawings  of  the  application  of 
one  of  the  parties  will  not  be  permitted,  nor 
will  such  model  be  certified  to  the  court  of 
appeals  as  part  of  the  record.  Otis  v.  Ingolds- 
by  and  Bowling,  C.  D.  1910.  1.50  O.  G.  569. 

201.  Where  in  an  interference  involving 
more   than   two  parties   the   commissioner   of 


182 


INTERFERENCE,  IV,  (h),  1,  2. 


patents  decides  that  one  of  the  parties  is  not 
the  first  inventor,  Held,  that  such  decision 
is  final  and  appealable  to  the  court  of  appeals 
of  the  District  of  Columbia.  *Cosper  v.  Gold 
&  Gold,  Cosper  v.  Gold,  C.  D.  1911,  168  O. 
G.  787. 

(h)   Limit  jar. 
1.  In  General. 

202.  In  all  decisions  from  which  an  appeal 
may  be  taken  and  heard  inter  partes  a  limit 
of  appeal  should  be  set.  (Painter  v.  Hall,  C. 
D.  1898,  91,  8:;  O.  G.  1801!,  modified.)  Hutin 
and  Leblanc  v.  Steinmetz  v.  Scott  v.  Fairfax, 

C.  D.  1901,  97  O.  G.  2743. 

203.  Where  on  a  reference  to  them  to  de- 
termine the  right  of  a  party  to  a  patent  under 
the  practice  announced  in  Snider  v.  Bunnell 
(ante,  117,  lo.i  O.  G.  890)  the  examiners-in- 
chief  render  a  decision  adverse  to  the  party's 
right,  Held,  that  a  limit  of  appeal  should  be 
set.  Robinson  v.  Copeland,  C.  D.  1903,  105 
O.  G.  263. 

204.  A  stay  of  proceedings  after  decision 
does  not  have  the  effect  of  extending  the  time 
fixed  as  the  limit  of  appeal,  but  merely  stops 
the  running  of  the  time  during  the  stay.  The 
balance  of  the  time  originally  fixed  commence 
to  run  as  soon  as  the  stay  is  at  an  end.  Black- 
man  V.  Alexander,  C.  D.  1903,  105  O.  G.  2059. 

205.  Where  a  stay  of  proceedings  is  granted 
after  a  decision,  Held,  that  it  is  not  necessary 
to  fi.x  a  new  limit  of  appeal  when  the  stay  is 
at  an  end.  The  defeated  party  has  for  appeal 
that  part  of  the  time  originally  set  which  re- 
mained when  the  stay  was  granted.     Id. 

206.  Where  a  stay  of  proceedings  is  grant- 
ed pending  a  decision  on  a  motion,  notice  of 
the  decision  is  notice  of  the  resumption  of 
proceedings.     No  further  notice  is  given.     Id. 

207.  Held,  that  a  limit  of  appeal  should  be 
set,  as  in  decisions  on  motions  to  dissolve, 
where  an  interference  is  referred  for  decision 
under  the  practice  of   Snider  v.   Bunnell,    (C. 

D.  1903,  117,  103  O.  G.  890).  Judd  v.  Camp- 
bell, C.  D.   1904,  110  O.  G.  2016. 

208.  Where  but  one  of  the  parties  to  an 
interference  is  denied  the  right  to  make  a 
claim.  Held,  that  the  other  party,  whose  claims 
are  not  in  any  way  affected  by  the  decision, 
has  no  right  of  appeal.     Id. 

209.  The  filing  of  a  petition  that  the  com- 
missioner exercise  his  supervisory  authority 
to  dissolve  the  interference  will  not  stay  the 
limit  of  appeal  from  a  decision  as  to  priority 


of  invention.     Kletzker  &  Goesel   v.  Dodson, 
C.  D.   1904,  109  O.  G.  1336. 

210.  Where  an  action  is  required  to  be 
taken  w-ithin  a  certain  time  after  a  decision. 
Held,  that  the  date  of  the  decision  and  not 
the  date  of  the  receipt  of  notice  governs.    Id. 

211.  A  suspension  of  proceedings  after  de- 
cision does  not  have  the  effect  of  extending 
the  time  fixed  as  the  limit  of  appeal,  but  only 
stops  the  running  of  the  time  during  the  sus- 
pension. The  balance  of  the  time  originally 
fixed  commences  to  run  as  soon  as  the  pro- 
ceedings are  resumed.  Greuter  v.  Mathieu, 
C.   D.   1904,   112  O.  G.  253. 

212.  Where  an  action  is  required  to  be 
taken  within  a  certain  time  after  a  decision, 
the  date  of  the  decision  and  not  the  date  of 
the  receipt  of  the  notice  of  the  same  is  what 
governs  in  computing  the  time.  Greuter  v. 
Mathieu,  C.  D.  1904,  112  O.  G.  254. 

213.  A  motion  for  rehearing  of  a  decision 
does  not  operate  as  a  stay  of  the  running 
of  the  time  in  which  an  appeal  from  that  deci- 
sion should  be  taken.  Cole  v.  Zarbock  v. 
Greene,  C.  D.  1905,  110  O.  G.  1451. 

214.  If  the  fixing  of  the  time  for  appeals 
in  the  patent  office  at  the  minimum  time  fixed 
by  law  may  work  injustice,  the  remedy  would 
seem  to  be  an  amendment  of  the  rules,  rather 
than  consideration  of  specific  cases,  fin  re 
Wenzelmann  and  Overholt,  C.  D.  1906,  123  O. 
G.  995. 

215.  The  bringing  of  motions  or  the  taking 
of  petitions  to  the  commissioner  will  not  stay 
the  running  of  the  limit  of  appeal  from  a  de- 
cision on  priority.  Pym  v.  Hadaway,  C.  D. 
1907,  131  O.  G.  f.92. 

2.  Expired. 

216.  Appeals  upon  interlocutory  matters 
should  not  be  accepted  after  the  expiration 
of  the  limit  of  appeal.  The  decision  of  a 
lower  tribunal  in  such  matters  should  not  be 
set  aside  except  upon  a  clear  showing  of 
error.  Ozias  v.  Stimpson,  C.  D.  1898,  83  O. 
G.  295. 

217.  Where  the  examiner  of  interferences 
refuses  to  transmit  to  the  primary  examiner 
a  motion  to  amend  an  application  and  no  ap- 
peal is  taken  from  that  action,  but  one  month 
after  the  limit  of  appeal  has  expired  the  party 
files  a  petition  to  the  commissioner  asking  that 
the  case  be  transmitted.  Held,  that  the  peti- 
tion will  not  be  considered  except  upon  a 
showing  of  a  sufficient  excuse  for  the  delay 


INTERFERENCE,  IV,  (h),  2. 


183 


in   filing  the   appeal.     Robinson   v.   Copeland, 
C.  D.   1901,  97  O.  G.  2531. 

218.  Where  after  the  limit  of  appeal  from 
the  examiner's  decision  has  expired  a  party 
attempts  to  bring  the  matter  before  the  com- 
missioner for  review  and  shows  that  the  no- 
tice of  decision  was  sent  by  the  office  in  care 
of  parties  who  were  not  his  attorneys  in  fact 
and  that  he  did  not  receive  such  decision, 
Held,  that  the  matter  will  be  considered.     Id. 

219.  Where  a  motion  was  filed  within  the 
limit  of  appeal  and  to  accommodate  counsel 
was  noticed  for  hearing  two  days  after  the 
limit  had  expired.  Held,  that  the  jurisdiction 
of  the  examiner  of  interferences  will  be  re- 
stored to  consider  the  motion.  Jean  and 
Goode  V.  Hitchcock,  C.  D.  1902,  100  O.  G. 
3011. 

220.  Where  after  the  limit  of  appeal  on  the 
question  of  priority  has  expired  motion  is 
made  for  an  extension  of  time  because  of 
negotiations  pending  between  the  parties. 
Held,  that  the  motion  will  be  denied.  Brunker 
V.  Schweigerer.  C.  D.  1903,  104  O.  G.  2148. 

221.  Where  an  appeal  is  filed  after  the  limit 
of  appeal  has  expired,  the  case  should  not  be 
placed  upon  the  docket  for  hearing,  and  the 
appellant  should  be  notified  that  his  appeal  is 
too  late.  Blackman  v.  Alexander,  C.  D.  1903, 
105  O.  G.  2059. 

222.  Where  an  appeal  from  the  decision  of 
the  examiner  of  interferences  is  not  filed 
within  the  limit  fixed.  Held,  that  the  examin- 
ers-in-chief have  no  jurisdiction  to  entertain 
the  appeal,  although  they  may  think  the  ex- 
cuse for  the  delay  is  satisfactory.     Id. 

223.  Where  it  is  desired  to  take  an  appeal 
after  the  limit  of  appeal  has  expired,  mo- 
tion should  be  made  before  the  commissioner 
to  extend  the  limit  of  appeal  and  should  be 
supported  by  a  showing  of  good  reasons.     Id. 

224.  Where  the  limit  of  appeal  from  his 
judgment  has  expired,  the  jurisdiction  of  the 
examiner  of  interferences  to  reconsider  the 
matter  can  be  restored  only  by  a  motion  be- 
fore the  commissioner  for  that  purpose. 
Hoegle  v.  Gordon,  C.  D.  1904,  108  O.  G.  797. 

225.  Where  a  party  by  filing  a  motion  to 
reopen  and  by  having  his  motion  granted  to 
suspend  proceedings  immediately  obtains  an 
extension  of  time,  within  which  time  he  had 
a  right  to  delay  filing  an  appeal.  Held,  that 
while  he  had  a  right  to  take  the  full  limit 
of  time  technically  allowed  him  he  will  not 
be  heard  to  complain  if  he  is  bound  tech- 
nically when  he  takes  action  outside  the  time 


allowed.    Greuter  v.  Mathieu,  C.  D.  1904,  112 
O.  G.  253. 

226.  Where  an  appeal  is  taken  outside  the 
limit  of  appeal,  a  motion  to  restore  jurisdic- 
tion for  the  purpose  of  having  the  appeal 
considered  should  accompany  the  appeal. 
(Blackman  v.  Alexander,  C.  D.  1903,  288,  105 
O.  G.  2059.)     Id. 

227.  .^n  appeal  from  a  decision  on  motion 
will  not  be  entertained  and  considered  tiMiir 
pro  tutu  after  the  limit  of  appeal  has  ex- 
pired because  of  a  showing  that  it  was  the 
intention  to  appeal  and  the  failure  was  due 
to  a  misunderstanding  between  attorneys. 
Gerdom  v.  Ehrhardt,  C.  D.  1905,  116  O.  G. 
595. 

228.  Large  amount  of  business  requiring 
the  attorneys'  attention  and  negligence  of  at- 
torneys' clerks  in  bringing  the  case  to  the 
attorneys'  attention.  Held,  not  such  exception- 
al circumstances  as  will  justify  consideration 
of  appeal  brought  after  expiration  of  limit 
fixed  therefor.  Brissenden  v.  Roesch,  C.  D. 
1905,   118  O.   G.  2253. 

229.  A  petition  to  extend  the  limit  of  ap- 
peal to  include  an  appeal  filed  after  the  ex- 
piration thereof  must  be  supported  by  a  veri- 
fied showing  in  excuse  for  the  delay.  (Ex 
parte  Kletzker  and  Goesel  v.  Dodson,  C.  D. 
1904,  100,  109  O.  G.  1336.)  Autenrieth  and 
Kane  v.  Sorensen,  C.  D.  1906,  120  O.  G.  2126. 

230.  Held,  upon  appeal  from  the  action  of 
the  commissioner  of  patents  refusing  to  admit 
an  appeal  in  an  interference  proceeding  filed 
after  the  limit  of  appeal  had  expired  that  the 
question  presented  was  one  for  the  discre- 
tion of  the  commissioner  and  in  the  absence 
of  abuse  of  discretion  or  violation  of  a  law 
or  rule  that  the  Secretary  of  the  Interior 
should  decline  to  entertain  the  appeal,  tin 
re  Wenzelmann  &  Overholt,  C.  D.  1906,  123 
O.  G.  995. 

231.  .\  delay  of  three  and  a  half  months  in 
taking  an  appeal  from  a  primary  examiner's 
decision  holding  that  there  was  no  interfer- 
ence in  fact  cannot  be  excused  on  the  ground 
that  the  opposing  party  is  a  patentee,  and  that 
therefore  the  delay  will  not  injure  him.  Par- 
ties are  not  excused  from  compliance  with 
the  requirements  of  good  practice  because  in 
their  opinions  opponents  are  not  thereby  in- 
jured. Howell  V.  Hess,  C.  D.  1906,  122  O.  G. 
2393. 

232.  Where  the  examiners-in-chief  affirmed 
the  decision  of  the  primary  examiner  dissolv- 
ing the  interference  and  set  a  limit  of  appeal 


184 


INTERFERENCE,  IV,  (h),  3. 


and  T.  filed  a  motion  before  the  examiner  of 
interferences  for  an  extension  of  said  limit 
of  appeal,  which  was  dismissed  on  the  ground 
that  he  was  without  authority  to  extend  the 
hmit  of  appeal  from  the  decision  of  the  ex- 
aminers-in-chief, Held,  not  to  warrant  rein- 
stating the  interference  and  extending  the 
limit  of  appeal  to  include  an  appeal  subse- 
quently filed,  and  that  in  delaying  to  file  his 
appeal  and  in  filing  instead  a  motion  for  ex- 
tension of  the  limit  of  appeal  T.  assumed  the 
risk  of  the  possible  failure  of  said  motion. 
Townsend  v.  Ehret,  C.  D.  1906,  125  O.  G. 
2or.i. 

233.  It  is  the  practice  to  extend  the  time  for 
appeal  to  include  appeals  filed  after  the  ex- 
piration thereof  only  under  unusual  and  ex- 
ceptional circumstances.    Id. 

234.  After  the  expiration  of  a  limit  of  ap- 
peal a  motion  to  extend  the  limit  will  not  be 
entertained  except  upon  a  verified  showing  in 
excuse  for  the  delay.  Thullen  v.  Young  and 
Townsend,  C.  D.  1906,  120  O.  G.  904. 

235.  A  party  is  not  justified  in  delaying  the 
filing  of  his  appeal  beyond  the  limit  fixed 
therefor  because  a  request  for  rehearing  has 
been  made.  Felsing  v.  Nelson,  C.  D.  1906, 
121  O.  G.  1347. 

236.  A  motion  to  extend  the  limit  of  appeal 
to  include  an  appeal  filed  about  three  weeks 
after  the  expiration  of  the  limit  of  appeal, 
supported  by  affidavits  tending  to  excuse  the 
delay,  granted,  where  it  appeared  that  the 
granting  of  the  motion  was  not  opposed  and 
that  the  appeal  might  be  heard  with  an  appeal 
filed  by  the  opposing  party,  to  whom  no  delay 
would  therefore  result.  Normand  v.  Krim- 
melbein,  C.  D.  1907,  126  O.  G.  757. 

237.  It  is  the  practice  for  the  commissioner 
to  consider  in  person  a  motion  to  extend  the 
limit  of  appeal  to  include  an  appeal  to  the 
examiners-in-chief  filed  after  the  expiration 
of  the  limit  of  appeal  rather  than  to  restore 
jurisdiction  to  the  examiner  of  interferences 
for  this  purpose.     Id. 

238.  Judgment  in  an  interference  proceed- 
ing will  not  be  made  final  by  the  patent  office 
after  the  filing  of  a  notice  of  appeal  to  the 
court  of  appeals  of  the  District  of  Columbia 
and  pending  such  appeal,  on  the  ground  that 
such  notice  was  filed  one  day  outside  the 
forty-day  period  set  by  the  rules  of  that  court 
for  filing  notice  of  appeal,  it  being  regarded 
as  within  the  discretion  of  the  court  to  waive 
a  strict  adherence  to  the  rule  and  to  entertain 
the  appeal  notwithstanding  the  delay  in  filing 


the  notice.     Proutt  v.  Johnston  and  Johnston, 
C.   D.  1907,  130  O.  G.  2718. 

239.  A  long  and  unexcused  delay  in  filing  an 
appeal  constitutes  a  sufficient  reason  for  deny- 
ing an  extension  of  the  limit  of  appeal. 
(Hewitt  V.  Steinmetz,  C.  D.  1906,  174,  122  O. 
G.  i:i95.)  Adkins  and  Lewis  v.  Lieberger, 
C.  D.  1907,  127  O.  G.  1578. 

240.  An  appeal  filed  after  the  expiration  of 
the  limit  of  appeal  will  be  entertained  only  in 
very  unusual  and  extraordinary  circumstances. 
McKeen  v.  Jerdone,  C.  D.  1908,  134  O.  G. 
2027. 

241.  An  appeal  filed  after  the  expiration  of 
the  limit  of  appeal  will  be  entertained  only 
under  very  unusual  and  e.xtraordinary  cir- 
cumstances. McKenzie  v.  McTammany  v. 
Garrett,  C.  D.  1911,  173  O.  G.  583. 

3.  Extending. 

242.  The  office  is  not  bound  by  the  strict 
rules  of  practice  that  obtain  in  the  courts  and 
may  extend  the  limit  of  appeal  in  a  proper 
case  even  after  the  time  first  set  has  expired. 
Trevette  v.  Dieter,  C.  D.  1898,  84  O.  G.  128:'.. 

243.  The  examiner  of  interferences  may 
himself  extend  the  limit  of  appeal  in  a  proper 
case,  and  it  is  not  necessary  to  first  make  a 
motion  before  the  commissioner  to  restore  to 
him  jurisdiction  of  the  interference.  The  de- 
cisions in  Garrison  v.  Hiibner  (C.  D.  1891,  59, 
54  O.  G.  1889)  and  Guerrant  v.  Cable  v.  Coflfee 
(C.  D.  1892,  205,  61  O.  G.  285)  modified.    Id. 

244.  The  office  has  no  authority  to  extend 
the  limit  of  appeal  from  a  commissioner's  de- 
cision to  the  court  of  appeals  of  the  District 
of  Columbia,  for  the  reason  that  the  limit  of 
appeal  is  fixed  by  the  rules  of  said  court. 
Clement  v.  Richards  v.  Meissner,  C.  D.  1904, 
in  O.  G.  1626. 

245.  Where  the  defeated  party  to  an  inter- 
ference resided  abroad  and  the  limit  of  ap- 
peal set  was  to  short  to  enable  his  attorney 
to  obtain  instructions  from  him.  Held,  that 
the  examiner  of  interferences  properly  ex- 
tended the  limit  of  appeaj.  Wilderman  v. 
Simm,  C.  D.  1904,  109  O.  G.  275. 

246.  The  time  within  which  an  appeal  must 
be  taken  from  his  decision  rests  largely  within 
the  discretion  of  the  examiner  of  interfer- 
ences, it  being  required  merely  that  under  all 
the  circumstances  of  the  case  such  time  must 
be  reasonable.     Id. 

247.  Where  the  case  of  the  defeated  party 
is  supported  only  by  the  testimony  of  one  of 


INTERFERENCE,  V,  VI,  VII,  (a). 


183 


the  joint  inventors,  it  is  clear  that  he  cannot 
prevail  on  appeal.  Held,  therefore,  that  to 
extend  the  limit  of  appeal  vifould  serve  no  use- 
ful purpose,  vk-ould  result  in  expense  and 
delay,  and  would  be  unjust  to  the  oposing 
party.  Kletzker  and  Doesel  v.  Dodson,  C.  D. 
1904,   109   O.   G.    1336. 

248.  Where  a  motion  is  made  to  extend  the 
limit  of  appeal  and  it  is  not  supported  by  a 
verified  showing  of  the  reasons  for  delay. 
Held,  that  it  will  not  be  dismissed.  Kletzker 
and  Goesel  v.  Dodson,  Id. 

249.  The  right  of  appeal  does  not  stand 
upon  the  same  footing  as  the  right  to  a  hear- 
ing and  decision  in  the  first  instance,  and  or- 
dinarily the  rules  must  be  strictly  complied 
with  to  have  a  decision  reviewed  by  an  appel- 
late tribunal.     Id. 

250.  The  showing  made  in  support  of  a 
motion  to  extend  the  limit  of  appeal,  Held,  to 
present  no  circumstances  of  such  an  unusual 
and  extraordinary  nature  as  would  justify 
granting  the  extension.  McKenzie  v.  McTaiu- 
many  v.  Garrett,  C.  D.  1911,  172  O.  G.  "j83. 

V.  Assignees. 
(See  Assignees.) 

251.  Where  an  equitable  owner  of  an  ap- 
plication involved  in  interference  petitioned 
to  defend  the  interference,  as  applicant  would 
not  do  so.  Held,  that  there  being  no  assign- 
ment of  record  and  it  appearing  that  the  re- 
spective rights  of  the  parties  have  been  sub- 
mitted for  settlement  to  a  competent  court  it 
is  not  wise  for  this  office  to  do  more  than 
preserve  the  rights  of  the  parties  so  far  as  it 
is  able.  Reiner  v.  Macphail,  C.  D.  1899,  89  O. 
G.  -)21. 

252.  Held,  further,  that  the  applicant  has  the 
right  to  conduct  the  interference  by  an  attor- 
ney of  his  own  selection.    Id. 

253.  Held,  further,  that  under  all  the  cir- 
cumstances of  the  case  the  equitable  owner  is 
entitled  to  be  kept  fully  informed  of  the 
status  of  the  interference  and  to  be  furnished 
copies  of  the  interference  proceedings.     Id. 

254.  Where  it  appeared  that  an  applicant 
declined  to  make  a  preliminary  statement  and 
such  preliminary  statement  was  executed  by 
the  assignee  of  the  entire  interest.  Held,  that 
such  a  statement  should  be  accepted,  although 
there  was  no  motion  made  that  the  assignee 
instead  of  the  inventor  should  be  permitted  to 
file  the  statement.  Hastings  v.  Gallagher,  C. 
D.   1900,  93  O.   G.   189. 


VI.  Addition  ok  Parties. 

255.  After  a  decision  by  the  examiners-in- 
chief  and  the  commissioner  upon  the  question 
of  priority  of  invention  it  is  too  late  to  add  a 
new  party  to  the  interference.  Corry  and 
Barker  v.  Trout,  C.  D.  1902,  99  O.  G.  2547. 

256.  Where  an  application  contained  some 
of  the  claims  of  an  interference  issue,  but 
other  claiins  included  in  the  interference  were 
not  made  and  could  not  be  made  in  that  ap- 
plication. Held,  that  said  application  could  not 
be  put  in  that  interference.  E.x  parte  Adams, 
C.  D.  1905,  119  O.  G.  650. 

257.  Where  inventor  makes  an  assignment 
in  one  of  his  two  applications  which  contain 
certain  claims  in  common  and  the  other  ap- 
plication is  put  into  an  interference  upon  these 
claims,  Held,  that  the  assigned  application  will 
nut  thereafter  be  put  into  that  interference  or 
into  another  interference  with  the  same  appli- 
cation upon  these  claims.    Id. 

258.  Where  inventor  makes  assignment  in 
one  of  his  two  applications  containing  claims 
in  common  and  the  other  application  is  put  in 
interference  on  these  claims,  Held,  that  which 
application  shall  be  allowed  may  be  deter- 
mined after  conclusion  of  the  interference. 
Id. 

259.  Where  inventor  makes  assignment  in 
one  of  his  two  applications  which  contain  cer- 
tain claims  in  common  and  the  other  appli- 
cation is  put  into  an  interference  upon  these 
claims,  Held,  that  the  right  of  the  assignee  to 
take  part  in  the  interference  may  be  deter- 
mined upon  motion  made  in  the  interference. 
Id. 

VII.  Burden  of  Proof. 
(a)  hi  General. 

260.  In  questions  of  priority  of  invention 
in  matters  of  interference  the  party  first  mak- 
ing application  for  patent  has  a  prima  facie 
case  as  against  a  junior  applicant.  The  onus 
of  proof  is  upon  the  latter,  and  unless  the 
onus  is  fully  discharged  the  senior  applicant 
must    prevail.     *Hunter    v.    Stikeman,    C.    D. 

1898,  8:>  O.  G.  610. 

261.  To  overcome  a  case  made  by  an  earlier 
application  the  same  weight  of  evidence  is  not 
required  as  in  criminal  cases.  It  is  only  nec- 
essary that  the  burden  of  proof  should  be  sus- 
tained by  the  junior  applicant  by  a  preponder- 
ance of  testimony.     *Estey  v.  Newton,  C.  D. 

1899,  8C  O.  G.  799. 


186 


INTERFERENCE,  VII,  (a). 


262.  Upon  him  who  would  overcome  the 
presumption  that  to  the  person  who  has  first 
reduced  to  practice  belongs  the  merit  also  of 
priority  of  conception,  the  burden  rests  of 
doing  so  by  satisfactory  evidence.  *Bader  v. 
Vajen,  C.  D.  1899,  87  O.  G.  1235. 

263.  Where  Vajen  swore  to  the  disclosure 
which  evidences  his  alleged  conception  of  the 
invention  and  Bader  denied  that  disclosure, 
which  is  not  claimed  to  have  been  made  to  any 
other  person  than  himself,  Held,  that  the  ut- 
most that  can  be  said  in  favor  of  Vajen  is 
that  the  testimony  is  balanced.     *Id. 

264.  Where  a  party  claims  to  have  produced 
the  hinge  of  the  issue  and  to  have  appreciated 
its  value  and  utility,  but  according  to  his  own 
showing  laid  it  aside  and  did  nothing  in  the 
matter  for  three  years  and  a  half,  although 
his  company  was  engaged  in  manufacturing 
hinges  and  he  knew,  during  a  part  at  least  of 
the  time,  that  a  rival  company  was  putting 
substantially  the  same  hinge  on  the  market. 
Held,  that  his  conduct  raises  a  strong  pre- 
sumption that  he  was  not  in  possession  of 
the  invention  and  makes  it  incumbent  upon 
him  to  establish  the  fact  by  evidence  so  clear 
and  convincing  as  to  leave  no  reasonable 
doubt  in  the  matter.  *Tyler  v.  St.  Amand,  C. 
D.  1901,  94  O.  G.  1969. 

265.  Where  A.'s  application  was  on  file  and 
involved  in  an  interference  in  which  L.  testi- 
fied as  a  witness  and  L.  thereafter  at  the  in- 
stance of  the  other  party  to  the  interference 
filed  an  application  in  his  own  name.  Held, 
that  the  burden  of  proof  is  strongly  on  him. 
♦Lloyd  v.  Antisdel,  C.  D.  1901,  9.1  O.  G.  1G4.5. 

266.  Where  L.  knew  of  a  controversy  be- 
tween A.  and  another  party  in  regard  to  the 
invention  at  issue  and  to  assist  A.  in  that  con- 
troversy executed  an  afiidavit  as  to  when  the 
invention  was  made.  Held,  that  it  was  then 
and  there  the  duty  of  L.  to  assert  his  rights 
to  the  invention  if  he  believed  himself  to  be 
the  inventor  of  it.    ♦Id. 

267.  Where  the  evidence  is  conflicting  and 
very  unsatisfactory  and  the  onus  of  proof  is 
upon  Austin,  Held,  that  the  decision  of  the 
assistant  commissioner  in  favor  of  Johnson 
and  Fry  is  the  only  rational  conclusion  which 
could  be  reached.  ♦Austin  v.  Johnson  et  al.,  C. 
D.  1901,  9.5  O.  G.  2685. 

268.  Where  in  so  far  as  the  office  records 
go  one  party  appears  to  be  the  first  inventor 
of  the  combination  in  controversy.  Held,  that 
the  burden  of  establishing  a  different  state  of 


facts    should    be    placed    upon    his    opponent. 
Sheppard  v.  Webb,  C.  D.  1901,  96  O.  G.  1647. 

269.  H.  being  the  first  to  reduce  to  practice 
and  the  first  to  apply  to  the  office  must  be  pre- 
sumed to  be  an  original  inventor  of  the  ma- 
chine which  it  is  conceded  he  built  and  oper- 
ated and  for  which  he  was  the  first  to  make 
an  application  for  a  patent.  F.  controverts 
this  right  of  H.,  and  it  is  incumbent  upon  him 
to  show  by  clear  and  indubitable  proof  that 
the  presumption  in  favor  of  H.  is  not  well 
founded  and  that  the  right  is  in  himself. 
Such  proof  F.  has  failed  to  produce,  and 
priority  of  invention  is  therefore  awarded  to 
H.  ♦Funk  V.  Matteson  v.  Haines,  C.  D.  1902, 
100  O.  G.  1764. 

270.  Held,  that  the  controversy  turned  en- 
tirely upon  the  facts  in  evidence ;  that  in  ad- 
dition to  the  burden  imposed  upon  him  by 
the  patents  regularly  issued  to  Crone,  Bauer 
has  that  of  overcoming  the  effect  of  the  suc- 
cessive adverse  decisions  in  the  patent  office; 
that  the  evidence  on  behalf  of  Bauer  is  un- 
certain, fraught  with  suspension,  and  cannot 
be  accepted  as  sufficient  proof  of  the  facts 
essential  to  establish  the  appellant's  averments, 
either  as  originally  made  or  as  sought  to  be 
amended,  and  that  the  decision  of  the  com- 
missioner must  be  affirmed.  ♦Bauer  v.  Crone, 
C.  D.  1906,  120  O.  G.  1824. 

271.  The  question  of  shifting  the  burden  of 
proof  is  a  matter  within  the  jurisdiction  of 
the  examiner  of  interferences  and  not  the 
primary  examiner,  and  there  is  no  appeal  from 
his  decision  prior  to  final  judgment.  (Raulet 
and  Nicholson  v.  Adams,  C.  D.  1905,  55,  114 
O.  G.  1827.)  Scott  V.  Southgate,  C.  D.  1906, 
121  O.  G.  689. 

272.  Held,  that  it  is  the  duty  of  any  party 
to  an  interference  proceeding  upon  whom  the 
burden  of  producing  evidence  may  fall  to  dis- 
charge that  duty,  if  he  would  prevail,  by 
proofs  full,  clear,  and  specific  of  the  essential 
features  of  his  case,  or  if  such  proofs  cannot 
be  produced,  to  furnish  satisfactory  reasons 
in  excuse;  otherwise  he  must  ordinarily  lose, 
for  specific  inferences  cannot  be  drawn  with 
any  reasonable  degree  of  certainty  from  the 
general  statements  of  witnesses  in  these  cases, 
nor  should  the  burden  of  disproving  the  truth 
of  specific  matters  claimed  by  a  party  to  be  de- 
ducible  from  the  testimony  which  he  has  pro- 
duced be  placed  upon  an  applicant  where 
said  party  or  his  witnesses  have  not  by  spe- 
cific   statements    in    their    testimony    affirmed 


INTERFERENCE,  VII,  (b). 


187 


the    truth    of    such     matters.      Robinson     v. 
Thresher,  C.  D.  1906,  123  O.  G.  2637. 

(b)   Patentee  i'.  Al>t>licant. 

273.  The  fact  that  an  applicant  delayed  fil- 
ing his  application  for  two  years  after  the 
issue  of  the  patent  with  which  his  applica- 
tion was  put  into  interference  is  a  circum- 
stance sufficient  of  itself  to  require  that  all 
doubts  in  the  contest  should  be  resolved 
against  him.  Guilbert  v.  Killinger,  C.  D. 
1898,  82  O.  G.  1")61. 

274.  Where  an  applicant  comes  into  the 
patent  office  to  overthrow  a  prior  patent,  he 
assumes  the  position,  with  all  its  burdens,  of 
a  defendant  in  a  suit  who  sets  up  to  defeat 
the  right  of  a  plaintiff,  the  want  of  novelty 
and  invention  covered  by  the  patent  held  by 
the  plaintiff,  or  the  fact  of  existence  of  prior- 
ity of  invention  by  the  defendant  or  some 
third  person  having  a  right  to  the  invention 
superior  to  that  claimed  by  the  plaintiff.  ♦Wil- 
liams v.   Ogle,  C.   D.   1899,  87  O.  G.   1958. 

275.  Elwell,  the  junior  party  and  patentee, 
filed  his  application  January  20,  1890,  and 
Ruete  filed  November  6,  1896.  To  overcome 
Elwell's  case,  Ruete  alleged  conception  on 
January  17,  1895,  and  reduction  in  February 
or  March,  1895.  Held,  that  Ruete,  on  whom 
was  the  burden  of  proof  and  who  under  the 
rules  is  required  to  prove  his  case  by  evidence 
so  cogent  as  to  leave  no  reasonable  doubt,  has 
failed  to  discharge  the  onus  placed  upon  him, 
and  priority  is  therefore  awarded  to  Elwell. 
(The  decision  of  the  commissioner  of  patents, 
Ruete  v.  Elwell,  65  MS.  Dec,  256,  affirmed.) 
*Reute  v.  Elwell,  C.  D.  1899,  87  O.  G.  2119. 

276.  On  an  issue  of  priority  of  invention, 
constructive  reduction  to  practice  of  the  in- 
vention by  simply  filing  an  application  for  pat- 
ent and  having  it  allowed,  or  by  filing  an 
allowable  application  for  patent,  does  not  in 
any  manner  change  or  enlarge  the  right  of 
such  applicant  as  against  a  prior  inventor  of 
the  same  or  a  similar  invention,  and  which 
is  made  the  subject  of  an  issue  of  interfer- 
ence, though  such  prior  inventor  may  be  sub- 
sequent in  filing  an  application.  *Christensen 
V.  Noyes,  C.  D.  1900,  90  O.  G.  227. 

277.  The  first  applicant  in  such  case  becomes 
the  senior  party  in  the  declaration  of  inter- 
ference, and  his  prior  application  imposes  the 
burden  of  proof  upon  the  junior  party  or  sub- 
sequent applicant  in  trying  the  issue  of  prior- 
ity;  but   in   no   other   respect   does   the   mere 


constructive  reduction  to  practice  by  a  subse- 
quent inventor  subordinate  or  affect  a  prior 
invention,  and  this  rule  in  regard  to  the  bur- 
den of  proof  does  not  apply  as  against  a  pat- 
entee whose  patent  has  been  regularly  and 
lawfully  issued  in  due  course  of  proceeding. 
*Id. 

278.  A  subsisting  patent,  lawfully  issued, 
cannot  be  invalidated  or  in  any  manner  affect- 
ed by  any  subsequent  proceeding  in  the  patent 
office,  even  to  the  extent  of  imposing  the  bur- 
den of  proof  upon  its  holder  that  it  was  law- 
fully issued,  and  it  is  the  express  provision  of 
the  statute  that  no  person  has  a  right  to  "ob- 
tain a  patent  for  that  which  was  in  fact  in- 
vented by  another,  who  was  using  reasonable 
diligence  in  adapting  and  perfecting  the  same," 
or  unless  the  latter  has  abandoned  his  inven- 
tion.   *Id. 

279.  Where  the  burden  is  upon  a  party  to 
establish  his  case  beyond  a  reasonable  doubt 
by  reason  of  a  previously  granted  patent  to 
his  opponent,  Held,  that  doubts  raised  by  con- 
tradictions and  uncertainty  in  the  testimony 
cannot  be  removed  by  conjecture  or  any  plaus- 
ible theory  as  to  the  probability  of  the  situa- 
tion. Mere  preponderance  of  evidence  in  his 
favor  is  insufficient.  Nielson  v.  Bradshaw, 
C.  D.  1900,  91  O.  G.  644. 

280.  Upon  a  review  of  the  testimony.  Held. 
that  the  presumption  founded  upon  the  pat- 
ent of  the  senior  party  more  than  counter- 
balances all  the  evidence  produced  for  the 
junior  party  and  applicant,  and  the  decision 
of  the  commissioner  awarding  priority  to  the 
patentee  affirmed.  *Locke  v.  Boch,  C.  D.  1900, 
93  O.   G.    1722. 

281.  In  trying  the  question  of  priority  of 
invention  in  an  interference  case  between  an 
applicant  and  a  patentee  the  principle  to  be 
applied  is  substantially  analogous  to  that 
which  is  applicable  in  a  case  of  infringement 
where  the  defense  is  that  the  patentee  is  not 
the  original  and  first  inventor.  In  all  such 
cases  it  is  a  fundamental  principle  of  patent 
law  that  to  invalidate  or  supersede  a  patent 
by  prior  invention  the  proof  must  establish  the 
fact  beyond  reasonable  doubt.     *Id. 

282.  Although  the  preponderance  of  evi- 
dence may  be  with  the  appellant.  Held,  that  he 
has  not  established  his  case  beyond  a  reason- 
able doubt,  and  therefore  the  decision  of  the 
commissioner  of  patents  awarding  priority  of 
invention  to  the  appellee  affirmed.     *Id. 

283.  VVhere  the  junior  party  has  a  patent  to 
contend   with  and  he  was  induced  to  tile  his 


188 


INTERFERENCE,  VII,  (b). 


application  by  a  perusal  of  that  patent,  Held. 
that  the  burden  of  proving  his  case  beyond  a 
reasonable  doubt  is  upon  him.  *Kelly  v.  Fynn, 
C.   D.   1900,  92   O.  G.   1237. 

284.  Where  one  party  holds  a  patent  grant- 
ed before  the  other's  application  was  filed,  he 
is  entitled  to  insist  that  every  reasonable  doubt 
should  be  resolved  against  his  oponent.  The 
principle  involved  is  analogous  to  that  raised 
by  the  defense  of  prior  invention  in  a  suit  in 
a  court  for  the  infringement  of  a  patent. 
Kelly  V.  Fynn,  C.  D.  1900,  92  O.  G.  1233. 

285.  Where  Read  was  the  first  to  file  his 
application,  and  while  it  was  pending  Miehle's 
application  went  to  patent.  Held,  that  Read  is 
the  senior  applicant  and  entitled  to  all  of  the 
advantages  which  his  earlier  application  gives 
him.  *Miehle  v.  Read,  C.  D.  1901,  96  O.  G. 
426. 

286.  There  is  no  tendency  toward  laxity  in 
the  application  of  the  rule  that  a  conclusive 
weight  of  evidence  is  necessary  to  establish 
priority  on  the  part  of  an  applicant  to  over- 
come a  regular  and  formal  patent  granted  to 
his  opponent.  *Sharer  v.  McHenry,  C.  D. 
1902,  98  O.  G.  585. 

287.  Where  an  applicant  is  placed  in  inter- 
ference with  a  previously-granted  patent,  the 
burden  is  upon  him  to  show  beyond  a  reason- 
able doubt  that  he  is  the  first  and  original  in- 
ventor of  the  matter  in  controversy.  *Gedge 
V.  Cromwell,  C.  D.  1902,  98  O.  G.  1486. 

288.  Where  an  applicant  is  in  interference 
with  a  patent  granted  before  his  application 
was  filed.  Held,  that  it  is  necessary  for  him 
to  prove  his  case  beyond  a  reasonable  doubt. 
♦Meyer  v.  Sarfert,  C.  D.  1903,  102  O.  G.  1555. 

289.  The  burden  of  proof  is  heavily  cast 
upon  an  applicant  who  is  placed  in  interfer- 
ence with  a  patentee  when  the  application  was 
not  filed  until  after  the  date  of  the  grant  of 
the  patent.  *Gallagher  v.  Hastings,  C.  D.  1903, 
103  O.  G.  1165. 

290.  Where  the  applicant  claims  to  have 
conceived  the  invention  and  to  have  disclosed 
it  to  the  patentee  and  there  is  but  one  reduc- 
tion to  practice — that  of  the  patentee — and  the 
testimony  of  the  applicant  is  clear  and  un- 
shaken by  cross-examination,  it  is  sufficient 
for  a  time  to  overcome  the  burden  of  proof 
imposed  upon  the  applicant  and  compel  his 
adversary  to  account  for  his  claim  of  the 
invention.    *Id. 

291.  Where  an  applicant  is  involved  in  in- 
terference  with    a   previously-granted    patent, 


Held,  that  the  burden  is  upon  him  to  prove  his 
case  beyond  a  reasonable  doubt.  *Dashiell  v. 
Tasker,  C.  D.  1903,  103  O.  G.  2174. 

292.  To  the  heavy  burden  imposed  by  the 
established  rule  of  law  upon  one  who  seeks 
to  overcome  the  right  of  an  adversary  found- 
ed on  a  patent  issued  before  the  filing  of  his 
own  application  is  superadded  the  necessity 
of  making  out  a  very  clear  case  of  error  by 
reason  of  the  concurrence  of  all  of  the  tri- 
bunals of  the  patent  office  in  deciding  against 
the  sufficiency  of  his  evidence  to  prove  this 
reduction  to  practice.  (Howard  v.  Hey,  C.  D. 
1901,  375,  95  O.  G.  1647,  18  .\pp.  D.  C.  142, 
146.)  *Macdonald  v.  Edison,  C.  D.  1903,  105 
O.  G.  1263. 

293.  Where  a  patent  is  granted  and  there  is 
on  file  in  the  patent  office  another  applica- 
tion for  the  same  invention,  which  application 
has  never  been  forfeited  or  abandoned  and 
which  was  pending  when  the  patent  was 
granted,  and  an  interference  is  subsequently 
declared  between  the  patent  and  the  applica- 
tion. Held,  that  the  patent  was  inadvertently 
granted,  and  the  two  parties  in  the  interfer- 
ence proceeding  are  to  be  treated  as  applicants 
with  copending  applications.  Wurts  v.  Har- 
rington (C.  D.  1897,  3.59,  79  O.  G.  337).  Wat- 
son V.  Thomas,  C.  D.  1903,  106  O.  G.  1776. 

294.  Where  a  patent  is  inadvertently  grant- 
ed to  a  later  applicant  while  the  application 
of  the  other  party  to  the  interference  is  pend- 
ing in  the  patent  office,  Held,  that  the  patentee 
can  derive  no  advantage  from  the  fact  that 
his  patent  has  issued.  *SchafFer  v.  Dolan,  C. 
D.    1904,   108   O.    G.   2146. 

295.  Where  an  applicant  for  patent  is  in  in- 
terference with  a  previously-granted  patent, 
the  burden  is  upon  the  applicant  to  prove  his 
case  beyond  a  reasonable  doubt.  *Sendelbach 
V.  Gillette,  C.  D.  1904,  109  O.  G.  270. 

296.  Where  L.'s  patent  was  granted  while 
S.'s  application  was  pending  disclosing,  but 
not  claiming,  the  invention,  and  S.  subsequent- 
ly files  a  divisional  application  claiming  the 
invention  and  is  placed  in  interference,  Held, 
that  the  burden  of  proof  is  on  L.,  since  he  was 
the  last  to  file.  Lowry  v.  Spoon,  C.  D.  1904, 
110  O.  G.  858. 

297.  Where  C,  a  patentee,  alleges  a  concep- 
tion of  the  invention  in  February,  1901,  and 
it  is  shown  by  clear  and  convincing  testimony 
that  K.  reduced  the  invention  to  practice  prior 
to  that  date.  Held,  that  K.  has  overcome  the 
burden  of  proof  that  is  upon  him  by  reason 
of  the  grant  of  a  patent  to  C.  and  that  K.  is 


INTERFERENCE,  VII,  (c). 


189 


entitled  to  the  award  of  priority  of  invention. 
Kyle  V.  Corner,  C.  D.  1904,  113  O.  G.  2216. 

298.  Where  a  patent  is  inadvertently  grant- 
ed on  an  application  pending  contemporane- 
ously with  a  pending  application  of  another 
party.  Held,  that  the  patentee  gains  no  advan- 
tage in  an  interference  proceeding  and  that 
the  patentee  being  last  to  file,  is  the  junior 
party  in  the  proceeding.  *Furman  v.  Dean, 
C.  D.  1905,  114  O.  G.  1352. 

299.  Where  the  senior  party  was  a  patentee, 
but  the  application  of  the  junior  party  was 
pending  when  the  patent  issued.  Held,  that  no 
benefit  accrued  to  the  senior  party  from  his 
possession  of  a  patent  in  respect  to  the  bur- 
den of  proof  imposed  upon  his  adversary. 
*PauI  V.  Hess,  C.  D.  1905,  115  O.  G.  251. 

300.  Where  the  senior  party  relies  upon  his 
record  date,  the  burden  is  upon  the  junior 
party  to  show  reduction  to  practice  preceding 
that  date  or  else  earlier  conception  followed 
with  due  diligence  to  reduction  to  practice, 
cither  actual  or  constructive.    *Id. 

301.  When  an  interference  is  declared  be- 
tween a  patent  granted  prior  to  the  date  of 
filing  of  an  interfering  application,  Held, 
that  if  the  applicant  is  to  prevail  he  must 
establish  his  case  by  proofs  which  admit  of 
no   reasonable   doubt.      (Sharer   v.   McHenry, 

C.  D.  1902,  .503.  98  O.  G.  585;  Meyer  v.  Sar- 
fert,  C.  D.  1903,  .529,  102  O.  G.  1155.)  French 
V.  Halcomb,  C.  D.  1905,  115  O.  G.  506. 

302.  Where  a  party  files  his  application  after 
the  issue  of  his  opponent's  patent  and  he 
copies  the  claims  of  that  patent,  Held,  that  the 
burden  is  on  him  to  prove  his  case  beyond  a 
reasonable  doubt.  *Cherney  v.  Clauss,  C.  D. 
1005.  116  O.  G.  597. 

303.  Where  B.,  the  junior  party  to  an  in- 
terference, files  his  application  for  a  patent 
after  the  senior  party,  C,  has  obtained  patents 
for  the  invention  in  controversy,  it  is  incum- 
bent upon  B.,  if  he  is  to  prevail,  to  establish 
his  case  by  proof  which  will  admit  of  no  rea- 
sonable doubt.  (Sharer  v.  McHenry,  C.  D. 
1902,  503,  98  O.  G.  585.)     Bauer  v.  Crone,  C. 

D.  1905,  118  O.  G.  1071. 

304.  An  applicant  in  interference  with  a 
patent  granted  before  the  filing  of  the  appli- 
cation has  the  burden  of  proving  his  case  be- 
yond a  reasonable  doubt,  and  this  burden  is 
not  discharged  where  the  testimony  merely 
raises  a  doubt  as  to  which  of  the  two  parties 
made  the  invention  or  whether  a  third  party 
may   not   have  contributed   the   essential   idea 


which   led  to  the   invention.     French  v.   Hal- 
comb,  C.  D.  1906,  120  O.  G.  1824. 

305.  Where  the  junior  party's  application 
was  pending  when  the  senior  party's  patent 
was  granted,  the  senior  party  does  not  there- 
by gain  any  advantage  with  respect  to  the 
burden  of  proof.  The  patent  was  irregularly 
issued,  and  the  junior  party  need  only  prove 
his  case  by  a  preponderance  of  evidence.  ♦An- 
drews V.  Nilson,  C.  D.  1906,  123  O.  G.  1667. 

306.  In  an  interference  between  an  appli- 
cation and  a  patent  granted  prior  to  the  filing 
of  the  application  the  burden  is  upon  the  ap- 
plicant to  prove  his  case  beyond  a  reasonable 
doubt,  and  where  the  question  is  one  of  orig- 
inality and  the  evidence  on  behalf  of  the  ap- 
plicant is  not  convincing  priority  should  be 
awarded  to  his  opponent.  Kreag  v.  Geen,  C. 
D.  1906,  124  O.  G.  1208. 

307.  Where  a  patent  is  inadvertently  issued, 
while  an  application  by  another  is  pending, 
without  an  interference,  no  advantage  accrues 
to  the  patentee  on  the  question  of  burden  of 
proof.  *CutIer  v.  Leonard,  C.  D.  1908,  136  O. 
G.  438. 

(c)  Earlier  Af^ff'cations  or  Patent  Disclosing 
Issue. 

308.  A  reissue  applicant  is  entitled  to  the 
date  of  his  original  application  as  his  date  of 
filing  in  determining  the  question  of  burden 
of  proof  under  Rule  116.  Walsh  v.  Hallbauer, 
C.  D.  1899,  88  O.  G.  2409. 

309.  Where  the  real  contention  on  which  a 
motion  is  based  is  that  the  matter  in  issue  was 
not  disclosed  in  one  party's  case  as  originally 
filed,  Held,  that  the  question  involves  the 
merits  and  that  it  cannot  be  changed  into  one 
which  is  reviewable  by  the  commissioner  on 
appeal  by  merely  misnaming  the  action  and 
calling  it  a  motion  to  shift  the  burden  of 
proof.    Id. 

310.  Where  a  patent  discloses  an  invention. 
Held,  that  the  patent  being  part  of  the  records 
of  the  patent  office  it  is  the  duty  of  the  of- 
fice to  take  notice  of  said  disclosure.  (Fair- 
fax V.  Hutin  et  al.  v.  Patten  v.  Steinmetz  v. 
Scott.  C.  D.  1898,  246,  85  O.  G.  1222.)  Meyer 
V.  Sarfest.  C.  D.  1901,  96  O.  G.  1037. 

311.  The  subsequent  grant  of  a  patent  to  one 
party  does  not  affect  the  disclosure  in  the 
previous  grant  to  another  party.  The  burden 
of  proof  should  not  be  on  the  party  who  first 
discloses  the  invention.     Id. 


190 


INTERFERENCE,  VII,  (d). 


312.  The  words  "their  completed  apphca- 
tion"  used  in  Rule  116  are  not  limited  to  mean 
only  the  application  involved  in  the  interfer- 
ence. They  refer  to  any  completed  applica- 
tion in  which  the  invention  is  disclosed,  by 
means  of  which  judgment  of  priority  would 
necessarily  be  rendered  in  favor  of  the  party 
so  disclosing,  provided  no  testimony  was 
taken.     (Rule  114.)     Id. 

313.  Where  M.  has  been  granted  a  patent 
which  fully  discloses  the  inventions  in  issue, 
so  that  priority  of  invention  would  be  award- 
ed to  him  should  no  testimony  be  taken,  and 
after  the  grant  of  the  same  files  applications 
for  patents  on  said  disclosed  inventions,  the 
claims  of  the  issue  having  been  held  to  be  pat- 
entable in  said  applications,  and  said  applica- 
tions are  placed  in  interference  with  previous- 
ly-granted patents  to  S.  which  were  granted 
subsequently  to  the  grant  of  the  patent  to  M., 
Held,  that  M.  being  the  first  to  disclose  the 
invention,  as  shown  by  the  records  of  the 
patent  office,  so  that  priority  of  invention 
would  be  awarded  to  M.  should  no  testimony 
be  taken,  the  burden  of  proof  should  be  on  S. 
Id. 

314.  Where  a  prior  pending  application  of 
one  party  fully  discloses  the  issue  in  contro- 
versy and  the  claims  of  the  issue  could  have 
been  made  therein,  if  desired,  instead  of  claims 
to  another  form,  Held,  that  such  application 
is  an  office  record  showing  that  he  was  in  pos- 
session of  the  invention  at  that  time,  and 
therefore  he  is  entitled  to  the  benefit  of  its 
date  in  determining  upon  whom  the  burden 
of  proof  shall  rest.  Sheppard  v.  Webb,  C.  D. 
1901,  96  O.  G.    1647. 

315.  Where  the  application  in  interference 
is  not,  strictly  speaking,  a  division  of  a  pre- 
vious application,  since  the  devices  disclosed 
contain  specific  differences  in  structure,  but 
both  embody  the  combination  in  controversy. 
Held,  that  the  applicant  is  entitled  to  the  date 
of  the  original  case  under  Rule  116.    Id. 

316.  Where  an  interference  is  declared  be- 
tween an  application  and  a  patent  granted  be- 
fore the  filing  of  the  application  and  the  ap- 
plicant introduces  in  evidence  a  prior  applica- 
tion which  was  filed  before  the  grant  of  the 
patent  and  which  discloses  the  subject-matter 
of  the  later  application  involved  in  interfer- 
ence, Held,  that  the  applicant  has  merely  to 
establish  his  case  by  a  preponderance  of  evi- 
dence and  not  by  evidence  beyond  a  reason- 
able doubt.  Spaulding  v.  Norden,  C.  D.  1904, 
112  O.  G.  2091. 


317.  Where  'no  motion  to  shift  the  burden 
of  proof  is  made  and  where  such  motion  is 
denied,  the  party  may  introduce  his  alleged 
earlier  applications  in  evidence  as  a  part  of 
his  proofs.  Raulet  and  Nicholson  v.  Adams, 
C.  D.  1905,  114  O.  G.  827. 

318.  Where  the  burden  of  proof  is  heavy 
upon  the  applicant  as  being  both  the  junior 
in  the  office  and  being  required  to  overcome 
the  effect  of  a  patent  in  the  hands  of  his  oppo- 
nent, Held,  that  an  earlier  application  filed  by 
the  applicant  cannot  lighten  this  burden  of 
proof  where  such  application  does  not  dis- 
close the  issue.  *Norden  v.  Spaulding,  C.  D. 
190.5,  114  O.  G.  1828. 

(d)  Shifting. 

319.  In  order  to  warrant  the  transmission  to 
the  primary  examiner  of  a  motion  to  shift 
the  burden  of  proof,  it  need  only  contain  the 
grounds  on  which  the  motion  is  made  and 
need  not  set  up  the  reasons  or  facts  relied  on 
unless  those  facts  are  outside  the  record. 
Sheppard  v.  Webb,  C.  D.  1901,  94  O.  G.  1577. 

320.  When  access  to  such  earlier  application 
was  at  first  refused  and  was  finally  granted 
after  repeated  requests  had  been  made.  Held, 
that  a  motion  to  shift  the  burden  of  proof 
brought  by  the  junior  party  soon  after  such 
access  was  granted  was  brought  without  un- 
reasonable delay  and  should  be  transmitted  to 
the  primary  examiner.  Dittgen  v.  Parmentcr, 
C.  D.  1902,  98  O.  G.  1707. 

321.  The  burden  of  proof  in  an  interfer- 
ence may  be  shifted  without  dissolving  and  re- 
declaring  the  interference.  Dinker  v.  D'Olier, 
C.   D.   1904,   113  O.  G.  2507. 

322.  As  the  question  of  shifting  the  burden 
of  proof  relates  to  a  matter  of  evidence, 
which  should  be  determined  in  the  first  in- 
stance by  the  examiner  of  interferences.  Held, 
that  such  motions  should  be  made  before  that 
tribunal  and  that  there  is  no  appeal  prior  to 
the  appeal  on  the  final  decision  upon  the  ques- 
tion of  priority  of  invention.  Raulet  and 
Nicholson  v.  Adams,  ante,  55,  114  O.  G.  1827; 
Fennell  v.  Brown  v.  Borsch,  Jr.,  C  D.  1905, 
115  O.  G.  1328. 

323.  No  appeal  is  permitted  prior  to  final 
judgment  on  a  motion  to  shift  the  burden  of 
proof,  and  any  supposed  error  in  the  decision 
thereon  will  be  reviewed  in  connection  with 
the  decision  upon  the  question  of  priority  of 
invention.  McGill  v.  Adams,  C.  D.  1905,  119 
O.  G.  1259. 


INTERFERENCE,  VII,  (e),  (f). 


191 


324.  Motion  to  shift  the  burden  of  proof 
should  be  made  before  and  decided  bj'  the 
examiner  of  interferences.  Raulet  and  Nich- 
olson V.  Adams,  C.  D.  190.5,  114  O.  G.  1827. 

325.  Where  a  motion  to  shift  the  burden  of 
proof  is  denied,  the  alleged  record  evidence 
of  earlier  invention  may  be  introduced  as  part 
of  the  proofs.  Osborne  v.  Armstrong,  C.  D. 
1905,  114  O.  G.  2091. 

326.  Where  appeal  was  taken  from  action  of 
primary  examiner  denying  motion  to  shift 
burden  of  proof,  Held,  that  the  appeal  would 
not  be  considered  and  that  the  case  would  be 
remanded  to  the  examiner  of  interferences  for 
decision.  Fisher  v.  Daugherty,  C.  D.  lOO.j, 
118  O.  G.  insi. 

327.  Where  appeal  was  taken  from  action 
of  primary  examiner  denying  motion  to  shift 
burden  of  proof,  Held,  that  the  appeal  would 
not  be  considered  and  that  the  case  would  be 
remanded  to  the  examiner  of  interferences  for 
decision.  Duryea  and  White  v.  Rice,  C.  D. 
1905,  118  O.  G.  2249. 

328.  From  a  refusal  of  the  examiner  of  in- 
terferences to  grant  a  motion  to  shift  the 
burden  of  proof  no  appeal  lies  (Rule  122)  ; 
but  the  question  will  be  considered  at  final 
hearing  on  priority.  Hewitt  v.  Thomas  v. 
Kruh  V.  Weintraub.  C.  D.  1906,  122  O.  G.  1045. 

329.  No  appeal  lies  from  a  decision  of  the 
examiner  of  interferences  on  a  motion  to  shift 
the  burden  of  proof.  (Rule  122.)  Duke- 
smith  V.  Corrington  v.  Turner,  C.  D.  1906,  125 
O.  G.  348. 

330.  It  is  well  settled  that  the  question  of 
placing  the  burden  of  proof  rests  in  the  dis- 
cretion of  the  examiner  of  interferences,  and 
his  decision  on  a  motion  to  shift  the  burden  of 
proof  will  be  reviewed  only  in  a  clear  case  of 
an  abuse  of  that  discretion.  Young  v.  Town- 
send  V.  Thullen,  C.  D.  1908,  134  O.  G.  1804. 

331.  Rule  122,  providing  that  there  shall  be 
no  appeal  from  decisions  on  motions  to  shift 
the  burden  of  proof,  applies  also  to  cases 
where  such  a  motion  is  made  in  response  to  a 
rule  to  show  cause  and  judgment  on  the  rec- 
ord results  from  the  decision  of  the  examiner 
of  interferences  on  such  motion.  Barney  v. 
Hess,  C.  D.  1910,  158  O.  G.  702. 

(e)   On  Party  Last  to  File. 

332.  No  statutory  drawing  having  been  filed 
by  Palmer  and  Thompson  until  after  the  com- 
plete application  of  Bailey  was  filed,  the  bur- 
den of  proof  in  the  interference  is  upon  Pal- 


mer and  Thompson.     Palmer  and  Thompson 
v.  Bailey,  C.  D.  1898,  83  O.  G.  1267. 

333.  The  rules  of  the  office  require  that  in 
order  to  constitute  a  complete  application  a 
drawing  must  be  filed  whenever  the  nature  of 
the  case  admits.  Until  a  drawing  is  filed  the 
application  is  not  complete.  Until  an  applica- 
tion is  completed  by  filing  all  the  necessary 
papers  and  the  payment  of  the  fee  it  cannot 
be  examined,  nor  can  it  be  placed  in  interfer- 
ence.   Id. 

334.  Where  T.  did  not  file  his  application 
for  a  patent  until  fourteen  months  after  K.'s 
application  was  filed,  although  he  knew  of  K.'s 
application  and  claim  to  the  invention,  Held. 
that  the  presumption  is  in  favor  of  K.,  and 
the  burden  is  upon  T.  to  prove  his  case  by 
full  and  satisfactory  evidence.  *Tyler  v. 
Kelch,  C.  D.  1902,  98  O.  G.  1282. 

335.  H.  being  the  senior  party,  the  first  to 
apply  to  the  patent  office,  has  prima  facie  the 
priority  of  right,  and  the  onus  of  proof  is  upon 
any  junior  applicant  to  show  not  only  priority 
of  invention,  but  he  must  also  show  that  he 
has  used  reasonable  diligence  in  adopting  and 
perfecting  his  invention,  for  in  such  a  case 
the  mere  conception  without  actual  reduction 
to  practice  within  a  reasonable  time  does  not 
avail  a  junior  party  making  the  claim.  *Funk 
V.  Matteson  v.  Haines,  C.  D.  1902,  100  O.  G. 
1764. 

336.  Where  the  burden  of  proof  is  upon  the 
junior  party,  who  is  the  first  to  conceive,  Held. 
that  it  is  as  necessary  for  him  to  affirmatively 
show  that  he  was  diligent  as  it  is  for  him  to 
affirmatively  show  conception  and  reduction 
to  practice.  Watson  v.  Thomas,  C.  D.  1903, 
lofi  O.  G.  1776. 

337.  Held,  that  the  evidence  on  behalf  of 
Flora  is  not  sufficient  to  sustain  the  onus  of 
proof  upon  him  due  to  his  later  filing  date, 
and  therefore  the  decision  adjudging  Powrie 
the  first  inventor  affirmed.  *FIora  v.  Powrie, 
C.  D.  1904,  109  O.  G.  2443. 

338.  The  burden  of  establishing  priority  im- 
posed upon  TurnbuU  as  the  last  to  file  appli- 
cation has,  under  the  settled  rule,  been  greatly 
increased  by  the  concurring  decisions  of  the 
several  tribunals  of  the  patent  office  in  favor 
of  his  opponent.  *Turnbull  v.  Curtis,  C.  D. 
1906,  123  O.  G.  2312. 

(f)   On  Party  Last  to  Claim. 

339.  Where  an  interference  was  originally 
declared  under  Rule  116.  which  provided  that 


193 


INTERFERENCE,  VIII. 


the  last  to  make  the  particular  claim  in  issue 
was  the  junior  party,  and  the  rule  remained 
in  force  until  February  9,  1897,  when  it  was 
changed  to  make  it  possible  for  P.,  upon  mo- 
tion duly  made,  to  shift  his  position  from  that 
of  junior  party  to  rank  next  below  a  patentee, 
and  by  a  modification  of  the  rule  on  April  19, 
1897,  it  was  possible  for  him  to  become  the 
senior  party,  Held,  that  although  F.  did  not 
make  a  motion  to  shift  the  burden  of  proof 
until  long  after  he  knew  of  the  change  in  the 
practice  mere  delay  in  asserting  his  right  under 
the  changed  rule  cannot  count  against  him. 
Fairfax  v.  Hutin  and  Leblanc  v.  Patten  v. 
Steinmctz  v.  Scott,  C.  D.  1898,  8.5  O.  G.  1222. 

340.  Held,  that  there  is  no  rule  of  practice 
which  compels  a  party  to  an  interference  who 
under  the  rule  in  force  at  the  time  when  the 
interference  was  declared  was  made  the  junior 
party  to  assert  his  right  to  be  made  a  senior 
party  at  any  given  time  after  the  rules  have 
been  so  changed  that  he  is  entitled  to  be  treat- 
ed and  in  fact  is  treated  by  the  amended  rule 
as  a  senior  party.    Id. 

341.  Where  any  one  of  the  parties  to  an  in- 
terference is  entitled  to  file  a  given  motion 
and  all  refrain  from  so  doing,  the  laches,  if 
any,  should  not  count  for  or  against  any  one 
of  the  parties.     Id. 

VIII.  Chancinc  Scope  of  Application  to  Ob- 
tain Interference. 

342.  While  it  is  permissible  to  amend  an  ap- 
plication after  the  issue  of  a  patent  so  as  tn 
provoke  an  interference  with  such  patent 
where  the  application  as  originally  filed  dis- 
closed the  invention,  such  amendment  should 
not  be  permitted  where  the  invention  itself  is 
sought  to  be  changed  by  such  amendment. 
Grinnell   v.   Buel,  C.  D.  1899,  89  O.  G.   186,3. 

343.  Wood,  the  senior  party,  filed  his  ap- 
plication on  October  28,  1893.  Bechman,  the 
junior  party,  filed  on  October  26,  189.5.  The 
interference  was  declared  on  the  broad  issue, 
which  was  covered  by  a  broad  claim  made  by 
Bechman  when  he  filed  his  application.  Wood, 
however,  did  not  make  the  broad  claim  until 
.^pril  29,  1896.  The  testimony  shows  that 
Wood  was  the  first  to  conceive  of  the  inven- 
tion and  that  Bechman  did  not  in  any  manner 
reduce  it  to  practice  prior  to  Wood's  filing 
date.  Held,  that  if  the  broad  claim  is  patent- 
able it  must  belong  to  the  first  inventor  of  the 
specific  machine,  if  to  any  one,  and  that  one 
is  Wood.     It  certainly  cannot  be  allowed  to 


any  subsequent  inventor  of  any  other  specific 
mechanism.  *  Bechman  v.  Wood,  C.  D.  1899, 
89  O.  G.  2459. 

344.  Held,  further,  that  the  broad  claim  is 
not  patentable  to  either  party — not  to  Bech- 
man, because  he  was  not  the  first  to  invent  an 
"independent  transferring  mechanism"  in 
printing  machines  in  the  combination  de- 
scribed ;  not  to  Wood,  because  he  did  not  make 
tlie  claim  before  his  rival  made  the  discovery 
of  his  own  patentable  invention.     *Id. 

345.  Held,  further,  that  it  is  not  competent 
for  Wood,  who  had  failed  to  make  a  broad 
claim  and  thus  left  the  field  open  for  other 
specific  inventions  than  his  own,  to  seek  to 
control  all  such  specific  inventions  by  pro- 
curing a  patent  on  the  broad  claim  which  he 
did  not  advance  prior  to  the  making  thereof 
by  Bechman.  If  the  broad  claim  could  be 
held  to  be  patentable  to  Wood,  the  effect  of 
a  patent  upon  it  to  him  would  be  unjustly 
retroactive,  for  it  would  sweep  within  its  con- 
trol all  specific  inventions  in  the  same  field 
made  previously  to  the  time  when  he  made  his 
claim.  (Chicago  &  Northwestern  Railway 
Co.  v.  Sayles,  C.  D.  1879,  349,  15  O.  G.  243, 
97  U.  S.  554,  cited.)     *Id. 

348.  Held,  further,  that  while  both  parties 
to  the  interference  are  or  may  be  entitled  to 
patents  for  their  respective  specific  devices 
neither  one  of  them  is  entitled  to  a  patent  for 
the  broad  claim  of  the  issue,  and  therefore 
there  should  be  no  judgment  of  priority  of 
invention  to  either  party  with  reference  to  the 
broad  claim.     *Id. 

347.  As  a  general  proposition,  the  power 
of  the  court  of  appeals  in  interference  cases 
is  limited  to  the  determination  of  the  ques- 
tion of  priority  of  invention  as  between  the 
parties  to  the  interference,  and  neither  the 
question  of  patentability  of  the  invention  nor 
the  propriety  of  the  declaration  of  interfer- 
ence is  open  to  consideration.  *Bechman  v. 
Wood,  C.  D.  1899,  89  O.  G.  2462. 

348.  Where  an  applicant  for  a  patent  has  re- 
stricted himself  in  the  first  instance  to  a  nar- 
row claim  for  a  specific  device  to  effect  a  cer- 
tain result,  and  subsequently  another  applicant 
comes  into  the  office  with  another  narrow 
claim  for  another  specific  device  to  effect  the 
same  result,  and  thereafter  the  first  applicant 
broadens  his  claim  into  a  generic  one,  so  as 
to  cover  and  dominate  all  specific  devices  to 
effect  such  result,  assuming  that  their  specific 
devices    have    actually    been    invented    in    the 


INTERFERENCE,  VIII. 


193 


order  of  their  application  to  the  office,  the  ut- 
most liberality  of  amendment  will  not  justify 
the  destruction  of  the  right  of  the  second  ap- 
plicant to  his  own  specific  device,  and  the  fact 
that  the  second  applicant  may  have  been  the 
first  to  make  the  broad  generic  claim  and  that 
the  lirst  applicant  then  broadened  his  claim 
into  generic  proportions  cannot  affect  this  con- 
clusion.    *Id. 

349.  Where  the  first  applicant  was  found 
to  be  the  true  first  and  original  inventor  of 
his  own  specific  device  and  apparently  the 
first  inventor  of  any  device  of  the  kind,  and 
the  second  applicant  was  likewise  found  to  be 
the  true  first  and  original  inventor  of  the 
specific  device  stated  in  his  application,  this 
being  the  order  of  invention.  Held,  that  the 
second  applicant  could  not  under  any  prin- 
ciple of  law  or  any  theory  of  justice  be  al- 
lowed the  broad  claim  which  would  have 
dominated  the  invention  of  his  predecessor  in 
the  field,  and  neither  could  that  predecessor 
be  allowed  the  broad  claim,  for  the  reason  that 
be  had  not  advanced  it  before  the  arrival  of 
the  other  party  on  the  field  of  invention.    Id. 

350.  Held,  further,  that  by  making  the  nar- 
row claim  for  a  specific  device  in  the  first  in- 
stance the  first  applicant  left  the  field  open 
for  all  who  would  make  other  different  de- 
vices to  accomplish  the  same  purpose,  and  it 
would  not  be  right  or  just  that  he  should 
after  the  invention  of  such  another  device  by 
another  person  be  permitted  to  go  back  and 
broaden  his  claim  so  as  to  sweep  this  second 
device  within  the  scope  of  his  own  original 
application,  even  though  the  broad  claim  might 
properly  have  been  advanced  in  the  beginning, 
and  even  though  under  other  circumstances 
he  might  have  effectively  broadened  his  claim 
in  the  course  of  the  prosecution  of  the  appli- 
cation and  procured  or  entitled  himself  to  a 
patent  for  such  broad  claim.    *Id. 

351.  If  an  inventor  comes  to  the  patent  of- 
fice with  an  application  in  which  he  first  re- 
stricts himself  to  a  narrow  claim  for  a  spe- 
cific device,  but  which  he  is  entitled  by  the 
process  of  amendment  to  broaden  into  a  gen- 
eric claim,  and  if  he  does  in  fact  so  broaden  it, 
he  may  entitle  himself  to  a  patent  for  the 
broad  claim,  unless  in  the  meantime  the  right 
of  some  other  person  has  accrued  to  some 
other  narrow  claim  for  a  similar  device  to  ef- 
fect the  same  purpose  which  would  be  domi- 
nated by  the  broader  claim  of  the  first  appli- 
cant.    It   is  not  just   that   rights   which   have 

13 


previously  accrued  should  be  overthrown  by 
amendments  subsequently  made.  Chicago  & 
Northwestern  Railway  Co.  v.  Sayles,  C.  D. 
1879,  :i-19,  15  O.  G.  243,  97  U.  S.  554,  cited.) 
*Id. 

352.  Neither  party  to  this  interference  is 
entitled  to  prevail  against  the  other  on  the 
broad  claim  of  the  issue,  the  first  being 
estopped  from  setting  it  up  against  the  second 
applicant  in  consequence  of  the  intervening 
rights  of  the  latter  to  his  own  specific  device 
and  the  second  applicant  being  precluded  from 
having  the  benefit  of  it  for  the  reason  that  he 
was  not  the  first  on  the  field  of  invention.  *Id. 

353.  The  former  decision,  holding  that  as 
Wood  did  not  advance  the  broad  claim  of 
the  issue  until  after  Bechman  had  filed  his  ap- 
plication therefor  he  is  not  entitled  to  a  judg- 
ment of  priority  for  such  broad  claim,  and 
that  neither  party  is  entitled  to  a  judgment 
of  priority  of  invention  or  to  a  patent  for  the 
broad  issue,  is  adhered  to.     *Id. 

354.  Where  in  an  interference  between  an 
application  filed  March  22,  1897,  for  the  re- 
issue  of   McBerty's  patent,  dated   August   13, 

1895,  and  an  application  of  Cook  filed  July  29, 

1896,  it  was  contended  that  Cook's  original 
application  contained  no  claim  to  the  invention 
of  the  issue,  that  not  until  five  months  there- 
after and  after  the  rejection  of  his  claims  in 
part  did  he  amend  by  setting  up  the  claims 
of  the  McBerty  patent  now  in  interference, 
and  that  consequently  he  is  estopped,  under 
Bechman  v.  Wood  (C.  D.  1899,  453  and  459, 
89  O.  G.  2459  and  2462),  from  claiming  prior- 
ity of  invention  as  against  McBerty's  subse- 
quent application  for  reissue,  Held,  that  the 
attitude  of  the  parties  is  different  from  that 
shown  in  Bechman  v.  Wood.  McBerty  did 
not  come  into  the  office  originally  after  Cook, 
but  before,  and  when  he  made  his  reissue  ap- 
plication Cook's  later  claims  had  been  made. 
He  does  not  therefore  stand  in  the  situation 
of  one  who  claims  a  specific  invention  with 
specification  and  claims  that  are  not  em- 
braced in  the  original  application  of  an  earlier 
applicant,  but  which  the  latter  seeks  by  subse- 
quent amendment  to  dominate  with  claims  that 
have  no  foundation  in  the  original  description 
of  his  invention.  *McBerty  v.  Cook,  C.  D. 
1900,  90  O.  G.  2295. 

366.  Held,  further,  that  the  amended  claims 
of  Cook  are  clearly  shown  and  described  in 
the  specification  of  his  original  application 
and    that    his   amendment   constitutes   no    de- 


194 


INTERFERENCE,  VIII. 


parture  which  would  subordinate  him  to  the 
claim  of  even  an  intervening  applicant,  as  was 
the  case  in  Bechman  v.  Wood.    *Id. 

356.  On  a  motion  to  dissolve  on  the  ground 
that  S.  has  no  right  to  make  the  claims  in 
view  of  the  decision  in  Bechman  v.  Wood, 
since  he  did  not  make  the  broad  claims  in 
issue  until  after  II.'s  application  was  filed  and 
made  them  then  only  upon  the  suggestion  of 
the  examiner,  Held,  that  under  the  clear  and 
explicit  statements  in  the  decision  itself  the 
office  would  not  be  justified  in  dissolving  the 
interference  at  this  time.     Horton  v.  Summer, 

C.  D.   1900,  93  O.  G.  2339. 

357.  Where  to  dissolve  the  interference  on 
the  ground  that  S.  has  no  right  to  make  the 
claims,  would  make  it  necessary  to  allow  the 
broad  claims  to  H.,  which  would  dominate  S.'s 
construction,  while  refusing  them  to  S.,  al- 
though as  far  as  the  record  goes  S.  appears  to 
be  the  first  inventor,  Held,  that  the  court 
clearly  did  not  contemplate  or  sanction  any 
such  action  in  its  decision.     Id. 

358.  The  question  of  estoppel  by  delay  in 
making  the  claim  is  not  a  proper  one  to  be 
raised  by  a  motion  for  dissolution,  since  ac- 
cording to  the  court's  decision  it  can  be  de- 
termined only  by  the  special  circumstances  as 
shown  by  the  proofs  and  it  is  well  settled  that 
motions  for  dissolution  should  not  be  based 
upon  proofs  taken.    Id. 

359.  Although  Tripler's  application  met  with 
various  objections  on  references  and  under- 
went frequent  amendment  to  meet  the  same. 
Held,  that  the  circumstances  do  not  bring  the 
case  within  the  doctrine  of  Bechman  t.  Wood 
(C.  D.  1899,  459,  89  O.  G.  2462).  *Ostergren 
et  al.  V.  Tripler,  C.  D.  1901,  95  O.  G.  837. 

360.  Held,  that  it  is  doubtful  if  Read  is  enti- 
tled to  make  the  claims,  since  he  appears  to 
have  so  changed  his  claims  as  to  cover  an  in- 
vention which  he  did  not  contemplate  until 
after  he  saw  Miehle's  patent.  (Bechman  v. 
Wood,  C.  D.  1899,  459,  89  O.  G.  2462.)  Miehle 
V.  Read,  C.  D.  1901,  96  O.  G.  426. 

361.  When  new  matter  is  introduced  into 
an  application,  it  cannot  be  allowed  to  domi- 
nate previous  claims  of  another  applicant;  but 
when  matter  has  been  disclosed  but  not  claim- 
ed it  is  proper  to  include  it  in  claims,  and 
they  may  take  precedence  over  the  previous 
claims  of  another  applicant.  (Bechman  v. 
Wood,  C.  D.   1899,  453,  89  O.  G.  2459,  15  App. 

D.  C.  484,  construed.)  *Luger  v.  Browning, 
C.  D.  1903,  104  O.  G.  1123. 


362.  Where  after  his  alleged  invention  of 
the  specific  process  in  controversy  M.  filed 
an  application  with  broad  claims  not  disclos- 
ing the  specific  process  and  upon  being  in- 
formed by  P.  and  C.  of  their  specific  process 
said  nothing  about  having  invented  it,  but 
thereafter  presented  claims  to  it  in  his  appli- 
cation and  filed  the  present  application  claim- 
ing it.  Held,  that  his  claim  as  the  inventor  is 
discredited.  *McKnight  v.  Pohle,  and  Cross- 
dale,  C.  D.  1903,  105  O.  G.  977. 

363.  Where  Dean's  application  was  first 
filed,  but  he  did  not  make  the  exact  claims  of 
the  issue  until  after  Furman's  patent  was 
granted,  including  them,  and  until  they  were 
suggested  to  him  by  the  examiner.  Held,  that 
Dean  is  not  estopped  from  making  the  claims. 
Furman  v.  Dean,  C.  D.  1904,  111  O.  G.  1366. 

364.  In  an  interference  with  a  patent  the 
fact  that  S.'s  original  application  the  day  it 
was  filed  did  not  contain  a  claim  in  the  words 
of  the  issue  is  immaterial,  as  under  the  provi- 
sions of  Rule  94  (2)  he  filed  an  affidavit  that 
"he  made  the  invention  before  the  patentee's 
application  was  filed,"  and  the  examiner  has 
held  that  such  original  application  disclosed 
the   invention   in   issue.     Schubert   v.   Munro, 

C.  D.  1904,  113  O.  G.  283. 

365.  The  decision  of  Bechman  v.  Wood  (C. 

D.  1899,  459,  89  O.  G.  2459)  does  not  involve 
the  question  of  the  regularity  of  the  declara- 
tion of  an  interference  or  the  right  of  one 
of  the  parties  to  make  the  claim,  but  affects 
only  the  question  of  priority  of  invention,  and 
its  effect  can  only  be  determined  after  consid- 
eration of  the  testimony  in  passing  upon  that 
question.  Gaily  v.  Brand,  C.  D.  1904,  113  O. 
G.  851. 

366.  When  new  matter  is  introduced  into  an 
application,  it  cannot  be  allowed  to  dominate 
previous  claims  of  another  applicant;  but  when 
matter  has  been  disclosed,  but  not  claimed, 
it  is  proper  to  include  it  in  claims,  and  they 
may  take  precedence  over  the  previous  claims 
of  another  applicant.     Id. 

367.  Upon  a  consideration  of  the  original 
application  and  the  entire  record  of  amend- 
ments thereto,  Held,  that  the  amendments  of 
Dodge's  claims  were  within  the  scope  of  his 
application  and  accompanying  drawings  and 
were  therefore  properly  allowed.  Seeberger  v. 
Dodge,  C.  D.  1905,  114  O.  G.  2382. 

368.  Ordinarily  where  the  point  has  been 
raised  whether  the  application  of  one  of  the 
parties  was  broad  enough  in  the  terms  of  its 


INTERFERENCE,  IX,  X. 


105 


specification  and  claims  to  embrace  the  inven- 
tion of  the  other,  and  especially  where  the  in- 
vention is  one  of  elaborate  and  complicated 
mechanism,  the  decisions  of  the  expert  tri- 
bunals of  the  patent  office  in  respect  of  iden- 
tity have  for  obvious  reasons,  been  accepted 
as  conclusive.  *Ecchman  v.  Southgate,  C.  D. 
1007,  127  O.  G.  1254. 

369.  Applicant  docs  not  lose  his  right  to 
claim  an  invention  disclosed  in  his  application 
by  the  fact  that  he  makes  no  specific  claim 
thereto  until  after  another  party  files  his  ap- 
plication for  the  same  invention.  *Lotz  v. 
Kenny,  C.  D.  1008,  i;!5  O.  G.  1801. 

IX.  Caveat. 

370.  Wlicrc  in  his  preliminary  statement  the 
junior  party  to  an  interference  alleges  the 
filing  of  a  caveat  disclosing  the  invention  in 
issue.  Held,  that  the  senior  party  is  not  enti- 
tled to  inspect  such  caveat,  since  it  is  optional 
with  the  junior  party  whether  he  will  intro- 
duce such  caveat  in  evidence  or  rely  on  other 
evidence  of  disclosure.  (Claassen  v.  StelTen, 
C.  D.  1004,  :u?.,  113  O.  G.  2.J07,  distinguished.) 
Stauft  V.  Reeder,  C.  D.  1010,  157  O.  G.  20S. 

X.  Conception  oe  Invention. 

371.  Where  the  evidence  is  very  unsatis- 
factory and  uncertain,  but  shows  S.  to  have 
been  active  in  experimentation  on  the  general 
lines  of  this  invention  in  February,  1S07,  and 
that  he  then  filed  an  abortive  application  not 
disclosing  this  invention  and  does  not  allege 
reduction  to  practice  until  the  summer  of 
1807,  Held,  that  he  has  not  satisfactorily 
shown  conception  in  February.  *Silverman  v. 
Hendrickson.  C.  D.  1902,  00  O.  G.  1171. 

372.  Where  the  evidence  shows  that  H.  had 
a  conception  of  the  desirability  of  doing  what 
the  invention  was  designed  to  do,  but  fails  to 
show  that  he  had  an  adequate  conception  of 
the  means  by  which  the  result  was  to  be  ac- 
complished. Held,  that  he  cannot  be  regarded 
as  having  a  conception  of  the  invention  in 
controversy.  Herman  v.  Fullman,  C.  D.  1903, 
107  O.  G.  1094. 

373.  Where  a  sketch  is  introduced  as  evi- 
dence of  conception  and  it  fails  to  disclose  a 
feature  called  for  by  the  issue  and  the  wit- 
nesses do  not  refer  to  that  feature,  Held,  not 
proof  of  conception.  Harris  v.  Stern  and 
Lotz,  C.  D.  lOo:!,  105  O.  G.  259. 

374.  Where  an  inventor  has  only  a  concep- 
tion of  what  he  wanted  to  accomplish  and  not 


a  conception  of  the  means  to  be  used  to  that 
end.  Held,  that  it  is  not  an  "available  con- 
ception within  the  meaning  of  the  law."  Mer- 
genthaler  v.  Scudder,  C.  D.  1897,  724,  81  O.  G. 
1417.  Lotterhand  v.  Hanson,  C.  D.  1904,  108 
O.  G.  790. 

375.  Where  the  witnesses  called  to  corro- 
borate Cobb  as  to  a  disclosure  of  the  invention 
make  it  appear  that  he  had  in  mind  the  result 
to  be  accomplished,  but  not  the  means  by 
which  it  was  to  be  done.  Held,  that  a  concep- 
tion and  disclosure  of  the  invention  is  not  es- 
tablished. *Cobb  V.  Goebel,  C.  D.  10O4,  108 
O.  G.  1501. 

376.  Where  it  appears  that  a  machine  was 
ccmstructed  embodying  all  the  elements  of  the 
issue  and  that  there  was  a  prior  machine  con- 
structed which  embodies  all  the  features  of 
the  second  machine  except  the  construction  of 
a  single  element  and  it  is  shown  by  the  testi- 
mony that  this  new  element  was  considered 
to  be  necessary  and  that  work  was  commenced 
on  the  second  machine  to  that  end,  Held,  that 
the  evidence  establishes  a  conception  of  the 
invention  embodied  in  the  second  machine  at 
the  time  that  work  was  commenced  on  the 
second  machine  with  the  improvement  ^in 
view.  Cummings  v.  McKenzie,  C.  D.  1904, 
110  O.  G.  1167. 

377.  Where  an  original  drawing  is  sub- 
mitted in  evidence  showing  clearly  all  but  one 
of  the  elements  of  the  issue  and  the  showing 
of  that  element  is  so  vague  that  from  the 
drawing  alone  without  further  description  the 
invention  of  the  issue  cannot  be  understood, 
Held,  that  when  other  evidence  is  submitted 
which  establishes  the  fact  that  the  inventor 
had  at  the  time  he  made  the  original  drawing 
a  complete  conception  of  this  vaguely-illus- 
trated element  the  fact  of  conception  of  the 
invention  of  the  issue  is  satisfactorily  estab- 
lished. Robinson  v.  Copeland,  C.  D.  1904,  111 
O.  G.  579. 

378.  Where  certain  pencil-marks  were  placed 
upon  a  patented  drawing  for  the  admitted  pur- 
pose of  distinguishing  the  invention  shown  in 
that  drawing  from  another  invention  (not 
the  invention  of  the  issue (  then  under  discus- 
sion, and  it  appears  that  no  adequate  disclo- 
sure of  the  invention  of  the  issue  can  be  ob- 
tained from  the  pencil-marks  alone  and  there 
is  no  evidence  that  the  invention  of  the  issue 
was  disclosed  at  that  time.  Held,  that  a  con- 
ception of  the  invention  in  issue  at  that  time 
is  not  established,  as,  th?r?  i§  ^lo  evidence  of 


196 


INTERFERENCE,  XI,  XII. 


the  "formation  in  the  mind  of  the  inventor 
of  a  definite  and  permanent  idea  of  the  com- 
plete and  operative  invention  as  it  is  thereafter 
to  be  applied  in  practice."  (Mergcnthaler  v. 
Scudder,  C.  D.  1897,  724,  81  O.  G.  1417.) 
Ritter  v.  Krakau  and  Conner,  C.  D.  1904,  111 
O.  G.  1935. 

379.  Where  claims  are  advanced  by  a  party 
of  conception  and  disclosure  at  dates  several 
years  before  any  dates  satisfactorily  proved 
and  it  appears  that  in  the  meantime  manufac- 
turers were  demanding  a  device  of  the  kind 
in  issue  and  the  party  made  no  disclosure  to 
such  manufacturers  nor  any  attempt  to  reduce 
to  practice,  but  endeavored  to  sell  patents  upon 
prior  devices  and  failed  on  the  express  ground 
that  they  did  not  possess  the  advantages  found 
in  the  present  invention,  Held,  that  said 
claims  to  early  conception  and  disclosure  are 
entitled  to  no  consideration.  *Hope,  Jr.  v. 
Voight,  C.  D.  1905,  115  O.  G.  1585. 

380.  Held,  that  the  construction  of  a  metal 
bar  with  corrugated  sides,  the  relative  posi- 
tion of  the  corrugations  on  the  respective 
sides  being  accidental,  is  not  evidence  of  con- 
ception of  the  invention  set  forth  in  a  claim 
for  a  metal  bar  provided  with  interruptions 
in  the  surface  and  having  substantially  the 
same  cross-sectional  area  throughout  its 
length.  Johnson  v.  Mucser,  C.  D.  1900,  124 
O.  G.  3533. 

381.  Where  experiments  were  made  which, 
in  the  light  of  present  knowledge,  seem  to 
suggest  the  invention  in  issue,  but  it  appears 
that  such  invention  was  not,  in  fact,  presented 
to  the  minds  of  those  familiar  with  them. 
Held,  that  such  experiments  do  not  show 
conception  of  the  invention.  Sherwood  v. 
Drewson.  C.  D.  1906,  124  O.  G.  1205. 

382.  The  mere  idea  that  there  ought  to  be 
an  arrangement  to  strip  a  stocking  from  a 
board  or  form  on  which  it  was  mounted  and 
return  the  board  to  the  one  who  placed  the 
stockings  thereon,  and  the  illustration  of  this 
idea  by  the  originator  thereof  by  stripping  a 
stocking  from  a  form  by  the  passage  thereof 
between  his  hand  and  the  edge  of  a  table  does 
not  amount  to  a  conception  of  an  invention. 
No  mechanism  was  described  by  which  the 
desired  result  could  be  obtained.  Invention 
consists  of  the  conception  of  the  idea  and  of 
means  for  putting  it  in  practice  and  producing 
the  desired  result.  Until  the  latter  concep- 
tion is  complete  and  ready  to  be  put  in  some 
practical  form  there  is  no  available  conception 


of  the  invention  within  the  meaning  of  the 
patent  law.  (Mergenthaler  v.  Scudder  (C.  D. 
1897,  724,  81  O.  G.  1417,  11  App.  D.  C.  264. 
276.)  *Burson  v.  Vogel,  C.  D.  1907,  131  O.  G. 
942. 

383.  Merc  knowledge  of  an  invention  in  this 
country  by  a  foreign  inventor  or  his  agent. 
Held,  not  equivalent  to  a  conception  of  the 
invention  in  this  country.  Guinifet,  Benoit, 
and  Nicault  v.  Wictorsohn,  C.  D.  1907,  131  O. 
G.  1685. 

XI.  CONSOLIUATION  Ol'  Inticrit.rences. 

384.  Where  one  interference  is  declared  be- 
tween a  pending  application  of  S.  and  a  patent 
to  R.  and  another  interference  is  declared 
between  the  said  pending  application  of  S. 
and  an  application  for  a  reissue  of  the  patent 
to  R.,  Held,  that  on  a  consolidation  of  the 
two  interferences  the  same  will  continue  as 
to  counts  corresponding  to  claims  in  the  pat- 
ent, even  though  these  claims  were  originally 
presented  in  the  reissue  application  and  sub- 
sequently canceled  therefrom  on  reference  to 
an  English  patent  to  S.  Read  v.  Scott,  C.  D. 
1902,   100  O.  G.  449. 

385.  The  propriety  of  consolidating  an  in- 
terference covering  an  article  with  an  inter- 
ference covering  a  machine  for  making  that 
article  is  seriously  doubted.  Klein  v.  Groebli, 
C.  D.   1904,  110  O.  G.  305. 

386.  Where  in  one  interference  the  junior 
party  has  to  establish  his  case  by  a  preponder- 
ance of  evidence,  but  in  the  other  interference 
he  has  to  establish  his  case  beyond  a  reason- 
able doubt.  Held,  that  a  stipulation  to  consoli- 
date the  interferences  will  not  be  approved. 
Id. 

387.  The  objects  sought  to  be  attained  by 
consolidating  two  interferences  can  be  ac- 
complished by  stipulating  that  the  record 
taken  in  one  interference  can  be  used  in  the 
other,  under  the  provisions  of  Rule  157.    Id. 

388.  Where  more  than  two  parties  file  ap- 
plications claiming  substantially  the  same  pat- 
entable subject-matter,  an  interference  exists 
lietwcen  each  two  of  these  applications;  but  it 
is  proper  to  consolidate  them  for  hearing  and 
determination  as  one  case.  *Cosper  v.  Gold 
&  Gold,  Cosper  v.  Gold,  C.  D.  1911,  168  O. 

G.  787. 

XII.  CoMP.^NION    Interferencks. 

389.  The  request  in  one  interference  for 
an  extension  of  time,  so  that  testimony  in  a 


INTERFERENCE,  XIII,  XIV,  (a). 


197 


companion  interference  between  the  same  par- 
ties may  be  taken  at  the  same  time,  must  be 
denied  upon  the  protest  of  the  opposing  party. 
The  office  cannot  without  consobdating  the 
interferences  undertake  to  conduct  them  to- 
gether. Lipe  V.  Miller,  C.  D.  1903,  in?  O.  G. 
16C2. 

390.  Where  in  an  interference  between  three 
parties,  C,  N.,  and  R.,  the  examiner  of  in- 
terferences finds  from  the  testimony  that  C.  is 
the  prior  inventor  and  thereupon  refers  a 
companion  interference  between  N.  and  R.  to 
the  commissioner  under  Rule  12G  in  order  that 
it  may  be  dissolved  without  a  decision  on  the 
question  of  priority,  on  the  ground  that  C.  is 
the  first  inventor.  Held,  that  the  interference 
should  proceed  to  a  final  decision  on  the  ques- 
tion of  priority,  inasmuch  as  the  issue  in  the 
interference  N.  v.  R.  is  not  the  same  as  the 
issue  in  the  prior  interference  and  as  the 
decision  of  the  e.xaminer  of  interferences  in 
the  prior  interference  that  C.  is  the  first  inven- 
tor is  not  final,  but  is  subject  to  appeal.  New- 
ell v.  Rose,  C.  D.  1905,  114  O.  G.  337. 

391.  Where  a  party  having  two  applications 
involved  in  companion  interferences  presents 
amendments  cancelling  the  interfering  claims 
from  one  application  and  adding  them  to  the 
other  for  the  purpose  of  withdraw'ing  one  ap- 
plication from  interference  and  concealing  its 
subject-matter.  Held,  that  the  request  of  the 
primary  examier  that  the  interference  be 
transmitted  to  him  for  the  purpose  of  consid- 
ering these  amendments  should  be  granted, 
as  the  other  party  will  not  be  seriously  in- 
convenienced by  the  slight  delay  caused  by 
taking  the  desired  action.  Behrend  v.  Lamme, 
C.  D.  1907,  120  O.  G.  1065. 

392.  Where  an  amendment  to  an  application 
in  interference  is  filed  which  purports  to  put 
the  application  in  condition  for  another  inter- 
ference, the  primary  examiner  should  give  the 
amendment  consideration  sufficient  to  deter- 
mine whether  the  application  is,  in  fact,  made 
ready  for  the  additional  interference.  E.x 
parte  Neidich,  C.  D.  1911,  172  O.  G.  551. 

393.  Where  the  examiner  finds  that  an 
amendment  proposed  for  an  application  in 
interference  puts  the  application  in  condition 
for  another  interference  and  the  additional 
interference  is  otherwise  ready  for  declara- 
tion, he  should  request  authority  to  enter  the 
proposed  amendment  and  to  declare  the  addi- 
tional interference  without  waiting  for  the 
termination  of  the  pending  interference.     Id. 


394.  Where  the  examiner  finds  that  a  pro- 
pi  iscd  amendment  to  an  application  in  inter- 
ference purporting  to  put  the  application  in 
condition  for  another  interference  does  not, 
in  fact,  put  the  application  in  condition  for 
the  proposed  interference,  or  that  it  disturbs 
the  condition  of  the  application  with  respect 
to  the  pending  interference,  or  that  for  any 
other  reason  the  proposed  amendment  should 
not  be  received  and  the  proposed  interference 
declared,  he  should  refuse  to  enter  said  amend- 
ment or  to  further  consider  the  same  prior  to 
the  determination  of  the  pending  interference. 
Id. 

XIII.  Copvixr.  Claims  ok  Opponent. 

395.  The  claims  of  the  appellant  copied 
from  a  patent  granted  to  another  upon  a  print- 
ing press,  Held,  to  have  no  proper  foundation 
in  the  application  as  filed  and  to  constitute  new 
matter  injected  by  amendment.  Decision  re- 
jecting claims  affirmed.  *In  re  Scott,  C.  D. 
1005,  117  O.  G.  278. 

396.  Where  an  applicant  copies  a  claim 
from  a  patent  for  the  purpose  of  interfer- 
ence and  the  examiner  holds  that  such  claim 
is  not  patentable  in  view  of  the  prior  art. 
Held,  that  from  this  action  of  the  examiner 
appeal  lies  to  the  examiners-in-chief  and  that 
the  question  of  the  patentability  of  the  claim 
will  not  be  reviewed  on  petition.  Ex  parte 
McCullough,  C.  D.  1910,  155  O.  G.  305. 

XIV.  Declaration  of. 
(a)   III  General. 

397.  Where  the  claims  of  the  applications 
were  rejected  and  the  examiner  declared  the 
interference,  he  in  effect  withdrew  the  rejec- 
tion of  the  claims;  but  it  is  bad  practice  to 
declare  an  interference  before  the  parties  have 
been  notified  that  there  is  an  interference  and 
given  an  opportunity  to  remove  the  objections 
and  overcome  the  references.  Cahn  v.  Schwei- 
nitz  V.  Dolly  v.  Geisler,  C.  D.  1899,  8G  O.  G. 
if>3:!. 

398.  Before  an  interference  between  two 
pending  applications  is  declared  one  of  the 
pending  applications  should  be  placed  in  con- 
dition for  allowance,  .\fter  one  of  the  inter- 
fering applications  is  in  condition  for  allow- 
ance the  declaration  of  the  interference  should 
not  be  delayed  any  longer  than  is  necessary 
to  settle  "all  pending  questions"  in  the  other 
application   which   relate  to   the   issue  of   the 


198 


INTERFERENCE,  XIV,  (b). 


interference  or  which  relate  to  what  might 
eventually  become  a  part  of  the  issue  of  the 
interference.  Ex  parte  Spoon,  C.  D.  TJUl,  07 
O.  G.  1376. 

399.  When  one  of  the  interfering  applica- 
tions is  in  condition  for  allowance,  if  there  be 
any  claims  in  the  other  application  which  are 
not  to  form  part  of  the  controversy  or  never 
could  form  part  of  the  controversy  it  is  not 
necessary  that  such  claims  should  be  first  ad- 
judged to  be  patentable  or  that  they  be  placed 
in  condition  for  allowance  before  the  declara- 
tion of  the  interference.  A  prompt  declara- 
tion of  the  interference  is  not  only  desirable, 
but  it  is  due  to  the  applicant  whose  case  is  in 
condition   for  allowance.     (Rule  96.)     Id. 

400.  Where  one  of  the  interfering  parties 
is  a  patentee,  the  same  reasoning  applies.  It 
is  only  necessary  that  those  claims  in  the  ap- 
plication which  are  to  form  counts  of  the 
issue  should  be  placed  in  condition  for  allow- 
ance before  the  declaration  of  the  interference. 
It  is  not  necessary  for  questions  to  be  first  set- 
tled which  do  not  in  any  way  affect  nor  never 
could  affect  the  interference  issue.  Ex  parte 
Spoon,  C.  D.  1901,  97  O.  G.  1370. 

401.  The  requirement  of  Rule  97  that  the 
notices  of  interference  should  disclose  "the 
invention  claimed"  means  that  the  invention 
claimed  should  be  disclosed  by  its  title.  HofT- 
stetter  v.  Kahn,  C.  D.  1902,  99  O.  G.  1624. 

402.  The  primary  examiner,  in  preparing  the 
statement  prescribed  by  Rule  97  for  use  by 
the  examiner  of  interferences  should  arrange 
the  order  of  the  parties  to  the  interference  in 
the  inverse  chronological  order  of  the  filing 
dates  of  the  applications  containing  the  inter- 
fering claims.  Jackson  v.  Patten,  C.  D.  1910, 
l.iO  O.  G.  2C5. 

(b)  Stiggesliiig  Claims. 

403.  Where  an  applicant  fails  to  make  a 
claim  suggested  by  the  examiner  for  the  pur- 
pose of  interference  and  as  a  result  the  exam- 
iner rejects  any  claim  of  the  application  for 
the  reason  that  failure  to  make  the  claim  and 
to  become  a  party  to  the  interference  will  "be 
interpreted  as  equivalent  to  a  concession," 
Held,  that  appellant's  remedy  is  by  appeal  to 
the  examiners-in-chief  and  not  by  petition  to 
the  commissioner.  Ex  parte  Cain,  C.  D.  1S99, 
87  O.  G.  1397. 

404.  Where  a  claim  is  suggested  to  an  ap- 
plicant and  every  opportunity  afforded  him  to 
place  his   application   in   condition    for   inter- 


ference, Held,  that  his  neglect  to  do  so  fairly 
raises  the  presumption  that  he  is  not  the  in- 
ventor of  the  subject-matter  of  the  interfer- 
ence.   Id. 

405.  The  purpose  of  the  recent  practice  of 
the  office  is  not  to  avoid  interferences  between 
applications  because  of  some  differences  in 
the  form  of  the  claims,  but  merely  by  sug- 
gestions to  bring  the  parties  together  upon  an 
issue  which  shall  be  as  nearly  as  possible  the 
same  as  the  claims  of  the  parties,  so  as  to 
reduce  to  a  minimum,  the  chances  for  mo- 
tions and  controversies  during  the  progress 
of  the  interference  based  upon  differences  in 
the  claims.  Ex  parte  Thompson,  C.  D.  1902, 
98  O.  G.  227. 

406.  Where  two  parties  make  claims  to  the 
same  real  invention,  neither  of  which  claims 
is  patentable  over  the  other,  but  neither  party 
can  make  a  claim  in  the  words  of  the  other  be- 
cause of  limitations  therein  to  immaterial  fea- 
tures not  disclosed  by  him,  Held,  that  the  ex- 
aminer may,  under  Rule  90,  suggest  to  both 
parties  a  claim  covering  the  real  invention 
common  to  the  two  cases  and  leaving  out  im- 
material limitations.     Id. 

407.  Where  the  examiner  suggested  claims 
under  Rule  96  and  the  applicant  argued  that 
they  were  not  patentable  and  asked  the  ex- 
aminer to  point  out  why  he  regarded  them 
as  patentable  and  the  particular  features  re- 
garded as  novel,  Held,  that  the  examiner  prop- 
erly refused  to  enter  into  a  discussion  of  the 
matter  in  advance  of  the  declaration  of  the 
proposed  interference.  Ex  parte  Sutton  and 
Steele,  C.  D.  1903,  107  O.  G.  541. 

408.  Where  the  examiner  suggests  claims  to 
an  applicant  for  the  purpose  of  interference, 
un<!er  Rule  96,  and  sets  a  time  within  which 
to  make  the  same  and  the  applicant  fails  to 
make  the  claim  within  the  time  fixed,  but 
makes  them  after  the  expiration  of  the  time 
and  after  the  other  interfering  application  has 
become  a  patent,  Held,  that  the  amendment 
should  be  entered  and  the  claim  considered 
on  its  merits.  Ex  parte  Swift,  C.  D.  1904,  111 
O.  G.  2494. 

409.  Where  claims  are  suggested  to  a  party 
under  Rule  90  for  the  purpose  of  interference 
and  he  fails  to  make  them  within  the  time  set 
and  the  examiner  rejects  them  when  they  are 
thereafter  presented.  Held,  that  the  applicant's 
remedy  is  by  appeal  to  the  examiners-in-chief 
and  not  by  petition.  Ex  parte  Post,  C.  D. 
1904,  112  O.  G.  1214. 


INTERFERENCE,  XIV,  (c). 


199 


410.  Where  the  claims  of  two  apphcants 
differ  in  some  respects,  but  it  appears  that 
both  are  attempting  to  cover  substantially  the 
same  subject-matter  of  invention,  ?Ield.  that  it 
is  proper  to  suggest  one  party's  claims  to  the 
other  for  the  purpose  of  interference.  Myers 
V.  Brown,  C.  D.  1904,  112  O.  G.  2093. 

411.  Where  claims  are  suggested  to  an  ap- 
plicant under  the  provisions  of  Rule  96  and 
he  is  required  to  put  his  case  in  condition  for 
allowance  and  he  complies  merely  by  making 
the  claims  suggested  to  him,  refusing  to  amend 
his  rejected  claims  to  cover  the  patentable 
interfering  subject-matter  common  to  both  ap- 
plications. Held,  that  the  examiner  should 
formulate  a  claim  (or  claims)  covering  the 
interfering  subject-matter  not  embraced  in 
the  claims  made  by  the  party  and  suggest  it 
under  the  provisions  of  Rule  96  to  both  par- 
ties. Ex  parte  Ferris,  C.  D.  1905,  114  O.  G. 
541. 

412.  If  the  applicant  should  then  refuse  to 
make  the  second  set  of  claims  within  the  time 
given  him,  Held,  that  he  should  be  held  under 
the  provisions  of  this  rule  to  have  disclaimed 
this  interfering  subject-matter.  The  inter- 
ference could  then  be  declared  upon  the  first 
conflicting  claims  originally  suggested  to  him. 
Id. 

413.  Where  claims  are  suggested  to  an  ap- 
plicant for  the  purpose  of  interference  under 
Rule  96  and  he  is  required  to  make  them 
within  twenty  days  and  his  attorney  asks  for 
more  time,  so  that  he  can  communicate  with 
the  applicant  who  resides  abroad.  Held,  that 
sufficient  time  should  be  allowed  him.  Ex 
parte  Schultze,  C.  D.  1905,  114  O.  G.  1550. 

414.  Where  the  time  fixed  for  making  claims 
suggested  under  Rule  96  is  too  short  and  the 
claims  made  thereafter  are  rejected  on  the 
ground  of  estoppel.  Held,  that  the  rejection 
will  be  set  aside  as  irregular.    Id. 

415.  Where  a  party  shows  a  certain  struc- 
ture and  claims  it  broadly  and  his  claims  are 
all  rejected  and  another  party  claims  the  same 
structure  more  narrowly  and  such  claims  are 
allowed  and  suggested  to  the  other  party, 
Held,  that  there  was  no  error  in  so  suggesting 
such  claims,  as  both  parties  were  attempting 
to  claim  the  same  invention  within  the  mean- 
ing of  amended  Rule  96.  Templin  v.  Ser- 
geant, C.  D.  1905,  119  O.  G.  961. 

41G.  Where  a  party  refuses  to  make  claims 
suggested  for  interference  purposes,  his  re- 
quest that  the  patentability  of   the  claims  be 


reviewed  or  that  proceedings  be  instituted  for 
the  purpose  of  permitting  him  to  show  that 
the  invention  has  gone  into  use  and  that 
there  are  intervening  rights  to  the  allowance 
of  the  claims  in  a  reissue  application  will  be 
denied.  Ex  parte  Bryant,  Wolcott,  and  Da- 
vidson, C.  D.  1906,  121  O.  G.  2663. 

417.  Where  a  party  refuses  to  make  claims 
suggested  for  interference  purposes.  Held, 
that  he  stands  in  the  same  position  as  any 
other  member  of  the  public  and  is  not  entitled 
to  recognition  as  a  party  in  interest  opposing 
the  allowance  of  the  claims  or  to  any  in- 
formation of  the  case  in  which  they  are  al- 
lowed.   Id. 

418.  In  all  cases  where  claims  are  suggested 
for  the  purpose  of  interference  under  the 
provisions  of  Rule  90,  copies  of  the  letter 
containing  the  suggested  claims  will  be  sent 
to  the  applicant  and  to  the  assignees,  if  the 
invention  is  assigned,  as  well  as  to  the  attor- 
ney of  record.  Ex  parte  Doebler,  C.  D.  1907, 
128  O.  G.  3287. 

419.  Where,  in  response  to  the  suggestion  of 
claims  under  Rule  96,  the  applicant  shows 
that  it  is  practically  impossible  for  him  to 
comply  with  the  suggestion  within  the  time 
specified  and  requests  a  reasonable  extension 
thereof,  such  request  should  be  granted.  Ex 
parte  Hellmund,  C.  D.  1909,  141  O.  G.  565. 

420.  Where  an  applicant  makes  claims  sug- 
gested under  Rule  96  after  the  time  set  and 
the  examiner  rejects  them  on  the  ground  of 
implied  disclaimer,  ordinarily  appeal  from 
such  rejection  must  be  to  the  examiners-in- 
chief;  but  where  the  examiner  sets  such  a 
short  period  as  to  make  it  practically  impos- 
sible for  the  applicant  to  file  the  claims  in 
time  and  he  refuses  to  extend  such  time  the 
action  will  be  reviewed  by  the  commissioner 
on  petition.     Id. 

(c)  Irregularity. 

421.  Where  an  error  is  discovered  in  the 
letter  to  the  examiner  of  interferences  which 
would  amount  to  such  an  irregularity  as  to 
preclude  proper  determination  of  invention. 
Held,  that  the  examiner  of  interferences 
should  forward  the  interference  to  the  primary 
examiner  with  a  statement  of  facts  calling 
the  examiner's  attention  to  the  alleged  error. 
Lutz  V.  Lewis,  C.  D.  1904,  110  O.  G.  2014. 

422.  The  suggestion  of  claims  for  the  pur- 
pose of  interference,  even  where  the  sugges- 
tion was  not  authorized  by  the  present  prac- 


300 


INTERFERENCE,  XIV,  (d). 


tice,  constitutes  no  such  irregularity  as  will 
preclude  a  proper  determination  of  the  ques- 
tion of  priority.  Myers  v.  Brown,  C.  D.  1904, 
112  O.  G.  2093. 

423.  Where  petition  was  made  that  exam- 
iner be  instructed  to  comply  with  Rule  97, 
Held,  that  if  irregularity  exists  in  declaration 
of  interference  the  remedy  is  by  motion  under 
Rule  122.  Cazin  v.  \'on  Welsbach,  C.  D. 
190.-),  119  O.  G.  6.J0. 

424.  Where  prior  to  the  opening  and  ap- 
proval of  the  preliminary  statements  the  pri- 
mary examiner  is  of  the  opinion  that  an  error 
was  probably  committed  in  declaring  the  in- 
terference, he  should  reconsider  his  action  de- 
claring the  interference.  Such  reconsidera- 
tion should  be  ex  parte,  and  in  the  event  of 
a  finding  that  the  interference  should  not  con- 
tinue the  action  declaring  the  interference 
should  be  withdrawn,  and  such  withdrawal 
should  be  noted  in  the  interference.  Behrend 
V.  Lamme  v.  Tingley,  C.  D.  1906,  124  O.  G. 
2.->36. 

(d)  Application  and  Patent. 

425.  The  commissioner  is  warranted  in  tak- 
ing jurisdiction  of  and  granting  a  petition  to 
restrain  an  e.xaminer  from  declaring  an  in- 
terference when  it  clearly  appears  that  the  ex- 
aminer's intended  action  is  contrary  to  the 
practice  of  the  office  as  indicated  by  the  de- 
cisions of  the  commissioner.  (Citing  ex  parte 
Baker,  64  MS.  Dec,  71.)  Ex  parte  Whitney, 
C.   D.  1898,  83  O.   G.   1659. 

426.  The  office  is  not  bound  to  declare  an 
interference  between  a  patent  and  an  appli- 
cation in  order  to  give  the  patentee  the  op- 
portunity of  contesting  the  grant  of  a  patent 
to  the  applicant  because  in  its  judgment  the 
patentee's  rights  would  be  infringed  or 
abridged  by  granting  a  patent  on  a  pending 
application.    Id. 

427.  The  examiner  should  not  make  an  issue 
for  the  purpose  of  bringing  about  an  inter- 
ference. The  applicants  should  make  the  is- 
sues by  their  claims.  If  an  examiner  desires 
the  issue  to  be  different,  he  should  arrive  at 
that  result  by  requiring  the  claims  to  be 
amended  by  the  applicants.  (Citing  Ham- 
mond v.  Hart,  ante,  .■.2,  83  O.  G.  743.)     Id. 

428.  The  office  has  no  control  over  a  pat- 
entee to  require  him  to  amend  his  claims.  Un- 
less an  applicant  make  substantially  the  same 
claim  as  the  patentee  no  interference  can  be 
declared.     Id. 


429.  For  the  purpose  of  declaring  an  inter- 
ference the  claims  of  a  patent  must  be  taken 
as  they  read.  The  office  has  no  authority  to 
say  that  any  of  the  limitations  contained  in 
the  claims  of  a  patent  are  immaterial  and  un- 
essential. Presumably  the  patentee  did  not 
put  any  unnecessary  limitations  in  his  claims. 
Id. 

430.  Where  it  appears  that  an  interference 
was  declared  prior  to  the  decision  in  Ham- 
mond v.  Hart  (ante,  .52,  83  O.  G.  743)  on  the 
ground  that  the  subject-matter  of  the  issue 
dominated  the  claims  of  one  of  the  parties, 
and  no  testimony  has  been  taken,  delay  in 
bringing  a  motion  to  dissolve  on  the  ground 
that  no  interference  exists  under  the  present 
practice  may  be  ignored  and  the  motion  trans- 
mitted to  the  primary  examiner.  Myers  v. 
Hammel,  C.  D.  1898,  85  O.  G.  1397. 

431.  Where  the  claims  of  an  application  are 
rejected  upon  references  and  without  over- 
coming the  rejection  the  applicant  petitions 
to  have  an  interference  declared  with  a  pat- 
ent to  another  party  granted  while  his  appli- 
cation was  pending.  Held,  that  his  remedy  is 
by  an  appeal  from  the  rejection  when  it  shall 
have  been  repeated.  Ex  parte  Holland,  C.  D. 
1902,  99  O.  G.  2.548. 

432.  Where  it  appears  that  the  invention  as 
claimed  in  a  patent  is  the  same  as  an  inven- 
tion claimed  by  an  applicant.  Held,  that  there 
is  an  interference  notwithstanding  the  fact 
that  the  claims  made  by  the  parties  are  not 
couched  in  the  same  words.  Ex  parte  Card 
and  Card,  C.  D.  1904,  112  O.  G.  499. 

433.  Where  it  appears  that  claims  made  by 
an  applicant  are  not  materially  different  from 
the  claims  made  in  a  patent  and  that  the  ap- 
plicant's claims  are  not  patentable  over  the 
invention  defined  by  the  claims  in  the  patent. 
Held,  that  the  applicant  cannot  be  granted  a 
patent  unless  he  can  establish  the  fact  that  he 
is  the  prior  inventor  in  an  interference  pro- 
ceeding.    Id. 

434.  Held,  that  the  ruling  that  the  real  in- 
vention claimed  by  a  patentee  and  an  appli- 
cant is  the  same  is  not  necessarily  inconsistent 
with  the  ruling  that  the  applicant  should  pre- 
sent a  claim  in  different  form  to  establish  the 
issue  of  an  interference.  There  may  be  a 
real  conflict  notwithstanding  difference  in 
wording  of  claims.     Id. 

435.  The  requirement  as  to  the  form  of  a 
claim  is  not  for  the  purpose  of  bringing  about 
a  conflict,  but  to  define  the  conflicting  subject- 


INTERFERENCE,  XIV,  (e),  (f). 


201 


matter  in  the  same  words  in  both  cases,  so 
as  to  avoid  confusion  and  prevent  disputes. 
Id. 

436.  An  applicant  cannot  be  permitted  to 
avoid  an  interference  w^ith  a  patentee  by  care- 
fully avoiding  the  words  of  the  patentee's 
claim  when  the  real  invention  claimed  is  the 
same,  and  therefore  the  office  is  justified  in 
suggesting  the  patentee's  claims  to  the  appli- 
cant and  stating  that  if  they  are  not  made  cer- 
tain of  the  claims  in  the  application  will  be 
rejected,  as  they  are  regarded  as  covering  the 
same  patentable  invention  as  covered  by  the 
claims  of  the  patent.    Id. 

437.  Held,  that  in  suggesting  claims  of  a 
patent  to  an  applicant  it  is  proper  to  fi.x  a 
limit  of  time  for  the  applicant  to  make  them. 
In  regard  to  interferences  it  is  a  matter  of 
practical  necessity  and  has  always  been  con- 
sidered proper  to  fix  time  limits,  because  of 
the  interests  of  the  opposing  party.    Id. 

438.  When  an  interference  is  declared  be- 
tween an  applicant  and  a  patentee  and  the 
examiner  is  of  the  opinion  that  the  applicant 
has  presented  claims  which  do  not  differ  ma- 
terially from  the  issue  of  the  interference,  he 
should  append  to  the  declaration  of  the  in- 
terference a  statement  that  such  claims,  speci- 
fying them  by  number,  will  be  held  subject 
to  the  decision  in  the  interference.  If,  in  his 
opinion,  there  are  no  such  claims,  he  should 
append  to  the  declaration  a  statement  to  that 
eftect.  Earll  v.  Love,  C.  D.  1909,  140  O.  G. 
1209. 

(e)  Parly  Already  in  Interference. 

439.  Where  an  amendment  to  an  applica- 
tion in  interference  is  filed  which  purports 
to  put  the  application  in  condition  for  another 
interference,  the  primary  examiner  should 
give  the  amendment  consideration  sufficient 
to  determine  whether  the  application  is,  in 
fact,  made  ready  for  the  additional  interfer- 
ence. Hewitt  V.  Potter,  C.  D.  190.'),  ll.")  O.  G. 
.'■)69. 

440.  Where  the  examiner  finds  that  an 
amendment  proposed  for  an  application  in  in- 
terference puts  the  application  in  condition 
for  another  interference  and  the  additional 
interference  is  otherwise  ready  for  declara- 
tion, he  should  request  authority  to  enter  the 
proposed  amendment  and  to  declare  the  addi- 
tional interference  without  waiting  for  the 
termination  of  the  pending  interference.     Id. 

441.  Where  the  e.xaminer  finds  that  a  pro- 


posed amendment  to  an  application  in  inter- 
ference purporting  to  put  the  application  in 
condition  for  another  interference  does  not, 
in  fact,  put  the  application  in  condition  for 
the  proposed  interference  or  that  it  disturbs 
the  condition  of  the  application  with  respect 
to  the  pending  interference  or  that  for  any 
other  reason  the  proposed  amendment  should 
not  be  received  and  the  proposed  interference 
declared,  he  should  refuse  to  enter  said  amend- 
ment or  to  further  consider  the  same  prior 
to  the  determination  of  the  pending  interfer- 
ence.    Id. 

442.  Where  the  claims  of  an  application  are 
allowable  and  the  case  ready  to  be  passed  to 
issue  except  for  a  probable  interference  with 
certain  claims  of  a  pending  application  of 
another  party,  C,  now  involved  in  an  inter- 
ference with  a  third  party  upon  other  claims 
for  an  entirely  independent  subject-matter. 
Held,  that  the  examiner  should  request  juris- 
diction of  the  application  of  C.  for  the  pur- 
pose of  suggesting  therein  the  claims  of  the 
prospective  interference  and  for  the  purpose 
of  entering  the  amendment  and  of  declaring 
the  interference  if  C.  makes  the  suggested 
claims.  Ex  parte  Brakey,  C.  D.  1910,  156  O. 
G.  797. 

(f)   Pulling  Case  in   Condition  for  Interfer- 
ence. 

443.  Rule  9G  means  that  when  the  formal 
requirements  of  an  application — such,  for  ex- 
ample, as  the  requirement  for  a  new  drawing 
or  for  an  amended  oath  or  for  further  action 
upon  rejected  claims  which  are  not  involved 
in  the  interference  or  for  analogous  changes — 
have  not  been  complied  with  the  interference 
shall  be  declared,  so  that  the  party  whose  ap- 
plication is  in  proper  form  shall  not  be  un- 
necessarily delayed  in  the  further  prosecution 
of  his  application.  Hammond  v.  Hart,  C.  D. 
1898,  8:i  O.  G.  743. 

444.  Rule  96  does  not  mean  that  the  ex- 
aminer declaring  the  interference  can  ignore 
the  requirement  that  the  claims  of  the  party 
in  fault  must  be  put  in  such  condition  that 
they  will  not  require  alteration.  If  Rule  96 
means  that,  then  Rule  9.">  means  nothing.  The 
two  rules  should  be  construed  in  connection 
with  Rules  93  and  94,  so  as  to  give  vitality  to 
all.     Id. 

445.  Under  a  proper  interpretation  of  the 
rules  there  is  no  justification  for  the  declara- 
tion of  an   interference  between   the  allowed 


202 


INTERFERENCE,  XIV,  (g). 


claims  of  one  application  and  the  rejected 
claims  of  another  application.  Two  applica- 
tions do  not  interfere  in  such  a  case.    Id. 

(g)  Subject-Mailer  Must  Conflict. 

446.  So  far  as  the  case  ex  parte  Upton  (C. 
D.  1884,  26,  27  O.  G.  99)  holds  that  an  inter- 
ference should  be  declared  between  two  ap- 
plications or  between  an  application  and  a 
prior  patent  whose  claims  are  not  substan- 
tially identical  in  tenor  and  scope  it  is  not 
well  founded  in  law,  and  this  decision  is  over- 
ruled. Hammond  v.  Hart,  C.  D.  1898,  83  O. 
G.  743. 

447.  There  is  no  different  rule  of  law  appli- 
cable to  an  interference  when  it  is  declared 
between  two  applications  than  when  it  is  de- 
clared between  an  application  and  an  unex- 
pired patent.  The  same  principles  which  de- 
termine whether  there  would  be  an  actual  in- 
terference must  apply  alike  in  each  of  the  con- 
ditions in  which  the  cases  are  when  before 
the  patent  office  to  determine  whether  they 
would  interfere.  (Kinyon  v.  Carter,  C.  D. 
1894,  2,  00  O.  G.  513,  overruled.)     Id. 

448.  .An  interference  can  only  be  instituted 
for  the  purpose  of  determining  the  question  of 
priority  of  invention  between  two  or  more 
parties  claiming  substantially  the  same  patent- 
able invention;  that  of  necessity  there  must 
be  allowed  claims  to  all  parties  before  an  in- 
terference can  be  declared,  and  that  not  only 
a  patent  and  an  application  must  claim  in 
whole  or  in  part  the  same  invention,  but  also 
two  applications  must  claim  in  whole  or  in 
part  the  same  invention  before  an  interference 
can  be  declared.    Id. 

449.  Where  the  issue  of  the  interference 
was  Wolfenden's  third  claim  and  involved  his 
first,  second,  and  fourth  claims.  Held,  that  as 
the  issue  is  not  the  first,  second,  and  fourth 
claims  they  should  be  dropped  from  the  inter- 
ference, and  if  the  examiner  is  of  the  opinion 
that  there  is  no  patentable  invention  in  these 
claims  over  the  subject-matter  of  the  issue  it 
would  be  better  practice  for  him  to  notify 
Wolfenden  that  in  the  event  of  the  interfer- 
ence being  determined  adversely  to  him  such 
claims  would  stand  rejected  as  involving  no 
patentable  invention.  Wolfenden  v.  Price,  C. 
D.  1898,  83  O.  G.  1801. 

450.  Where  Price's  claim  involved  in  the 
issue,  which  is  Wolfenden's  third  claim,  in- 
cludes certain  limitations  which  are  not  stated 
in  Wolfenden's  claims  and  Wolfenden's  claim 


contains  a  limitation  not  found  in  Price's 
claim,  Held,  that  notwithstanding  it  is  urged 
that  these  differences  are  immaterial  and  may 
be  disregarded  there  is  no  interference  in 
fact.    Id. 

451.  The  patent  office  is  no  more  competent 
than  the  courts  to  say  in  declaring  an  inter- 
ference that  an  element  which  an  applicant  or 
a  patentee  has  placed  in  his  claim  is  an  imma- 
terial one.    Id. 

452.  An  interference  is  not  sufficiently  clear 
and  definite  which  requires  that  certain  limi- 
tations in  the  claims  of  one  party  should  be 
held  to  be  immaterial  and  that  other  limita- 
tions should  be  read  into  the  claims  of  either 
one  or  the  other  party  to  the  proposed  inter- 
ference in  order  to  make  them  the  issue  of 
the  interference.    Id. 

453.  A  claim  may  be  patentable  in  the  opin- 
ion of  the  examiner  which  does  not  contain 
certain  limitations,  and  it  is  within  his  prov- 
ince, when  he  believes  it  is  necessary  for  him 
to  declare  an  interference,  to  indicate  to  the 
parties  a  patentable  claim  as  the  issue  of  the 
interference  which  shall  omit  imtnaterial  ele- 
ments and  thereby  make  it  unnecessary  for 
the  office  to  hold  that  the  issue  and  the  claims 
are  different  from  what  they  read.     Id. 

454.  It  is  not  necessary  that  identical  lan- 
guage should  be  employed  in  the  claims  of 
every  party  to  the  interference;  but  when  dif- 
ferent words  are  used  they  must  mean  and 
refer  to  the  same  thing.     Id. 

455.  The  case  of  Hammond  v.  Hart  (ante, 
.52,  83  O.  G.  743)  was  intended  to  bring  about 
a  practice  in  the  office  that  should  result  in 
making  the  issue  of  an  interference  both  def- 
inite and  clear,  and  to  that  end  to  cause  the 
parties  to  the  proposed  interference  to  claim 
substantially  the  same  patentable  invention,  so 
as  to  obviate  the  many  motions  and  appeals 
that  have  unnecessarily  arisen  in  the  office. 
Id. 

45G.  The  present  practice  requires  that  in- 
terferences should  be  declared  only  when  the 
claims  involved  are  substantially  identical  in 
scope.  Ex  parte  Thomas,  C.  D.  1898,  84  O. 
G.  1729. 

457.  Where  a  claim  has  certain  limitations 
introduced  to  satisfy  the  requirements  of  the 
office  as  to  its  allowability  over  a  reference 
and  when  in  view  of  such  limitations  the  claim 
is  allowed,  it  cannot  be  said  that  such  limita- 
tions are  immaterial  in  order  to  declare  an 
interference. 


INTERFERENCE,  XIV,  (h),  XV. 


203 


(h)  Claiiiis;  Genus  and  Species. 

458.  A  generic  and  a  spccilic  claim  do  not 
interfere,  and  it  does  not  conflict  with  public 
interest  to  send  a  generic  claim  to  issue  after 
a  specific  claim  has  been  patented.  (  Draw- 
baugh  V.  Blake,  C.  D.  1883,  17,  23  O.  G.  1221  ; 
Reed  v.  Landman,  C.  D.  1891,  73,  55  O.  G.  1275, 
cited.)  Hammond  v.  Hart,  C.  D.  1898,  83 
O.  G.  743. 

459.  Where  two  applications  are  concurrent- 
ly pending  having  claims  of  different  scope 
drawn  on  the  same  structure,  there  is  no  good 
reason  why  the  examiner  should  not  give  the 
applicant  making  the  specific  or  narrow  claim 
an  opportunity,  by  suggestion,  if  necessary, 
to  make  the  broader  claim.  If  the  suggestion 
is  followed,  then  the  parties  would  be  making 
a  claim  identical  in  tenor  and  scope,  and  an 
interference  will  properly  and  naturally  fol- 
low. To  this  extent  ex  parte  Weeden  (C.  D. 
1892,  185,  60  O.  G.  1191)  overruled.    Id. 

460.  Grimm  has  made  a  broad  claim  and 
Dolan  a  narrow  claim,  Held,  that  both  parties 
are  not  claiming  substantially  the  same  inven- 
tion, and  under  Hammond  v.  Harte  (ante,  52, 
83  O.  G.  743)  an  interference  does  not  prop- 
erly arise.  Grimm  v.  Dolan,  C.  D.  1898,  83 
O.  G.  1209. 

461.  If  Dolan  is  the  inventor  of  the  broad 
invention,  he  should  make  the  broad  claim  of 
the  issue.  As  the  claims  now  stand  there  is 
no  interference  in  fact,  as  an  interference 
should  not  be  declared  between  dominated  and 
dominating  claims.  (Citing  Hammond  v. 
Hart,  ante,  52,  83  O.  G.  743.)     Id. 

462.  Interference  in  fact  exists  where  both 
parties  make  generic  claims,  although  their 
structures  may  be  specifically  different.  Miller 
V.  Kelley,  84  O.  G.  1144. 

463.  While  under  the  decision  in  the  case 
of  Hammond  v.  Hart  (ante,  52,  83  O.  G.  743) 
and  Grimm  v.  Dolan  (ante,  70,  83  O.  G.  1209) 
it  would  be  irregular  to  declare  an  interfer- 
ence until  both  parlies  made  the  claims  in 
issue.  Held,  that  in  an  interference  in  which 
decision  on  priority  had  been  rendered  and  in 
which  the  party  not  making  the  claims  in 
issue  could  make  them  and  had  submitted  an 
amendment  containing  such  claims  the  inter- 
ference should  not  be  dissolved.     Id. 

XV.  Disclaimer.  Concession.  Etc. 

464.  On  a  motion  for  dissolution  brought 
upon  the  ground  of  no  interference  in   fact. 


the  question  of  abandonment  cannot  be  con- 
sidered. The  proper  ground  would  be  lack 
of  right  to  make  the  claim  of  the  issue.  Car- 
penter V.  Mallory,  C.  D.  1898,  85  O.  G.  291. 

465.  After  the  dissolution  of  an  interfer- 
ence the  question  of  the  abandonment  of  the 
issues  by  one  of  the  parties  is  ex  parte,  and 
the  other  party  cannot  be  heard  in  the  matter. 
Id. 

466.  Where  after  the  argument  the  plain- 
tiff was  permitted  to  file  a  disclaimer  to  cer- 
tain statements  in  the  specification  which  were 
broader  than  the  claims  when  construed  as 
contended  for.  Held,  that  the  admission  of 
the  disclaimer  was  proper.  **Carnegie  Steel 
Company,  Limited  v.  Cambria  Iron  Company, 
C.  D.   1902,  99  O.  G.  1866. 

467.  The  power  to  disclaim  is  a  beneficial 
one  and  ought  not  to  be  denied  except  where 
it  is  resorted  to  for  a  fraudulent  and  decep- 
tive purpose.  A  disclaimer  may  extend  to  a 
part  of  the  specification  as  well  as  to  a  dis- 
tinct claim.     **Id. 

468.  A  disclaimer  the  purpose  of  which  is 
to  re-form  or  alter  the  description  of  the  in- 
vention or  convert  the  claim  for  one  thing 
into  something  else  is  objectionable,  since  pat- 
ents can  only  be  amended  for  mistakes  of  this 
kind  by  a  reissue.     **Id. 

469.  Where  O.  deliberately  states  in  answer 
to  a  question  propounded  by  his  own  counsel 
that  he  does  not  claim  to  be  the  inventor  of 
the  matter  in  controversy.  Held,  that  priority 
of  invention  cannot  be  awarded  to  him. 
•Oliver  v.  Felbel,  C.  D.  1902,  100  O.  G.  2389. 

470.  Where  each  party  files  a  written  aban- 
donment of  the  invention  alleging  that  it  is 
not  patentable.  Held,  that  the  interference 
should  be  dissolved.  Krakau  v.  Harding,  C. 
D.   1903,  107  O.  G.  1662. 

471.  Where  both  parties  abandon  the  inven- 
tion, there  is  a  statutory  bar  to  the  grant  of  a 
patent  to  either,  and  the  examiner  of  interfer- 
ences should  call  attention  to  the  fact  under 
Rule  126.     Id. 

472.  Where  an  interference  is  declared  be- 
tween an  applicant  and  a  patentee  and  the  ap- 
plicant urges  that  the  claim  of  the  issue  is  not 
patentable  to  himself.  Held,  that  the  office 
will  enter  into  no  controversy  with  him,  but 
will  accept  his  admission  and  dissolve  the 
interference.  Lipe  v.  Miller,  C.  D.  1904,  109 
O.  G.  1608. 

473.  Held,  that  the  only  abandonment  which 
can  be  accepted  under  Rule  125  is  an  unequiv- 


204 


INTERFERENCE,  XVI,  XVII,  (a). 


ocal,  unconditional,  unlimited  declaration  of 
aliandonment  of  the  invention  which  forms 
the  subject-matter  of  the  issue  of  the  inter- 
ference under  consideration.  Gabrielson  v. 
Felbel,  C.  D.  lOnr,,  121  O.  G.  691. 

474.  Where  appeal  is  taken  from  a  decision 
of  the  examiners-in-chief  on  the  question  of 
priority  and  the  appellee  files  a  motion  to 
dismiss  the  appeal,  accompanied  by  a  disclaim- 
er of  the  invention  in  issue  signed  by  the  ap- 
pellant, Held,  that  the  disclaimer  will  be 
considered  a  concurrence  in  the  motion  of 
the  appellee  to  dismiss  the  appeal.  Wert  v. 
Borst  and  Groscop,  C.  D.  1907,  120  O.  G.  2191. 

XVI.   DlSCI,OSURE. 

475.  Disclosure  in  the  sense  of  the  patent 
law  must  be  made  ordinarily  to  persons  com- 
petent to  understand  and  appreciate  the  al- 
leged invention.  Merely  showing  a  device  and 
a  drawing  to  witnesses  who  do  not  under- 
stand the  invention  cannot  be  considered  a  dis- 
closure. *Eastman  v.  Houston,  C.  D.  1901, 
95  O.  G.  2064. 

476.  A  disclosure  of  the  invention  to  a  party 
skilled  in  the  art  to  which  the  invention  be- 
longs is  sufficient  to  be  regarded  as  a  disclo- 
sure in  the  sense  of  the  patent  law.  Pupin  v. 
Hutin  and  Leblanc  v.  Stone,  C.  D.  1902,  100 
O.  G.  9:!i. 

477.  A  disclosure  by  an  inventor  that  it  was 
his  intention  to  do  a  certain  thing  without 
disclosing  the  means  by  which  that  thing  was 
to  be  accomplished.  Held,  not  to  be  sufficient 
to  establish  the  fact  of  conception  and  dis- 
closure. Brooks  v.  Hillard,  C.  D.  190.1,  lOG  O. 
G.  1237. 

478.  Where  an  inventor  alleges  that  he  dis- 
closed an  invention  to  a  draftsman  for  the 
purpose  of  having  drawings  made  of  the  In- 
vention disclosed  to  him  and  neither  the  draw- 
ings produced  by  the  draftsman  nor  the  ma- 
chines built  therefrom  contain  the  invention, 
it  is  evident  that  either  the  invention  had  not 
been  conceived  or  that  it  had  not  been  dis- 
closed as  claimed.  *Peters  v.  Pike,  Jr.,  C.  D. 
1909,  H:i  O.  G.  2.59. 

XVII.  Dissolution. 
(a)  In  General. 

479.  Where  it  was  moved  to  dissolve  an 
interference  for  the  reason  that  the  question 
of  the  interference  Is  res  adjudieata  as  be- 
tween the  parties,  that  the  question  of  priority 


having  been  determined  by  a  court  of  compe- 
tent jurisdiction  could  not  be  retried  by  the 
same  parties  in  the  patent  office,  and  that  one 
of  the  parties  was  estopped  from  asserting  his 
right  to  the  invention.  Held,  that  these  ques- 
tions should  not  be  passed  upon  on  an  inter- 
locutory motion,  as  they  are  such  questions 
as  relate  to  the  merits  of  the  interference  and 
would  more  properly  form  the  basis  of  a  judg- 
ment of  priority  of  invention  than  for  the 
dissolution  of  the  interference.  Roth  v.  Brown 
and  Stillman,  C.  D.  1898,  8:!  O.  G.  r,9X 

480.  It  is  not  to  be  presumed  that  an  ex- 
aminer failed  to  consider  a  reference  cited 
by  a  previous  examiner.  By  such  considera- 
tion and  the  subsequent  declaration  of  an  Inter- 
ference the  second  examiner  practically  de- 
cided the  Issue  patentable  in  view  of  the  ref- 
erence, and  his  decision  on  this  point  is  not 
reviewable  under  Rule  124.  StupakofF  v. 
Johnson,  C.  D.  1898,  84  O.  G.  982. 

481.  While,  notwithstanding  that  under  the 
present  practice  as  defined  in  Hammond  v. 
Hart  (ante,  52,  83  O.  G.  743)  the  interference 
should  not  have  been  declared  upon  the  pres- 
ent Invention  until  both  parties  directly  and 
definitely  claimed  the  precise  subject-matter, 
the  Issue  has  been  accepted  by  the  parties,  no 
motion  to  dissolve  having  been  made  and  no 
question  as  to  interference  In  fact  raised  be- 
fore the  examiner  of  interferences  or  the  ex- 
amlners-in-chief,  it  not  being  clear  that  the 
issue  does  not  fairly  well  define  the  inven- 
tion intended  by  each  of  the  parties,  and  dis- 
solution would  necessarily  be  followed  by  dec- 
laration of  a  new  interference  better  defined, 
perhaps,  but  yet  In  real  subject-matter  sub- 
stantially the  issue  on  which  testimony  was 
taken,  the  dissolution  is  not  necessary  or  jus- 
tifiable. Orourke  v.  Gillespie,  C.  D.  1898,  84 
O.  G.  984. 

482.  The  examiner  of  interferences  cannot 
dissolve  an  Interference  except  on  the  deci- 
sion of  the  primary  examiner  upon  a  motion 
to  disssolve  brought  under  Rule  122  and  trans- 
mitted as  provided  for  by  that  rule.  Wethey 
v.  Roberts,  C.  D.  1898,  84  O.  G.  1586. 

483.  Motion  for  dissolution  cannot  be  made 
in  the  first  Instance  before  the  primary  ex- 
aminer, although  the  interference  is  before  him 
for  the  consideration  of  another  motion,  but 
it  must  be  made  before  and  transmitted  by 
the  examiner  of  interferences  before  the  pri- 
mary examiner  can  take  jurisdiction  of  it. 
Howard  v.  Hey,  C.  D.  1899,  86  O.  G.  184. 


INTERFERENCE,  XVII,   (a). 


205 


484.  It  is  well  settled  that  when  a  motion 
for  dissolution  is  transmitted  to  the  primary 
examiner  he  does  not  have  jurisdiction  of  the 
interference  for  all  purposes,  but  merely  to 
decide  the  particular  motion  which  has  been 
transmitted  to  him.    Id. 

485.  The  four  grounds  for  dissolution  set 
forth  in  Rule  122 — namely,  interference  in 
fact,  irregularity,  patentability,  and  right  to 
make  the  claim — have  distinct  and  independ- 
ent meanings,  which  should  not  be  confused 
by  parties  bringing  motions  under  that  rule. 
Each  ground  which  it  is  desired  to  urge  should 
be  separately  alleged  and  should  be  given  the 
proper  title  specified  in  the  rule.  Woodward 
V.  Newton,  C.  D.  1899,  86  O.  G.  490. 

488.  It  is  to  be  presumed  that  claims  which 
have  not  been  specifically  rejected  are  regard- 
ed as  allowable.  Even  if  claims  have  been  re- 
jected their  inclusion  in  an  interference  is  in 
effect  a  waiver  of  that  rejection.  The  failure 
of  the  examiner  to  state  that  the  claims  in- 
cluded are  allowable  is  therefore  no  good 
ground  for  a  dissolution  of  an  interference. 
Sadtler  v.  Carmichael  v.  Smith,  C.  D.  1899, 
86  O.  G.  1498. 

487.  By  the  decision  of  Calm  v.  Dolley  et 
al.  (C.  D.  1898,  194,  84  O.  G.  1869)  it  was  in- 
tended to  dissolve  the  whole  interference,  al- 
though no  motion  to  dissolve  as  to  Calm  was 
before  the  Commissioner  when  the  said  deci- 
sion was  made,  as  the  dissolution  was  war- 
ranted and  in  the  interest  of  all  the  parties. 
Ex  parte  Calm.  C.  D.  1899,  87  O.  G.  1397. 

488.  The  commissioner  of  patents  is  vested 
with  power  to  dissolve  an  interference  on  his 
own  motion  whenever  he  considers  that  jus- 
tice and  equity  demand  that  it  should  be  done. 
(Bender  v.  Hoffman,  C.  D.  1898,  262,  8.5  O.  G. 
1737,  and  Bechman  v.  Wood,  C.  D.  1897,  188, 
81  O.  G.  2087,  cited.)     Id. 

489.  In  case  of  the  discovery  of  new  facts 
after  granting  the  motion  to  transmit  to  the 
primary  examiner  he  may  consider  such  facts, 
provided  due  and  timely  notice  thereof  be 
given  to  the  party  opposing  the  motion  to  dis- 
solve. Wells  v.  Packer,  C.  D.  1900.  90  O.  G. 
1947. 

490.  Where  after  the  limit  of  appeal  has 
expired  a  party  makes  a  motion  before  the 
commissioner  to  restore  the  jurisdiction  of 
the  examiner  of  interferences  to  consider  a 
motion  to  dissolve.  Held,  that  the  motion  is 
fatally  defective  unless  accompanied  by  the 
proposed  motion  for  dissolution.  Nieder- 
meyer  v.  Walton,  C.  D.  1901,  97  O.  G.  2306. 


491.  Where  the  issue  is  not  vague  or  in- 
definite, but  it  appears  that  the  examiner  places 
a  different  construction  upon  it  from  that 
given  it  by  the  parties.  Held,  that  this  does 
not  alone  constitute  a  good  ground  for  dis- 
solving the  interference.  Annand  v.  Spalck- 
haver,  C.  D.  1901,  97  O.  G.  2741. 

492.  .\n  interference  should  not  be  dissolv- 
ed to  permit  the  parties  to  make  claims  broad- 
er than  the  present  issue  and  broader  than 
what  the  examiner  regards  as  patentable  mere- 
ly because  one  of  the  parties  wishes  to  make 
such  claims  and  contest  the  question  of  pat- 
entability. Annand  v.  Spalckhaver,  C.  D.  1901, 
97  O.  G.  2083. 

493.  Where  a  party  makes  a  motion  to  dis- 
solve in  order  to  permit  him  to  make  claims 
broader  than  the  issue,  Held,  that  there  is  no 
justification  for  a  dissolution  where  the  claims 
have  not  been  presented  by  both  parties  and 
where  they  would  not  be  regarded  as  patent- 
able even  if  presented.    Id. 

494.  Where  a  party  made  a  motion  to  dis- 
solve on  all  of  the  grounds  mentioned  in 
Rule  122  and  the  primary  examiner  decided 
only  two  of  those  grounds,  Held,  on  appeal 
that  the  case  will  be  remanded  to  the  exam- 
iner with  instructions  to  decide  all  grounds 
alleged.  Oldham  and  Padbury  v.  Peck  v. 
Clement  v.  Richards,  C.  D.  1902,  99  O.  G.  670. 

495.  Where  it  appears  that  the  subject-mat- 
ter of  the  interference  is  not  patentable.  Held, 
that  a  decision  upon  the  question  of  priority 
of  invention  will  not  be  rendered,  but  the 
interference  will  be  dissolved.  Wright  v. 
Lorenz,  C.  D.  1902,  101  O.  G.  664. 

49G.  Where  as  a  reason  for  permitting  a 
second  motion  to  dissolve  in  a  case  a  party 
alleges  that  the  examiner's  decision  indicated 
an  interpretation  of  the  issue  at  variance  with 
that  placed  upon  it  by  the  petitioner.  Held, 
that  such  difference  of  opinion  is  not  a  suf- 
ficient reason  for  a  dissolution.  Richards  v. 
Kletzker  &  Goesel,  C.  D.  1902,  98  O.  G.  1709. 

497.  Where  after  a  motion  to  dissolve  has 
been  transmitted  to  the  primary  examiner  the 
moving  party  discovers  a  new  reference  which 
he  wishes  to  urge  in  support  of  his  motion. 
Held,  that  it  is  not  necessary  to  amend  the 
motion  to  include  that  reference,  but  merely 
to  give  reasonable  notice  thereof  to  the  op- 
posing party  before  the  hearing.  Kurz  v. 
Jackson  and  Pierce,  C.  D.  1902,  98  O.  G. 
2:)8r,. 

498.  A  motion  to  dissolve  alleging  that  the 
issue    is   not   patentable    if   construed    to    be 


206 


INTERFERENCE,  XVII,  (a). 


broad  enough  to  apply  to  both  devices,  Held, 
raises  only  the  question  of  patentability  and 
not  interference  in  fact.  Appeal  dismissed. 
White  V.  Thomson,  C.  D.  1002,  101  O.  G.  1371. 

499.  Where  on  a  motion  to  dissolve  an  in- 
terference the  examiner  holds  that  certain 
counts  are  unpatentable  and  other  counts  are 
patentable.  Held,  that  the  interference  should 
be  dissolved  only  as  to  the  counts  which  are 
held  unpatentable  and  that  it  should  be  con- 
tinued as  to  those  counts  held  to  be  patentable. 
Hillard  v.  Eckert,  C.  D.  1902,  101  O.  G.  1831. 

500.  The  statute  requiring  reconsideration 
by  the  examiner  where  the  applicant  persists 
in  his  claim  has  no  application  to  a  decision 
upon  a  motion  to  dissolve  an  interference 
upon  the  ground  that  one  of  the  parties  has 
no  right  to  make  the  claim  of  the  issue.  New- 
comb  V.  Lemp,  C.  D.  1904,  110  O.  G.  307. 

501.  A  party  may  obtain  a  reconsideration 
of  a  motion  for  dissolution  only  by  showing 
good  cause  which  justifies  a  rehearing.     Id. 

502.  Where  a  motion  for  dissolution  alleges 
all  of  the  grounds  stated  in  the  rule  and  the 
examiner  decides  that  the  claims  are  not  pat- 
entable to  cither  party  in  view  of  references 
and  that  therefore  there  is  no  interference  in 
fact  and  there  was  irregularity  in  the  declara- 
tion, Held,  that  his  decision  was  irregular  and 
incomplete.  Owens  v.  Richardson,  Jr.,  C.  D. 
1004,  111  O.  G.  1037. 

503.  The  several  grounds  for  dissolution 
mentioned  in  the  rule  mean  different  things 
and  should  be  separately  considered  and  de- 
cided.   Id. 

504.  The  decision  of  Bechman  v.  Wood  (C. 
D.  1899,  453,  89  O.  G.  2459)  does  not  involve 
the  question  of  the  regularity  of  the  declara- 
tion of  an  interference  or  the  question  of  in- 
terference in  fact,  but  affects  only  the  question 
of  priority  of  invention,  and  its  effect  can 
only  be  determined  after  consideration  of  the 
testimony  in  passing  upon  that  question.  Bech- 
man v.  Southgate,  C.  D.  1904,  111  O.  G.  805. 

505.  The  questions  presented  on  motions  to 
dissolve  do  not  relate  in  any  way  to  the  ques- 
tion of  priority  of  invention.  They  merely  re- 
late to  questions  as  to  whether  or  not  the 
interference  should  continue,  and  consequent- 
ly whether  or  not  there  is  such  an  interfer- 
ence between  the  respective  applications  as  to 
warrant  the  determination  of  the  question  of 
priority  of  invention  under  the  provisions  of 
section  4904  of  the  Revised  Statutes.  Jarvis 
V.  Quincy  v.  Jarvis  &  Blakeslee  v.  Baron  v. 
Briggs  and  Shepard.  C.  P,  1904,  113  O.  G.  550. 


506.  When  some  of  the  grounds  of  a  sec- 
ond motion  for  dissolution  are  the  same  as 
those  of  the  prior  motion  which  was  denied 
by  the  examiner  and  on  appeal  and  no  show- 
ing is  made  why  the  same  questions  should 
be  reconsidered.  Held,  that  the  second  mo- 
tion, so  far  as  it  relates  to  the  grounds  of 
the  earlier  motion,  should  not  be  transmitted. 
Hcdiund  v.  Curtis,  C.  D.  1004,  113  O.  G.  1410. 

507.  Where  counts  are  added  to  the  issue  of 
an  interference  liy  motion  under  Rule  109, 
Held,  that  a  motion  for  dissolution  may  be 
made  thereafter  as  to  the  new  counts.  Pfingst 
V.  Anderson,  C.  D.  1905,  114  O.  G.  264. 

508.  Where  an  interference  has  been  dis- 
solved, Held,  that  neither  party  has  a  right  to 
be  heard  upon  the  consideration  of  claims 
subsequently  presented  by  the  other  parties  to 
the  interference.  Meigs,  Hughes  and  Stout  v. 
Gcrdom,  C.  D.  1005,  116  O.  G.  1184. 

509.  Where  after  the  time  for  motions  al- 
lowed by  the  rules  has  expired  the  examiner 
secures  jurisdiction  to  consider  the  question 
of  patentability  of  some  counts  of  the  issue. 
Held,  that  the  parties  cannot  demand  that 
he  considers  the  other  counts  also.  Ingoldsby 
V.  Bellows,  C.  D.  1905,  116  O.  G.  2532. 

510.  Where  an  interference  is  dissolved  on 
motion  on  the  ground  that  a  party's  device  is 
inoperative,  Held,  that  in  the  ex  parte  treat- 
ment of  the  application  thereafter  the  exam- 
iner may  receive  affidavits  upon  the  question 
of  operativeness  and  is  not  bound  by  the  rul- 
ing in  the  interference.  Ex  parte  Mark,  C. 
D.  1005,  117  O.  G.  2636. 

511.  It  does  not  follow  because  the  exam- 
iner explained  the  meaning  of  terms  of  the 
issue  in  his  decision  upon  motion  for  disso- 
lution that  the  issue  is  not  so  clear  as  to  be 
readily  understood.  Pryor  v.  Ball  v.  Brand, 
C.  D.  1905,  119  O.  G.  653. 

512.  Where  the  motion  is  brought  on  all 
grounds  mentioned  in  Rule  122,  but  the  argu- 
ment before  the  primary  examiner  is  con- 
fined to  questions  of  patentability  and  right 
to  make  the  claims.  Held,  that  the  primary 
examiner  properly  disposed  of  the  grounds  of 
irregularity  in  declaration  and  non-interfer- 
ence in  fact  by  calling  attention  to  the  ab- 
sence of  argument  thereon,  denying  the  mo- 
tion as  to  them,  and  fixing  limit  of  appeal. 
Harnisch  v.  Gueniffet,  Benoit,  and  Nicault, 
C.  D.  1905,  117  O.  G.  1492. 

513.  Where  the  examiner  upon  motion  for 
dissolution  on  the  ground  of  non-interference 
in  fact  stated  that  the  issue  did  not  read  upon 


INTERFERENCE,  XVII,   (a). 


207 


the  construction  of  the  moving  party,  and  for 
that  reason  granted  the  motion,  Held,  that  it 
does  not  appear  that  there  has  been  any  prop- 
er decision  upon  the  question  of  interference 
in  fact,  and  that  this  question  will  not,  there- 
fore, be  decided  by  the  commissioner  on  ap- 
peal, but  that  the  case  will  be  remanded  to 
the  primary  examiner  for  decision  on  the 
motion  as  brought.  Kaczander  v.  Hodges  and 
Hodges,   C.   D.   1905,   118  O.  G.  836. 

514.  Where  it  appeared  that  the  examiner's 
decision  granting  motion  for  dissolution  on 
ground  of  non-interference  in  fact  was  based 
upon  the  lack  of  right  of  party  to  claim  the 
issue,  which  question  was  not  presented  by 
the  motion,  and  the  case  was  remanded  for 
decision  on  the  motion  as  brought.  Held,  that 
as  the  examiner  was  of  the  opinion  that  one 
of  the  parties  was  not  entitled  to  claim  the 
issue  he  might  hear  the  parties  upon  this 
question  and  render  a  decision  thereon.     Id. 

515.  The  four  groimds  for  dissolving  inter- 
ferences mentioned  in  Rule  122  relate,  re- 
spectively, to  very  different  matters  and  should 
not  be  confused  with  one  another.  (See 
Woodward  v.  Newton,  C.  D.  1899,  13,  86  O. 
G.  490,  and  Owens  v.  Richardson,  C.  D.  1904, 
289,  111  O.  G.  1037.)     Id. 

516.  The  question  raised  by  the  contention 
of  non-interference  in  fact  is  whether  the 
claims  as  found  in  the  cases  of  the  respective 
parties  dctine  one  and  the  same  invention,  and 
this  question  is  independent  of  the  patenta- 
bility of  the  claims,  the  right  of  the  parties  to 
make  them,  or  any  irregularity  in  the  decla- 
ration of  interference.     Id. 

517.  Where  party  moves  for  dissolution  of 
interference  in  order  to  prosecute  his  applica- 
tion and  secure  the  allowance  of  claims  broad- 
er than  the  issues  to  form  the  issues  of  a  new 
interference.  Held,  that  his  motion  will  be  de- 
nied when  based  on  hypothetical  grounds,  no 
reason  appearing  for  believing  that  broader 
claims  would  be  allowable  and  no  new  claims 
being  offered  nor  any  averment  made  that  the 
party  has  proofs  to  offer  for  broader  subject- 
matter  different  from  the  proofs  which  he  may 
have  of  the  present  issue.  Phelps  v.  Wormlcy 
v.  McCullough,  C.  D.  190:>,  118  O.  G.  1069. 

518.  Where  dissolution  is  sought  or  ground 
that  the  narrowness  of  the  issue  remaining 
after  dissolution  as  to  broader  issue  precludes 
proper  termination  of  the  question  of  prior- 
ity. Held,  that  proofs  may  be  offered  under 
the  preliminary  statements  on  file  such  as  will 
enable  the  office  to  determine  the  question  of 


priority  as  to  broader  claims  which  may  be 
I)resented  later  and  that  the  interference 
should  not  be  dissolved.     Id. 

519.  When  parties  intend  to  make  other 
claims  to  the  subject-matter  in  issue  after 
termination  of  the  interference,  they  should 
present  all  their  proofs  relating  to  such  sub- 
ject-matter in  the  one  proceeding.     Id. 

520.  Where  the  questions  raised  on  motion 
for  dissolution  are  none  other  than  those  of 
the  rights  of  parties  to  make  claims  and  of 
patentability.  Held,  that  the  motion  should  not 
be  granted  on  the  ground  of  non-interference 
in  fact.  Thullen  v.  Young  and  Townsend,  C. 
D.   1905,   118  O.  G.   2251. 

521.  Held,  that  alleged  improper  placing  of 
the  burden  of  proof  forms  no  proper  basis 
for  motion  for  dissolution  and  that  the  ques- 
tion should  be  presented  by  separate  motion 
to  shift  the  burden  to  the  other  party.     Id. 

522.  When  the  contentions  on  a  motion  for 
dissolution  amount  to  the  denial  of  the  right 
of  the  contending  party  to  make  claims.  Held, 
that  the  party  is  not  compelled  to  insist  upon 
the  claims,  but  may  abandon  them.  Votey  v. 
Gaily,  C.  D.  1905,  119  O.  G.  339. 

523.  Where  a  motion  for  dissolution  rested 
only  on  limitations  read  into  the  claims  by 
the  moving  party  and  not  stated  in  such 
claims,  Held,  that  the  motion  was  properly 
denied.     Id. 

524.  Held,  that  party  is  not  estopped  from 
bringing  motions  alleging  that  the  interfer- 
ence was  improperly  declared  because  he 
made  the  claim  constituting  the  issue  and  filed 
a  preliminary  statement  relating  to  it.  Van 
Auken  v.  Osborne  v.  Harrison  v.  Canfield  and 
\'an  .-Kukcn,  C.  D.  1905,  119  O.  G.  1584. 

525.  Where  upon  appeal  brought  on  the 
ground  of  non-interference  in  fact  the  ques- 
tions raised  go  to  the  right  of  a  party  to 
make  claims,  the  appeal  must  be  dismissed. 
Contentions  which  go  to  the  right  of  a  party 
to  make  claims  can  afford  no  proper  basis 
for  dissolution  upon  the  ground  of  non-inter- 
ference in  fact.  Blackmore  v.  Hall,  C.  D. 
1905.  119  O.  G.  2523. 

52G.  Where  upon  motion  for  dissolution  a 
party  contends  that  the  terms  of  the  issue  are 
erroneously  and  misleadingly  used  in  his  op- 
ponent's application,  the  question  raised  is 
one  of  right  to  make  claim  and  is  not  one  of 
interference  in   fact.     Id. 

527.  Where  an  applicant  secures  a  dissolu- 
tion of  an  interference  upon  his  allegation 
that  the  claims  are  not  patentable.  Held,  that 


208 


INTERFERENCE,  XVII,  (a). 


he  should  be  required  to  cancel  the  claims. 
To  reject  the  claims  implies  that  there  is  an 
open  question  as  to  the  applicant's  right,  and 
there  is  no  open  question  in  fact.  Ex  parte 
Miller,  C.  D.  1905,  116  O.  G.  25a2. 

528.  The  alleged  abandonment  of  an  inven- 
tion claimed  in  a  reissue  application  by  rea- 
son of  the  failure  to  make  claims  thereto  in 
the  original  application  goes  to  the  right  of 
the  party  to  make  such  claims  and  cannot  be 
considered  under  the  head  of  irregularity  in 
the  declaration.  Felsing  v.  Nelson,  C.  D. 
l<J(lfi,  121  O.  G.  1347. 

529.  The  contention  by  an  interferant  that 
the  opposing  parties  do  not  have  a  construc- 
tion responding  to  certain  language  in  the 
issue  is  one  relating  to  the  right  to  make  the 
claim  and  not  to  interference  in  fact.  Carncll 
V.  Glasgow  V.  Cook,  C.  D.  1006,  120  O.  G.  901. 

530.  Where  the  primary  examiner  denied 
the  motion  to  dissolve  the  interference  as  to 
the  ground  of  non-interference  in  fact,  but 
granted  it  as  to  M.'s  lack  of  right  to  make  the 
claims,  Held,  that  since  M.  has  acquiesced  in 
the  holding  and  the  decision  has  become  final 
the  question  of  interference  in  fact  is  a  moot 
one  and  entitled  to  no  consideration  on  ap- 
peal. Warner  v.  Mead,  C.  D.  1906,  122  O.  G. 
2061. 

531.  Where  the  claim  includes  a  deflector 
as  an  element  and  the  deflectors  shown  by  the 
parties  to  the  interference  are  specifically  dif- 
ferent, but  such  differences  are  not  involved 
in  the  interference  issue.  Held,  that  there  is 
no  basis  in  this  fact  for  a  dissolution  of  the 
interference.  Bechman  v.  Southgate,  C.  D. 
1906,  123  O.  G.  2309. 

532.  Where  interfering  parties  have  differ- 
ent specific  construction,  but  the  claims  cover 
common  features  thereof,  the  fact  that  the 
device  of  one  party  is  superior  to  that  of  an- 
other does  not  warrant  a  dissolution  of  the 
interference.  Kolb  v.  Hemingway  v.  Curtis, 
C.   D.  1906,  122  O.  G.  1397. 

533.  Where  it  is  contended  that  the  non- 
patentability  of  the  issue  to  either  party  to 
the  interference  may  be  urged  at  final  hear- 
ing. Held,  that  during  the  preliminary  stages 
of  the  interference  and  before  the  parties 
have  been  put  to  the  trouble  and  expense  of 
taking  testimony  on  the  question  of  priority 
either  party  may  raise  the  question  of  the  pat- 
entability of  the  issue  by  motion  to  dissolve 
the  interference  under  Rule  122.  Contestants 
are  thus  given  an  opportunity  to  have  deter- 
mined the  question  of  whether  the  office  was 


right  in  declaring  the  interference  and  wheth- 
er the  proceedings  should  continue  before  tes- 
timony as  to  priority  is  taken.  It  is  essential 
to  the  orderly  proceedings  of  the  interference 
that  the  question  of  patentability  be  finally 
settled  at  this  time,  and  for  this  purpose  the 
rules  provide  for  an  appeal  from  the  rejection 
of  claims  based  on  the  decision  on  the  motion 
to  the  full  extent  permitted  by  law.  Dixon 
and  Marsh  v.  Graves  and  Whittemore,  C.  D. 
1907,    127  O.  G.   1993. 

534.  .^  decision  of  the  commissioner  of  pat- 
ents dissolving  an  interference  is  not  a  final 
order.  *The  Union  Distilling  Company  v. 
Schneider,  C.  D.  1907,  129  O.  G.  2.-.03. 

535.  Where  in  acting  upon  a  motion  to  dis- 
solve the  interference  the  primary  examiner 
held  the  counts  of  the  issue  unpatentable  and 
upon  reconsideration  finally  rejected  the 
claims.  Held,  that  if  petitioner  did  not  under- 
stand the  position  of  the  examiner  or  desired 
a  more  specific  statement  of  his  position  con- 
cerning the  references  he  should  have  made 
his  request  before  the  dates  set  for  reconsid- 
eration and  closing  of  the  case  before  the  ex- 
aminer. While  the  examiner  should  indicate 
the  grounds  for  his  rejection  as  fully  as  in 
the  ordinary  c.v  parte  consideration  of  a  case, 
the  applicant  can  request  as  a  matter  of  right 
a  more  complete  explanation  only  while  the 
case  is  still  pending  before  the  examiner. 
Bastian  v.  Champ,  C.  D.  1907,  127  O.  G.  2816. 

536.  The  fact  that  a  record  judgment  may 
be  rendered  against  a  junior  party  under  the 
provisions  of  Rule  114  does  not  preclude  him 
from  presenting  motions  for  dissolution.     Id. 

537.  Where  the  examiner  rejected  the  claims 
constituting  the  issue  in  his  decision  dissolv- 
ing the  interference  and  not  in  the  application 
files,  Held,  the  proper  practice  under  Rule 
124  is  for  the  examiner  to  indicate  his  find- 
ings regarding  the  claims  in  his  decision  on 
the  motion  in  the  interference  file  and  at  the 
same  time  to  make  the  rejection  of  the  claims 
aft'ected  in  the  application  files.  In  making 
such  rejection,  if  desired,  reference  may  be 
made  as  a  basis  therefor  to  the  findings  in  the 
decision  on  the  motion.  The  purpose  of  this 
practice  is  to  enable  applicants  to  appeal  to 
the  full  extent  provided  by  statute  and,  if 
an  appeal  is  desired,  to  require  the  appeal  to 
be  taken  at  once.  Bastian  v.  Champ,  C.  D. 
1907,   127  O.   G.   2816. 

538.  Where  a  motion  to  dissolve  an  inter- 
ference is  brought  in  the  name  of  an  assignee 
and  such  assignee  afterward  files  an  applica- 


INTERFERENCE,  XVII,  (b),  1. 


209 


tion  for  the  invention  and  is  included  in  the 
same  interference,  he  is  precluded  from  bring- 
ing a  motion  in  his  name  to  dissolve  such  in- 
terference which  alleges  either  the  same 
ground  that  was  previously  raised  or  any 
ground  which  might  have  been  raised  in  the 
previous  motion.  Townsend  v.  Ehret  v. 
Young  V.  Struble,  C.  D.  1908,  137  O.  G.  1483. 

539.  Where  at  a  hearing  on  a  motion  for 
dissolution  a  brief  was  filed  after  the  attor- 
ney had  made  his  argument  and  near  the 
close  of  the  hearing.  Held,  that  this  brief  was 
tiled  in  compliance  with  the  ruling  in  Royce 
V.  Kempshall.  (C.  D.  1905,  292,  116  O.  G. 
2011.)  Stevens  v.  Patterson,  C.  D.  1910,  142 
O.  G.  :,(,?,. 

540.  The  question  of  allowing  reply  briefs 
to  be  filed  is  one  within  the  discretion  of  the 
tribunal  before  whom  the  hearing  is  had.    Id. 

541.  Where  a  motion  to  dissolve  embodying 
two  grounds  is  denied  transmission  as  to  both. 
Held,  that  the  grounds  may  not  be  separately 
prosecuted,  one  by  direct  appeal  and  the  other 
by  renewal  motion  and  subsequent  appeal. 
Williams  v.  Webster  v.  Sprague,  C.  D.  1909, 
148  O.  G.  280. 

542.  The  bringing  of  a  renewal  motion 
waives  the  right  of  appeal  from  the  decision 
on  the  original  motion.    Id. 

543.  Where  in  response  to  an  order  to  show 
cause  a  party  filed  a  motion  for  dissolution 
on  all  the  grounds  provided  by  the  rules  and 
the  motion  was  denied  by  the  primary  ex- 
aminer. Held,  that  a  motion  to  direct  the  ex- 
aminer of  interferences  to  consider  the  ques- 
tion of  the  patentability  of  the  issue  is  with- 
out standing.  Wood  v.  Pfister,  C.  D.  1910, 
li4  O.  G.  837. 

544.  On  a  motion  to  dissolve  brought  by 
C.  the  primary  examiner  held  all  the  counts 
unpatentable  and  on  a  motion  brought  by  K. 
held  the  structure  of  C.  so  far  as  defined  by 
counts  2  and  5,  inoperative.  His  decisions 
were  affirmed  by  the  examiners-in-chief.  From 
their  decision  only  C.  appealed.  Held,  that  as 
the  decision  holding  all  the  counts  unpatent- 
able has  become  final  the  interference  stands 
dissolved,  and  C.'s  appeal  is  dismissed.  Cur- 
tis V.  Klcinert,  C.  D.  1910,  16  O.  G.  1038. 

545.  The  facts  shown  by  the  record.  Held, 
sufficient  to  excuse  the  delay  in  filing  an  ad- 
ditional oath  in  one  of  the  applications  in- 
volved in  an  interference  within  the  time  set 
by  an  order  of  the  commissioner.  Graham 
V.  Langhaar,  C.  D.  1911,  164  O.  G.  740. 

14 


546.  On  appeal  the  examiners-in-chief  af- 
firmed the  decision  of  the  primary  examiner 
granting  a  motion  to  dissolve  on  the  ground 
that  C.  had  no  right  to  make  the  claims  cor- 
responding to  the  counts  of  the  issue  and  an- 
nexed to  their  decision  a  recommendation  that 
W.  had  no  right  to  make  them.  C.  took  no 
appeal,  and  W.  appealed  from  the  decision  in 
so  far  as  it  contained  a  recommendation  that 
W.'s  claim  be  rejected.  Held,  that  the  deci- 
sion dissolving  the  interference  on  the  ground 
that  C.  had  no  right  to  make  the  claims  hav- 
ing become  final  further  consideration  of  W.'s 
right  to  make  these  claims  must  be  had  in  the 
ex  parte  prosecution  of  his  application.  Wood- 
bridge  v.  Conrad,  C.  D.  1911,  165  O.  G.  241. 

(b)  Apfeal. 
1.  In  General. 

547.  On  a  motion  to  dissolve  on  the  ground 
of  non-patentability  or  of  no  right  to  make 
a  claim  the  examiner  should  not  set  a  limit  of 
appeal,  as  the  party  who  is  affected  adversely 
by  such  decision  has  the  full  statutory  limit 
of  two  years  within  which  to  appeal.  Painter 
V.  Hall,  C.  D.  1898,  83  O.  G.  1803. 

548.  An  applicant  has  his  remedy  in  case 
his  opponent  fails  to  take  an  appeal  from  a 
decision  of  the  primary  examiner  granting 
the  motion  to  dissolve  an  interference  upon 
the  question  of  non-patentability  or  no  right 
to  make  the  claim.  He  may  ask  that  his  own 
application  be  passed  to  issue  unless  his  oppo- 
nent exercises  his  right  of  appeal  within  a 
reasonable  time.  Failure  on  the  part  of  the 
opponent  to  take  an  appeal  within  such  time 
may  perhaps  be  held  to  work  an  estoppel,  but 
consideration  of  such  questions  should  be  ex 
parte.  (Citing  Abel  and  Dewar  v.  Maxim  v. 
Nobel,  C.  D.  1891,  102,  5G  O.  G.  139,  and  ex 
parte  Lombard,  C.  D.  1888,  56,  43  O.  G.  1347.) 
Id. 

549.  Where  a  motion  was  made  to  dissolve 
an  interference  on  the  ground  of  (1)  no  in- 
terference in  fact,  (2)  no  right  of  one  of  the 
parties  to  make  a  claim,  and  (3)  irregularity 
in  declaring  the  interference,  and  the  exam- 
iner in  his  decision  treated  the  grounds  as 
raising  only  the  question  of  the  right  of  one  of 
the  parties  to  make  the  claim  and  decided  that 
there  was  such  right  and  refused  to  fix  a  limit  of 
appeal.  Held,  that  the  examiner's  refusal  to  set 
a  limit  of  appeal  raises  a  question  which  if  car- 
ried   to   its   logical   conclusion    would    nullify 


210 


INTERFERENCE,  XVII,  (b),  1. 


Rule  124  and  make  the  primary  examiner  the 
sole  tribunal  to  determine  whether  or  not  an 
interference  should  continue.  Silverman  v. 
Hcndrickson,  C.  D.  1899,  88  O.  G.  170S. 

550.  Where  motion  is  made  to  dissolve  an 
interference  based  upon  various  grounds,  some 
of  which  are  appealable  to  the  commissioner 
under  Rule  124,  it  cannot  be  successfully  main- 
tained that  the  primary  examiner  by  group- 
ing the  appealable  grounds  with  a  ground 
which  is  not  appealable  may  prevent  the  com- 
missioner from  reviewing  his  action.  It  is 
not  within  the  power  of  a  primary  examiner 
by  such  ingenious  action  to  nullify  an  office 
rule.     Id. 

551.  As  both  parties  consented  to  and  did 
present  the  question  of  merits  for  decision. 
Held,  that  it  is  unnecessary  to  remand  the 
case  to  the  primary  examiner  for  the  purpose 
of  setting  a  limit  of  appeal,  and  the  appeal 
disposed  of.    Id. 

552.  Interference  in  fact  refers  to  the  ques- 
tion of  conflict  in  subject-matter  claimed,  and 
irregularity  means  some  vital  formal  defect 
which  will  preclude  a  proper  decision  of  pri- 
ority, although  there  may  be  a  conflict  in 
subject-matter,  such  as  indefiniteness  or  un- 
certainty in  the  wording  of  the  issue.  These 
questions  are  essentially  inteo  partes  and  are 
appealable  directly  to  the  commissioner. 
Woodward  v.  Newton,  C.  D.  1899,  86  O.  G. 
490. 

553.  Where  a  motion  was  made  to  dissolve 
an  interference  on  various  grounds,  some  of 
which  are  appealable  to  the  commissioner 
under  Rule  124,  and  the  examiner  in  his  de- 
cision treated  the  grounds  as  raising  only  the 
question  of  the  right  of  one  of  the  parties  to 
make  the  claims  and  decided  that  there  was 
such  right  and  refused  to  fix  a  limit  of  ap- 
peal, Held,  that  the  examiner's  refusal  to  fix 
a  limit  of  appeal  in  effect  nullifies  Rule  124, 
which,  it  is  apparent,  he  has  no  power  to  do. 
(Silverman  v.  Hendrickson,  C.  D.  1899,  173, 
88  O.  G.  1703.)  Goss  V.  Scott,  C.  D.  1901,  96 
O.  G.  842. 

554.  As  each  of  the  parties  presented  ques- 
tions involving  both  merits  and  form  for  de- 
cision, Held,  that  it  would  serve  no  useful 
purpose  to  remand  the  interference  to  the  ex- 
aminer for  the  purpose  of  fixing  a  limit  of 
appeal ;  but,  on  the  contrary,  such  a  course 
involves  only  unnecessary  delay.  The  appeal 
having  been  taken  was  entertained.     Id. 

555.  Where  a  motion  to  dissolve  alleges  no 
interference  in  fact  and  irregularity  and  that 


one  of  the  parties  has  not  the  right  to  make 
the  claim  and  the  examiner  renders  a  deci- 
sion denying  the  motion  on  the  ground  that 
the  party  has  the  right  to  make  the  claim. 
Held,  that  the  examiner  properly  set  a  limit 
of  appeal,  since  the  motion  also  alleged  no  in- 
terference in  fact  and  irregularity.  (Silver- 
man V.  Hendrickson,  C.  D.  1899,  173,  88  O.  G. 
1703.)  Cammett  v.  Hallett,  C.  D.  1900,  96 
O.  G.  1237. 

556.  Where  a  limit  of  appeal  is  set  and  an 
appeal  is  taken  from  the  decision  of  the  ex- 
aminer refusing  to  dissolve  an  interference, 
Held,  that  it  does  not  follow  that  the  com- 
missioner will  entertain  and  determine  such 
an  appeal  when  he  is  satisfied  from  a  consid- 
eration of  the  case  that  the  real  question  in- 
volved relates  to  the  merits.  (Breul  v.  Smith, 
C.  D.  1899,  44,  86  O.  G.  163,'-i.)     Id. 

557.  When  a  motion  to  dissolve  is  brought 
upon  the  grounds  specified  in  Rule  122,  the 
examiner  should  decide  the  motion  on  all 
grounds  alleged,  and  if  this  decision  is  of  such 
a  nature  that  appeal  therefrom  may  be  taken 
he  should  fix  a  limit  of  appeal.  Hinkley  v. 
Barker,  C.  D.  1901,  97  O.  G.  2742. 

558.  Where  a  motion  to  dissolve  alleges  no 
interference  in  fact  and  irregularity.  Held. 
that  the  examiner  is  not  at  liberty  to  hold  that 
it  relates  to  the  merits  and  refuse  to  set  a 
limit  of  appeal  from  his  decision  merely  be- 
cause, in  his  opinion,  the  reasons  given  in  sup- 
port of  the  motion  relate  to  the  question  of 
patentability.     Id. 

559.  Where  an  appeal  has  been  taken  to  the 
cxaminers-in-chief  from  the  decision  of  the 
examiner  refusing  to  dissolve  an  interference 
and  it  appears  that  the  appeal  was  taken  by 
mistake.  Held,  that  said  appeal  cannot  be 
transferred  to  the  commissioner's  docket 
after  the  limit  of  appeal  has  expired,  for  such 
a  proceeding  would  have  the  effect  of  permit- 
ting an  appeal  to  the  commissioner  after  the 
limit  of  appeal  had  expired.  Beck  v.  Long, 
C.  D.  1902,  100  O.  G.  451. 

560.  In  the  event  that  an  appeal  in  an  inter- 
ference proceeding  is  taken  by  mistake  to  the 
examiners-in-chief  and  the  mistake  is  not 
discovered  until  after  the  limit  of  appeal  has 
expired.  Held,  that  the  proper  practice  to  pur- 
sue is  to  withdraw  the  appeal  to  the  exam- 
iners-in-chief and  to  file  an  appeal  to  the  com- 
missioner, at  the  same  time  requesting  an 
extension  of  the  limit  of  appeal  to  include  the 
date  of  filing.  The  reasons  should  be  set 
forth   why  the  appeal   was   not   taken   to  the 


INTERFERENCE,  XVII,  (b),  1. 


211 


commissioner  sooner,  and  a  copy  of  the  paper 
should  be  served  upon  the  opponent.     Id. 

561.  Where  a  party  has  appealed  to  the 
examiners-in-chief  from  a  decision  dissolv- 
ing the  interference,  Held,  that  he  cannot 
amend  his  claims  until  that  appeal  is  disposed 
of  either  by  a  decision  or  by  being  withdrawn. 
Davis  V.  Swift,  C.  D.  1902,  99  O.  G.  1169. 

562.  Where  a  motion  is  brought  for  disso- 
lution of  an  interference  on  all  of  the  grounds 
specified  in  Rule  122,  Held,  that  the  examiner 
should  consider  and  determine  all  of  the 
grounds  and  should  fix  a  limit  of  appeal  from 
those  that  are  appealable.  Cutler  v.  Riddell, 
C.  D.  1903,  106  O.  G.  763. 

563.  Where  a  motion  is  brought  to  dissolve 
an  interference  on  all  the  grounds  specified 
in  Rule  122,  the  examiner  should  decide  the 
motion  on  all  the  grounds  and  set  a  limit  of 
appeal  from  the  appealable  grounds.  Hopfelt 
V.  Read,  C.  D.  1903,  106  O.  G.  767. 

564.  Reconsideration  of  a  motion  to  dis- 
solve is  not  necessary  to  give  the  defeated 
party  the  right  of  appeal  to  the  examiners-in- 
chief,  as  it  is  in  the  case  of  the  ex  parte  re- 
jection of  claims,  and  therefore  it  is  proper 
to  fix  a  limit  of  appeal  from  decisions  on 
motions.  Newcomb  v.  Lemp,  C.  D.  1904,  110 
O.  G.  307, 

565.  The  reason  for  requiring  reconsidera- 
tion of  an  ex  parte  rejection  before  appeal 
does  not  apply  to  motions  in  interferences,  and 
it  is  impossible  to  apply  to  interferences  the 
rules  governing  ex  parte  cases.     Id. 

566.  Whether  or  not  a  decision  dissolving 
an  interference  on  grounds  afTecting  the  mer- 
its is  one  of  the  appealable  decisions  contem- 
plated by  section  -1909,  Revised  Statutes,  it  is 
rendered  appealable  by  Rule  124,  which  is  not 
inconsistent  with  the  statute.     Id. 

567.  The  statutes  do  not  provide  for  an  ap- 
peal to  the  examiners-in-chief  from  a  decision 
on  a  motion  to  dissolve  an  interference  and 
do  not  provide  for  the  motion  itself.  The 
whole  matter  is  controlled  by  the  rules  of 
procedure  established  under  the  authority  of 
section  483,  Revised  Statutes.  Newcomb  v. 
Lemp,  C.  D.  1904,  112  O.  G.  1216. 

568.  The  rule  providing  for  an  appeal  in 
certain  cases  to  the  examiners-in-chicf  from 
the  decision  of  the  primary  examiner  on  a 
motion  to  dissolve  an  interference  is  not  in- 
consistent with  law  and  is  a  mere  regulation 
of  the  procedure  to  be  followed  in  consider- 
ing the  case  within  the  patent  office.     Id. 


569.  The  defeated  party  to  a  motion  to  dis- 
solve an  interference  has  no  just  cause  of 
complaint  because  a  limit  of  appeal  from  the 
decision  is  fixed  when  in  his  opinion  he  is  not 
entitled  to  appeal.  He  is  not  required  to  ap- 
peal, but  is  merely  permitted  to  do  so.     Id. 

570.  Right  to  make  claims  and  patentability 
must  be  appealed  in  first  instance  to  e.xamin- 
crs-in-chief.  These  matters  will  not  be  re- 
viewed upon  appeals  on  non-interferenec  in 
fact  and  irregularity  in  declaration.  Thullen 
V.  Young  and  Townsend,  C.  D.  1903,  118  O. 
G.  22.51. 

571.  Where  upon  appeal  from  the  exam- 
iner's decision  finding  the  existence  of  inter- 
ference in  fact  contentions  are  advanced 
which,  in  effect,  attack  the  right  of  a  party 
to  make  the  claim  in  issue.  Held,  that  the  de- 
cision upon  the  right  to  make  the  claim  is 
not  up  for  review  and  that  the  contention  is 
not  entitled  to  consideration.  Greer  v. 
Christy,  C.  D.  1905,  116  O.  G.  297. 

578.  The  statutes  do  not  provide  for  an  ap- 
peal to  the  examiners-in-chief  from  a  deci- 
sion upon  a  motion  to  dissolve  an  interfer- 
ence. *Allen,  Commissioner  of  Patents  v. 
United  States  of  America  ex  rel.  Lowry  and 
Planters  Compress  Company,  C.  D.  190.5,  116 
O.  G.  22.53. 

573.  Neither  the  statute  creating  the  board 
of  cxaminers-in-chief  nor  any  other  provides 
for  motions  to  dissolve  the  interference  for 
any  reason  after  it  was  once  declared,  and, 
not  providing  for  such  motions,  they  do  not 
provide  for  any  appeals  therefrom.    *Id. 

574.  The  commissioner  of  patents  is  au- 
thorized by  statute  to  regulate  all  the  inter- 
locutory proceedings  in  interference  cases  by 
rules  not  inconsistent  with  law,  and  under 
that  authority  he  has  full  power  to  provide 
for  remanding  interferences  to  the  primary 
examiner  for  consideration  of  a  motion  to 
dissolve.     *Id. 

575.  The  commissioner  has  authority  to 
provide  that  motions  for  dissolution  may  or 
may  not  in  some  or  in  all  respects  be  reviewed 
by  the  appellate  tribunals  of  the  patent  office, 
and  in  so  doing  he  is  not  depriving  any  party 
of  any  statutory  right.    *Id. 

576.  A  motion  for  dissolution  of  an  inter- 
ference is  an  interlocutory  matter,  and  at  best 
brings  up  only  partially  and  indirectly  the 
question  of  priority,  and  it  is  well  settled  that 
rulings  upon  such  matters  are  not  appealable 
prior  to  final  judgment  or  decree  unless  it  be 
so  provided  by  statute.    *Id. 


313 


INTERFERENCE,  XVII,  (b),  1. 


577.  Held,  that  party  will  not  be  permitted 
upon  appeal  on  motion  for  dissolution  to  raise 
and  have  considered  the  question  of  right  to 
claim  the  issue  under  the  guise  of  that  of  in- 
terference in  fact.  Pfingst  v.  Anderson,  C.  D. 
190.-.,  118  O.  G.  1067. 

578.  Where  the  contention  of  irregularity 
in  the  declaration  is  urged  upon  appeal  with 
respect  to  counts  of  the  issue  as  to  which  it 
was  not  urged  or  considered  when  the  case 
was  before  the  primary  examiner.  Held,  that 
this  contention  as  to  such  counts  will  not  be 
considered  on  the  appeal.    Id. 

679.  Where  the  matters  urged  before  the 
examiner  under  the  head  of  irregularity  in 
declaration  related  to  rights  of  parties  to  make 
the  claim  in  issue,  Held,  that  such  matter 
W'ould  not  be  considered  upon  appeal  from 
the  examiner's  decision  finding  no  irregular- 
ity existed.  Pryor  v.  Ball  v.  Brand,  C.  D. 
190.5.  119  O.  G.  653. 

580.  Where  a  motion  to  dissolve  alleges  no 
interference  in  fact  and  irregularity.  Held. 
that  the  examiner  is  not  at  liberty  to  hold 
that  it  relates  to  the  merits  and  refuse  to  set 
a  limit  of  appeal  from  his  decision  merely  be- 
cause, in  his  opinion,  the  reasons  given  in  sup- 
port of  the  motion  relate  to  the  question  of 
patentability.  Duryea  and  White  v.  Rice,  C. 
D.  190.-.,  11.3  O.  G.  80.x 

581.  If  an  appeal  is  taken  which  in  terms 
relates  to  appealable  grounds,  but  in  reality 
seeks  to  have  reviewed  the  favorable  decision 
of  the  primary  examiner  upon  the  merits. 
Held,  that  the  appeal  will  be  dismissed.     Id. 

582.  Where  no  argument  was  made  before 
the  primary  examiner  upon  the  grounds  of 
non-interference  in  fact  and  irregularity  and 
the  examiner  denied  the  motion  as  to  these 
grounds  without  further  consideration  than 
to  notice  the  absence  of  argument.  Held,  that 
the  examiner  properly  fixed  limit  of  appeal, 
but  that  matters  will  not  in  general  be  con- 
sidered on  appeal  which  were  not  presented 
below.  Harnisch  v.  GuenifFet,  Benoit  and 
Nicault,  C.  D.  190.1,  117  O.  G.  1492. 

583.  Concerning  an  appeal  taken  1o  the  com- 
missioner from  a  decision  of  the  primary  ex- 
aminer denying  a  motion  to  dissolve  an  in- 
terference. Held,  that  the  appeal  to  the  com- 
missioner, though  alleging  the  appealable  ques- 
tions of  interference  in  fact  and  irregularity 
in  declaration,  was  one  attempting  to  raise  by 
indirection  the  non-appealable  question  of  an 
opponent's  right  to  make  certain  claims. 
tBlackmore  v.  Hall,  C.  D.  1906,  120  O.  G.  1477. 


548.  Where  it  is  alleged  that  there  has  been 
irregularity  in  declaring  the  interference  be- 
cause the  senior  party  had  been  involved  in 
a  prior  interference  in  which  the  issue  was 
substantially  the  same  as  the  present  issue 
and  that  in  such  prior  interference  such  party 
had  been  defeated  on  the  question  of  priority. 
Held,  that  the  question  presented  is  one  in- 
volving the  right  of  the  senior  party  to  make 
the  claims  in  issue  and  will  therefore  not  be 
considered  on  direct  appeal  from  the  primary 
examiner  under  the  head  of  irregularity. 
Eschinger  v.  Drummond  and  Lieberknecht,  C. 
D.  1906,  121  O.  G.  1.348. 

585.  Where  it  is  contended  upon  appeal  on 
motion  to  dissolve  for  non-interference  in 
fact  that  a  party  has  no  right  to  make  claims. 
Held,  that  the  question  of  right  to  make  claims 
is  different  from  that  of  interference  in  fact 
and  will  not  be  considered  of  such  on  appeal. 
(Blackmore  v.  Hall,  C.  D.  1905,  361,  119  O.  G. 
2.32,3.)  Heintzelman  and  Camp  v.  Vraalstad 
and  Doyle,  C.  D.  1906,  120  O.  G.  906. 

586.  Where  the  decision  of  the  primary  ex- 
aminer fully  disposed  of  the  motion  and  fixed 
a  limit  of  appeal,  but  contained  a  statement 
which  might  raise  a  doubt  as  to  the  condition 
in  which  the  case  was  left  by  the  examiner. 
Held,  that  a  party  was  not  justified  in  as- 
suming that  he  could  ignore  the  limit  of  ap- 
peal fixed  and  obtain  a  rehearing  or  take  ap- 
peals at  later  dates.  Hewitt  v.  Steinmetz,  C. 
D.  1906,  122  O.  G.  1395. 

587.  The  primary  examiner  has  no  author- 
ity to  extend  the  limit  of  appeal  from  his  de- 
cision upon  motion  brought  after  said  limit 
has  expired.  Becker  and  Patitz  v.  Edwards, 
C.  D.  1906,  123  O.  G.  1990. 

588.  Where  appeals  are  taken  from  the  de- 
cision of  the  examiner  upon  motions  for  dis- 
solution bf.th  to  the  commissioner  and  to  the 
cxaminers-in-chief,  action  upon  the  appeal  to 
the  commissioner  will  be  suspended  until  after 
the  decision  of  the  examiners-in-chief  is  ren- 
dered, in  order  that  all  appeals  upon  the  mo- 
tions may  be  considered  at  the  same  time. 
Where  the  examiner  upon  the  rehearing  en- 
tirely dissolves  the  interference,  the  question 
of  irregularity  in  declaration  of  the  interfer- 
ence becomes  a  moot  question  and  will  not  be 
entertained  unless  the  decision  dissolving  the 
interference  is  reversed  on  appeal.  O'Brien 
v.  Gale,  Sr.,  v.  Miller  v.  Zimmer  v.  Calder- 
wood,  C.  D.  1907,  128  O.  G.  3288. 

589.  The  limit  of  appeal  will  not  be  extend- 
ed to  permit  an  appeal  upon  motion  to  trans- 


INTERFERENCE,  XVII,  (b),  2. 


213 


mit  a  motion  for  dissolution  where  the  trans- 
mission of  said  motion  would  merely  result  in 
a  reconsideration  by  the  primary  examiner 
under  the  head  of  irregularity  in  declaring 
the  interference  of  the  facts  he  has  already 
considered  under  the  right  to  make  the  claims. 
Adkins  and  Lewis  v.  Seeberger,  C.  D.  1907, 
127  O.  G.  15T8. 

590.  Where  the  decision  of  the  examiner 
upon  motions  for  dissolution  includes  an  ad- 
verse decision  upon  the  merits  of  a  party's 
case  which  is  subject  to  reconsideration  under 
the  provisions  of  Rule  124,  no  limit  of  appeal 
should  be  set  in  any  of  the  motions  until  the 
decision  is  rendered  upon  the  rehearing. 
O'Brien  v.  Gale,  Sr.  v.  Miller  v.  Zimmer  v. 
Calderwood,  C.  D.  1907,  128  O.  G.  3288. 

591.  A  decision  of  the  primary  examiner 
dissolving  an  interference  on  the  ground  that 
the  question  in  issue  is  res  adjudicata  relates 
to  the  merits  and  is  reviewable  in  the  first 
instance  by  the  examiners-in-chief.  Norris  v. 
Johnson,  C.  D.  1910,  155  O.  G.  801. 

592.  Where  in  connection  with  an  appeal, 
on  a  decision  upon  a  motion  to  dissolve,  an- 
other motion  to  dissolve  is  presented  which  is 
not  accompanied  by  a  motion  to  restore  the 
jurisdiction  of  the  examiner  of  interferences 
and  gives  no  reason  why  the  grounds  set  forth 
therein  were  not  urged  at  the  time  the  orig- 
inal motion  was  presented.  Held,  that  such 
motion  is  without  standing.  Langslow  v. 
Malorsay,  C.  D.  1910,  155  O.  G.  1043. 

2.  Supervisory  Authority  of  Commissioner. 

593.  The  practice  of  the  office,  under  which 
the  commissioner  declines  to  take  jurisdic- 
tion of  questions  relating  to  the  merits  brought 
to  him  by  petition  or  appeal  from  the  deci- 
sion of  the  primary  examiner  on  a  motion 
to  dissolve,  should  be  followed  unless  there 
should  appear  some  extraordinary  reason  for 
departing  therefrom.  Breul  v.  Smith,  C.  D. 
1899,  86  O.  G.  1G35. 

594.  Although  Rule  124  provides  that  from 
a  decision  of  the  primary  examiner  affirming 
the  patentability  of  a  claim  or  the  right  to 
make  it  no  appeal  can  be  taken,  and  Rule  120 
provides  that  the  lower  tribunals  may  call  the 
commissioner's  attention  to  the  matter  which 
amounts  to  a  statutory  bar  to  the  grant  of  a 
patent,  Held,  that  under  the  supervisory 
power  conferred  upon  the  commissioner  by 
statute  he  may  review  a  favorable  decision 
of  the  primary  examiner  on  the  question  of 


patentability,  notwithstanding  Rule  124,  and 
even  when  his  attention  has  not  been  called  to 
the  matter,  as  provided  for  by  Rule  126.  An- 
derson and  Dyer  v.  Lowry,  C.  D.  1899,  89  O. 
G.  1801. 

595.  Under  the  proper  construction  Rules 
124  and  126  do  not  deprive  the  commissioner 
of  his  supervisory  power,  and  it  would  be  a 
very  anomalous  condition  of  affairs  if  the 
examiners,  who  are  appointed  upon  the  nomi- 
nation of  the  commissioner,  are  above  his 
superintendence.  If  he  has  no  power  to  su- 
perintend and  advise  the  action  of  the  ex- 
aminers, he  could  not  superintend  the  the 
granting  and  issuing  of  patents.     Id. 

596.  The  commissioner  will  review  a  favor- 
able decision  by  the  primary  examiner  on  the 
question  of  patentability  only  in  exceptional 
cases  to  correct  some  palpable  error.  Kitsee 
v.  Robertson,  C.  D.  1901,  97  O.  G.  2306. 

597.  No  appeal  from  a  favorable  decision 
on  the  question  of  patentability  will  be  enter- 
tained, and  the  matter  will  not  be  taken  up 
under  the  supervisory  authority  of  the  com- 
missioner, except  in  a  clear  case.  Denton 
and  Denton  v.  Riker,  C.  D.  1902,  98  O.  G. 
415. 

598.  A  favorable  decision  by  the  examiner 
upon  the  patentability  of  claims  cannot  be 
brought  up  for  review-  either  by  appeal  or 
petition.  The  commissioner  will  interfere  in 
such  case  only  to  correct  an  error  which  is 
clear  and  evident.  Niedermeyer  v.  Walton, 
C.  D.  1902,  98  O.  G.  1707. 

599.  The  supervisory  authority  of  the  com- 
missioner as  the  executive  head  of  the  office 
will  be  exercised  to  review  a  favorable  deci- 
sion by  an  examiner  as  to  patentability  only 
in  exceptional  cases,  where  clear  and  palpable 
errors  appear  which  cannot  be  cured  in  any 
other  way.  Read  v.  Scott,  C.  D.  1902,  101  O. 
G.  449. 

600.  It  is  only  in  rare  cases  that  executive 
interference  with  a  judicial  decision  rendered 
in  the  regular  course  of  procedure  would  be 
warranted,  and  it  should  ordinarily  be  exer- 
cised only  to  the  extent  of  remanding  the  case 
to  the  examiner,  with  directions  to  again  hear 
and  determine  the  question  originally  pre- 
sented to  him.     Id. 

601.  A  petition  that  the  commissioner  exer- 
cise his  supervisory  authority  and  review  a 
favorable  decision  by  the  examiner  upon  the 
merits  of  the  claims  will  be  dismissed.  A 
party  cannot  by  misnaming  the  action  and 
calling  it  a  petition  to  obtain  the  right  of  ap- 


214 


INTERFERENCE,  XVII,  (b),  3. 


peal  where  an  appeal  is  prohibited  by  the  rules. 
Kempshall  v.  Siebcrling,  C.  D.  I'JOa,  104  O.  G. 
1395. 

602.  The  commissioner  will  not  e.xercise  his 
supervisory  authority  to  review  a  favorable 
decision  upon  the  merits  of  claims  except  in 
a  very  clear  case  where  a  palpable  error  is 
evident  on  the  face  of  the  record.  Wilcom  v. 
Lasher,  C.  D.  1903,  105  O.  G.  743. 

603.  The  commissioner  will  not  exercise  his 
supervisory  power  to  review  a  favorable  deci- 
sion by  the  examiner  upon  the  merits  except 
where  there  is  clear  and  palpable  error  on 
the  face  of  the  record.  Brewer,  Tily,  Rehfuss 
&  Rehfuss  V.  Dement,  C.  D.  1905,  110  O.  G. 
2010. 

604.  The  supervisory  authority  of  the  com- 
missioner will  not  be  exercised  to  review  a 
favorable  decision  on  the  question  of  patent- 
ability except  in  a  very  clear  case.  Eschinger 
V.  Urummond  and  Lieberknecht,  C.  D.  190C, 
l-'l  O.  G.  1348. 

605.  Where  the  commissioner  dismissed  an 
appeal  from  the  decision  of  the  primary  ex- 
aminer denying  a  motion  to  dissolve  an  inter- 
ference on  the  ground  that  the  appeal,  though 
alleging  appealable  grounds,  only  sought  con- 
sideration of  non-appealable  questions.  Held, 
that  the  decision  of  the  commissioner  was  a 
quasi-judicial  determination  which  bears  more 
or  less  directly  upon  the  merits  of  the  contro- 
versy and  presents  a  question  over  which  the 
Secretary  of  the  Interior  has  no  supervisory 
jurisdiction  by  appeal  or  otherwise.  (See  But- 
terworth  v.  Hoe,  C.  D.  1884,  429,  29  O.  G. 
CI 5,  112  U.  S.  50,  and  Poole  v.  Avery,  C.  D. 
1899,  25.5,  87  O.  G.  357;  14  Assistant  Attor- 
neys-General Opinions,  117.)  tBlackraore  v. 
Hall,  C.  D.  190G,  120  O.  G.  1477. 

606.  Where  the  examiner,  on  a  motion  to 
dissolve,  holds  that  a  party  has  a  right  to 
make  the  claims  in  issue  and  upon  petition  to 
the  commissioner  by  the  opposing  party  asking 
him,  under  his  supervisory  authority,  to  review 
the  favorable  decision  of  the  examiner  the  com- 
missioner refuses  to  pass  upon  the  question, 
it  cannot  be  successfully  urged  that  the  ques- 
tion of  the  right  of  such  party  to  make  the 
claims  is  res  adjudicuta.  Hopkins  v.  New- 
man, C.  D.  1907,  131  O.  G.  1101. 

3.  Favorable  Decision  on  Merits. 

607.  While  it  is  true  that  the  statute  has  im- 
posed upon  the  commissioner  of  patents  the 
superintendence  of  all   duties   relating  to  the 


grant  and  issue  of  patents,  and  under  such 
supervisory  power  he  may  review  the  favor- 
able decision  of  the  primary  examiner  on  the 
question  of  patentability  in  an  interference 
case  notwithstanding  Rule  124,  and  even  upon 
his  own  motion,  yet  such  power  should  only 
be  exercised  with  the  greatest  caution.  An- 
derson and  Dyer  v.  Lowry  (C.  D.  1899,  230, 
89  O.  G.  1801,  cited.)  Griffin  v.  Swenson,  C. 
D.  1900,  91  O.  G.  819. 

608.  The  rule  that  a  favorable  decision  by 
the  primary  examiner  upon  the  right  of  a 
party  to  make  the  claim  is  not  subject  to  re- 
view by  another  tribunal  of  the  office  applies 
only  to  proceedings  directly  involving  the  case 
in  which  the  decision  was  made  and  not  to 
proceedings  relating  to  a  different  case  and 
in  which  the  first  is  merely  introduced  as  part 
of  the  evidence.  Robinson  v.  Copeland,  C.  D. 
1903,   102  O.  G.  466. 

609.  Rule  124  of  the  Rules  of  Practice  of 
the  patent  office,  providing  that  there  shall  be 
no  appeal  on  motions  for  dissolution  from  a 
favorable  decision  by  the  primary  examiner  as 
to  the  right  of  a  party  to  make  the  interfer- 
ing claim  is  not  in  conflict  with  the  statute 
and  is  valid.  *Allen,  Commissioner  of  Patents 
V.  United  States  of  America  ex  rel.  Lowry 
and  Planters  Compress  Co.,  C.  D.  1905,  110 
O.  G.  2253. 

610.  Whatever  objections  there  may  be  to 
the  policy  and  rule  preventing  appeal  from 
decisions  affirming  patentability  or  right  to 
make  claims  in  those  cases  where  affirmance 
may  result  in  preventing  the  issue  of  a  pat- 
ent to  a  party  who,  in  the  event  of  a  contrary 
decision,  might  have  been  entitled  thereto, 
this  policy  and  rule  are  believed  to  be  in  ac- 
cordance with  sound  reason  and  unimpeach- 
able in  their  application  to  "cases  where  the 
would-be  appellant  upon  patentability  has  in 
any  event  no  standing  before  the  office  as  a 
claimant  for  a  patent  upon  the  matter  in  ques- 
tion. Potter  V.  Mcintosh,  C.  D.  1906,  120  O. 
G.  1823. 

611.  A  party  to  an  interference  has  no 
right  to  a  review  by  the  commissioner  of  a 
favorable  decision  by  the  primary  examiner 
on  a  motion  to  dissolve  alleging  non-patenta- 
bility of  the  issue  either  on  direct  appeal  or 
upon  petition  for  the  exercise  of  his  super- 
visory authority.  While  section  4904,  Re- 
vised Statutes,  gives  the  commissioner  the 
right  to  determine  when  an  interference  ex- 
ists, this  authority  is  delegable,  and  when  it 


INTERFERENCE,  XVII,  (b),  4. 


21j 


is  delegated  to  the  primary  examiner  and  he 
makes  a  favorable  decision  thereon  such  deci- 
sion will  be  reviewed  only  in  an  extraordi- 
nary case.     Hawkins  v.   Coleman  v.  Thullen, 

C.  D.  1908,  133  O.  G.  1187. 

4.  No   Right  to   Make   Claims. 

612.  The  words  "may  be  heard  inter  partes" 
in  Rule  124  permit  the  adverse  party  to  an 
interference  proceeding,  on  a  motion  to  dis- 
solve on  the  ground  of  non-patentability  or 
no  right  to  make  the  claim,  to  be  heard  on 
appeal,  if  considered  advisable  by  the  exam- 
iners-in-chief. The  adverse  party,  however, 
is  not  heard  as  a  matter  of  right,  but  as  a 
matter  of  courtesy  only.     Painter  v.  Hall,  C. 

D.  1898,  83  O.  G.  1803. 

613.  On  an  appeal  from  the  decision  of  the 
primary  examiner  on  a  motion  involving  the 
right  of  an  applicant  to  make  a  claim  it  is 
doubtful  whether  the  adverse  party  should 
be  heard,  even  as  a  matter  of  courtesy.  This 
matter  should,  however,  be  left  to  the  discre- 
tion of  the  examiners-in-chief.     Id. 

614.  The  party  bringing  such  motion,  so  far 
as  an  appeal  is  concerned,  is  no  more  entitled 
to  be  heard  as  of  right,  whatever  may  be  de- 
cided by  the  office  as  regards  his  appearing 
before  an  appellant  tribunal  as  a  matter  of 
policy,  than  any  person  not  before  the  office 
whose  rights  to  freely  manufacture  the  in- 
vention covered  by  the  claim  might  be  cur- 
tailed by  the  issuance  of  a  patent.    Id. 

615.  Such  motion  is  hear  inter  partes  by  the 
primary  examiner  as  a  matter  of  office  policy, 
in  order  that  the  facts  and  reasons  which  in 
the  opinion  of  the  moving  party  negative  the 
patentability  of  the  claim  or  show  that  his  op- 
ponent is  not  entitled  to  make  the  claim  may 
be  clearly  presented ;  but  the  office  does  not 
and  cannot  recognize  the  moving  party  as  a 
party  in  interest  entitled  to  contest  the  patent- 
ability of  another's  claims.  He  has  no  right 
of  appeal  from  a  decision  denying  his  mo- 
tion.    Id. 

616.  The  same  reasons  which  justify  the 
rule  which  refuses  the  right  of  appeal  from 
the  decision  of  the  primary  examiner  affirming 
patentability  or  the  right  of  the  respective 
parties  to  make  the  claim  justify  the  office 
in  refusing  to  permit  the  appeal  taken  by 
the  party  whose  claims  are  affected  to  be 
made  a  contest  inter  partes  before  the  appel- 
late tribunal.     Id. 


617.  Whether  or  not  the  adverse  party  is 
to  be  heard  upon  the  appeal  upon  the  question 
raised  by  the  motion  to  dissolve,  it  is  clear 
that  he  cannot  be  heard  before  the  appellate 
tribunal  as  to  the  validity  of  the  appeal  of 
the  party  against  whom  the  question  of  patent- 
ability or  right  to  make  the  claim  has  been  de- 
cided by  the  primary  examiner.  As  to  ques- 
tions involving  validity,  the  appeal  is  ex  parte 
purely.    Id. 

618.  The  question  of  the  time  of  taking 
appeal  and  the  question  of  estoppel  of  a  party 
by  his  adoption  of  a  course  deemed  to  be 
inconsistent  with  an  appeal  are  ex  parte  ques- 
tions, and  an  adverse  party  has  no  right  to 
be  heard  as  a  matter  of  '■ourse  by  the  exam- 
iners-in-chief on  appeal  on  these  questions. 
Id. 

619.  The  question  of  patentability  and  the 
right  of  an  applicant  to  make  the  claim  clearly 
relate  to  the  merits  and  when  appealable  at 
all  are  ex  parte  questions  between  the  appli- 
cant whose  claim  is  affected  and  the  office. 
(Painter  v.  Hall,  C.  D.  1898,  91,  83  O.  G. 
1803.)  Woodward  v.  Newton,  C.  D.  1899,  86 
O.  G.  490. 

620.  Where  the  argument  on  a  motion  to 
dissolve  on  the  ground  of  no  interference  in 
fact  raises  the  question  whether  a  party  is 
entitled  to  make  the  claim  corersponding  to 
the  count,  Held,  that  this  question  of  his  right 
to  make  the  claim  is  to  be  reviewed,  if  at  all, 
with  the  final  decision  in  the  interference  and 
not  upon  interlocutory  appeal.  Zimmermann 
v.  Zamboni,  C.  D.  1906,  121  O.  G.  2326. 

621.  Where  the  examiners-in-chief  on  ap- 
peal affirmed  the  decision  of  the  primary  ex- 
aminer dissolving  the  interference  on  the 
ground  that  T.  has  no  right  to  make  the  claims 
and  annexed  to  their  decision  a  statement  that 
in  their  opinion  the  claims  were  not  patent- 
able, which  question  was  not  involved  in  the 
appeal,  Held,  that  so  long  as  the  decision 
stands  that  T.  has  no  right  to  make  the  claims 
the  question  of  patentability  of  the  claims  is 
an  ex  parte  one,  with  which  Townsend  has  no 
more  concern  than  any  member  of  the  general 
public,  and  that  it  is  necessary  for  T.  to  take 
his  appeal  and  obtain  a  reversal  of  the  deci- 
sion dissolving  the  interference  before  he  has 
a  right  to  be  heard  concerning  the  patentabil- 
ity of  the  claims.  Townsend  v.  Ehret,  C.  D. 
1906.  123  O.  G.  20.il. 

622.  Where  a  primary  e.xaminer  on  a  mo- 
tion to  dissolve  decides  that  one  of  the  parties 


Sl6 


INTERFERENCE,  XVII,  (b),  5,  6,  7. 


has  no  right  to  make  the  claims  of  an  inter- 
ference issue  and  such  party,  after  filing  an 
appeal  from  such  decision,  fails  to  prosecute 
the  same  and  abandons  it,  such  decision  be- 
comes final  and  binding  upon  the  parties  and 
precludes  the  subsequent  ex  parte  considera- 
tion of  the  same  question.  *United  States  of 
America  ex  rel.  The  Newcomb  Motor  Co.  v. 
Moore,  Commissioner  of  Patents,  C.  D.  1908, 
133  O.  G.  464. 

623.  Upon  a  motion  to  dissolve  it  was  held 
that  one  of  the  parties  had  no  right  to  make 
the  claims  in  issue,  and  the  appeal  from  that 
decision  was  abandoned ;  but  subsequently  in 
the  ex  parte  prosecution  of  that  party's  case 
it  was  held  by  the  examiners-in-chief  that  said 
party  had  a  right  to  make  the  identical  claims, 
and  the  interference  was  redeclared.  The 
commissioner  thereupon  set  aside  the  ex  parte 
decisions  and  directed  a  rehearing  of  the  case 
before  the  examiners-in-chief  inter  partes. 
Held,  that  the  decision  in  the  interference 
was  res  adjudicata  and  that  the  commissioner 
was  without  authority  to  direct  the  readjudi- 
cation  in  such  ex  parte  application  of  the  ques- 
tion whether  said  party  had  a  right  to  make 
the  identical  claims  of  the  issue  of  the  inter- 
ference.   *Id. 

624.  An  order  dissolving  an  interference  on 
the  ground  that  one  of  the  parties  thereto 
has  no  right  to  make  the  claims  of  the  issue 
is  itself  interlocutory  and  cannot  be  appealed 
from  independently  of  a  final  decision  putting 
an  end  to  the  litigation  through  an  award  of 
priority  to  the  rival  applicant.  When  that 
final  award  has  been  made,  the  interlocutory 
order  may  be  reviewed  in  an  appeal  there- 
from, but  not  otherwise.  *Cosper  v.  Gold  and 
Gold,  C.  D.  1910,  1.51  O.  G.  194. 

.5.  Irregularity  in  Declaration. 

625.  A  petition  praying  that  the  examiner 
be  advised  that  from  every  motion  based 
upon  the  ground  of  irregularity,  wherein  it 
is  contended  by  the  moving  party  that  the 
ground  of  irregularity  involves  something 
more  than  the  question  of  patentable  inven- 
tion of  the  issue,  a  limit  of  appeal  should  be 
fixed  to  enable  such  moving  party  to  appeal, 
cannot  be  granted,  since  the  office  must  deter- 
mine for  itself,  without  regard  to  the  views 
of  parties,  whether  the  grounds  urged  as 
showing  what  the  moving  party  called  irreg- 
ularities   do,    in    fact,    relate    to    the    merits. 


Woodward   v.   Newton,   C.   D.   1899,  86  O.   G. 
490. 

626.  Where  it  was  contended  that  the  inter- 
ference was  irregularly  (Jeclared  because  a 
party  did  not  show  and  did  disclaim  one  of 
the  elements  of  the  issue.  Held,  that  the  only 
question  raised  went  to  the  right  of  the  party 
to  make  the  claim  and  that  such  questions 
would  not  be  considered  upon  appeals  from 
decisions  upon  irregularity  in  declaration. 
Ball  v.  Rego,  C.  D.  190.5,  119  O.  G.  1258. 

6.  Non-interference  in  Fact. 

627.  Where  it  has  been  decided  that  one  of 
the  parties  to  the  interference  has  no  right 
to  make  the  claims,  the  question  of  interfer- 
ence in  fact  is  a  moot  question  and  will  not 
be  considered  on  appeal.  Selden  v.  Gerts  v. 
Palmer,  C.  D.  1903,  105  O.  G.  1531. 

628.  Where  the  examiner  held  that  there 
was  no  interference  in  fact  because  one  party 
failed  to  disclose  the  issue,  Held,  that  the 
question  of  non-disclosure  of  an  invention 
relates  to  the  merits  and  that  an  appeal  from 
an  adverse  decision  on  that  question  should 
be  taken  in  the  first  instance  to  the  examiners- 
in-chief.  Dittgen  v.  Parmenter,  C.  D.  1903, 
107  O.  G.  1098. 

629.  Where  it  is  contended  upon  appeal  on 
motion  to  dissolve  for  non-interference  in 
fact  that,  in  view  of  functions  effected  in  ap- 
pellees' apparatus  which  it  is  claimed  are  not 
effected  in  that  of  the  appellants,  the  inven- 
tions claimed  by  the  respective  parties  are 
essentially  different,  Held,  that  the  differences 
in  function  referred  to  related  to  specific  dif- 
ferences in  the  devices  to  which  the  issue  is 
limited  and  formed  no  basis  for  dissolution 
of  the  interference.  (Townsend  v.  Copeland 
T.  Robinson,  C.  D.  1905,  559,  119  O.  G.  2523.) 
Heintzelman  and  Camp  v.  Vraalstad  and 
Doyle,  C.  D.  1906,  120  O.  G.  906. 

7.  Non-Patentability    of    Issue. 

630.  Should  the  examiner,  upon  the  motion 
to  dissolve,  decide  that  the  claims  are  not 
patentable  to  one  of  the  parties,  a  decision 
which  is  as  to  one  or  both  of  the  parties 
equivalent  to  a  final  rejection,  the  full  course 
of  appeal  is  open  to  the  party  whose  claim  is 
affected  by  such  decision,  and  such  appeal  is 
ex  parte.  Painter  v.  Hall,  C.  D.  1898,  83  O. 
G.  1803. 

631.  A  review  of  the  examiner's  action,  so 
far   as   it   relates   to   the   patentability   of   the 


INTERFERENCE,  XVII,  (c),  1,  2,  3. 


217 


issue,  will  be  granted  only  to  correct  an  error 
in  such  action,  which  error  is  clear  and  evi- 
dent. (Ooss  V.  Scott,  C.  D.  I'JOI,  80,  'J6  O.  G. 
842.)  A  petition,  therefore,  which  seeks  to 
obtain  indirectly  a  review  of  an  examiner's 
action,  from  which  no  direct  appeal  lies,  will 
not  ordinarily  be  entertained.  Rinsche  v. 
Sandherr,  C.  D.   1903,  10->  O.  G.  1780. 

632.  Where  an  interference  was  dissolved 
for  non-patentability  of  the  issue,  and  no 
appeal  from  that  action  was  prosecuted  in 
the  interference,  but  an  ex  parte  appeal  was 
thereafter  taken,  upon  which  the  claims  in 
issue  were  found  patentable,  and  the  examiner 
reinstated  the  interference.  Held,  that  the  re- 
instatement of  the  interference  should  be  set 
aside  and  also  the  decision  on  the  appeal. 
Newcomb  v.  Thompson,  C.  D.  1900,  122  O. 
G.  3012. 

633.  Where  the  examiner  finds  on  motion 
to  dissolve  an  interference  that  the  subject- 
matter  in  issue  is  not  patentable,  he  should 
take  such  actions  in  the  application  subse- 
quent to  his  decision  as  will  put  them  in  con- 
dition for  the  statutory  appeal,  so  that  the 
appeals  may  be  continued  directly  to  the  court 
of  appeals  without  the  necessity  of  a  second 
course  of  appeal  through  the  patent  office. 
Newcomb  v.  Thomson,  C.  D.  1906,  122  O.  G. 
3013. 

(c)  Appeal  Lies. 
1.  In  General. 

634.  Where  the  contention  was  made  upon 
appeal  on  motion  for  dissolution  that  the  ex- 
aminer's decision  holding  an  application  not 
to  have  become  abandoned  through  insuffi- 
cient prosecution  is  one  affirming  party's  right 
to  make  claims,  and  therefore  one  from  which 
no  appeal  lies.  Held,  that  such  decision  is  not 
one  upon  the  right  to  claim  in  the  restricted 
sense  in  which  this  expression  is  used  in  pat- 
ent practice,  but  is  one  upon  the  regularity 
of  the  declaration  of  the  interference,  and 
therefore  appealable  under  Rule  122.  Meden 
v.   Curtis,  C.   D.   1903,   117  O.  G.   179:.. 

2.  Supervisory   Authority   of   Commissioner. 

635.  Where  in  an  interference  between  a 
patent  and  an  application  upon  the  same 
claims  the  primary  examiner  has  held  that 
there  is  no  interference  in  fact,  and  the  ex- 
aminers-in-chicf  have  held  that  the  applicant 
has  a  right  to  make  the  claims  and  applicant 
has  not  appealed  on  the  qhestion  of  interfer- 


ence in  fact.  Held,  that  under  these  circum- 
stances the  supervisory  power  of  the  com- 
missioner would  be  exercised  to  prevent  the 
issue  of  a  patent  on  the  application  without 
amendment  to  distinguish  its  claims  from 
those  of  the  patent  or  a  determination  that 
such  amendment  is  unnecessary.  Howell  v. 
Hess,  C.  D.  1906,  122  O.  G.  2393. 

?,.  No   Right  to   Make   Claims. 

636.  .\  decision  on  motion  holding  that  one 
party  has  no  right  to  make  the  claims  result* 
in  a  refusal  of  his  patent  and  the  allowance 
of  a  patent  to  the  opposing  party  and  finally 
disposes  of  the  case  upon  the  merits.  Held, 
therefore  that  the  decision  must  be  regarded 
as  appealable  unless  and  until  the  courts  de- 
cide to  the  contrary.  Newcomb  v.  Lemp, 
C.  D.  1904,  110  O.  G.  307. 

637.  The  right  of  a  party  to  his  claims  is 
not  finally  determined  by  a  decision  on  a  mo- 
tion dissolving  the  interference  on  the  ground 
that  he  has  no  right  to  them.  He  may  con- 
test his  right  ex  parte  after  the  dissolution 
and  may  avail  himself  of  his  right  of  appeal. 
Newcomb  v.  Lemp,  C.  D.  1904,  112  O.  G.  1216. 

638.  If  it  be  incorrectly  held  that  a  party 
to  an  interference  has  a  right  to  make  a 
claim  in  issue,  an  award  of  priority  to  him  is 
made  possible.  His  adversary  would  thereby 
be  deprived  of  a  substantial  right  in  that  he 
would  be  refused  a  claim  where  he  was  nec- 
essarily the  prior  inventor,  his  adversary 
never  having  made  the  invention.  Podlesak 
&  Podlesak  v.  Mclnnerney,  C.  D.  1906,  120  O. 
G.  2127. 

639.  In  view  of  the  possible  effect  upon  the 
determination  of  priority  of  an  error  in  a 
decision  holding  that  a  party  has  a  right  to 
make  a  claim.  Held,  that  the  latter  question 
should  not  be  finally  determined  by  the  pri- 
mary examiner  who  originally  declared  the 
interference  and  that  the  court  would  there- 
fore take  jurisdiction  to  determine  that  ques- 
tion as  ancillary  to  that  of  priority.     *Id. 

640.  The  right  of  a  party  to  make  a  claim 
goes  to  the  foundation  of  an  interference,  and 
a  judgment  of  a  primary  examiner  denying 
that  right  may  be  appealed  to  the  court  of 
appeals  of  the  District  of  Columbia,  and  that 
court  will  take  jurisdiction  to  determine  that 
question  "as  an  ancillary  question  to  be  con- 
sidered in  awarding  priority  of  invention." 
•United  States  of  America  ex  rel.  The  New- 
comb Motor  Company  v.  Moore,  Commission- 
er of  Patents,  C.  D.  1908,  133  O.  G.  464. 


218 


INTERFERENCE,  XVII,  (d),  1. 


(d)  No   Appeal  Lies. 
1.  In  General. 

641.  Where  an  appeal  was  taken  to  the  com- 
missioner from  the  decision  of  the  examiner 
denying  a  motion  to  dissolve  an  interference 
on  questions  which  relate  to  the  merits  of 
the  invention,  Held,  that  as  under  the  rules 
and  the  uniform  practice  of  the  office,  the 
commissioner  has  dechned  to  take  jurisdic- 
tion of  such  questions  either  by  appeal  or 
petition  the  appeal  should  be  dismissed. 
(Manny  v.  Easley  et  al.,  C.  D.  1889,  179,  48 
O.  G.  538;  Steward  v.  Ellis  et  al.,  C.  D.  1889, 
49  O.  G.  1983,  and  Edison  v.  Stanley,  C.  D. 
1891,  173,  57  O.  G.  273,  cited.)  Breul  v.  Smith, 
C.   D.   1899,  80  O.  G.  1635. 

642.  Where  it  is  contended  by  the  appellant 
on  appeal  from  the  decision  of  the  examiner 
refusing  to  dissolve  an  interference  that  his 
opponent  has  not  the  right  to  assert  claim  to 
the  invention  in  view  of  his  concession  of 
priority  as  a  joint  inventor  in  a  former  inter- 
ference and  it  appears  that  to  render  a  deci- 
sion on  that  question  adverse  to  the  appellee 
would  be  to  refuse  him  a  patent,  Held,  that 
the  question  involved  goes  to  the  merits  and 
is  not  a  mere  interlocutory  matter  and  the 
appeal  should  be  dismissed.  Cammett  v.  Hal- 
lett,  C.  D.  1900,  96  O.  G.  1237. 

G43.  Where  the  examiner  dissolves  an  in- 
terference on  the  ground  that  the  respective 
parties  thereto  have  no  right  to  make  the 
claims,  no  appeal  from  such  a  decision  can  be 
taken  directly  to  the  commissioner,  and  such 
an  appeal  will  be  dismissed.  Story  v.  Cris- 
well,  C.  D.  1902,  100  O.  G.  683. 

644.  Where  the  examiner  dissolved  an  in- 
terference because  the  parties  thereto  have 
no  right  to  make  the  claims  on  the  ground 
of  inoperativeness  and  the  limit  of  appeal 
from  said  decision  having  expired,  Held,  that 
the  question  of  interference  in  fact  necessarily 
becomes  a  moot  question,  and  an  appeal  from 
a  decision  involving  the  same  will  be  dis- 
missed.    Id. 

645.  A  refusal  to  rehear  a  case  is  not  an 
appealable  action  nor  is  a  favorable  decision 
by  the  examiner  as  to  the  patentability  of 
claims.  Macey  v.  Laning  v.  Casler,  C.  D. 
1901,  101  O.  G.  1608. 

646.  Where  the  examiner  dissolves  an  in- 
terference on  the  grounds  that  there  was  no 
interference  in  fact,  that  there  was  irregular- 
ity in  the  declaration  of  the  interference,  and 


that  the  issue  was  not  patentable  to  F.  and 
U.,  and  no  appeal  is  taken  to  the  cxaminers-in- 
chief  from  that  part  of  the  decision  holding 
the  issue  not  to  be  patentable.  Held,  that  as 
one  of  the  parties  has  no  right  to  make  the 
claim  of  the  issue  and  the  interference  has 
been  dissolved  for  that  reason  the  questions 
of  interference  in  fact  and  irregularity  in 
declaring  the  interference  become  moot  ques- 
tions and  will  not  be  decided.  Appeal  dis- 
missed. Fickinger  and  Blake  v.  Hulett,  C.  D. 
1904,  111  O.  G.  2492. 

647.  Where  a  motion  to  dissolve  is  brought 
upon  all  grounds  of  Rule  122  and  the  record 
sliows  that  the  only  grounds  urged  before  the 
examiner  relate  to  the  merits,  upon  which  he 
rendered  an  affirmative  decision,  and  that  the 
contention  on  appeal  is  that  there  is  no  in- 
terference in  fact  and  that  there  has  been  ir- 
regularity in  the  declaration  of  the  interfer- 
ence, for  the  reason  that  the  claims  are  not 
patentable.  Held,  that  the  affirmative  action 
of  the  examiner  as  to  the  patentability  of  the 
claim  will  not  be  reviewed  indirectly  upon  an 
appeal  relating  to  the  other  grounds  permitted 
by  Rule  122,  as  the  appeal,  while  alleging  ap- 
pealable grounds,  really  relates  to  grounds 
which  are  not  appealable,  .\ppeal  dismissed. 
Wilkinson  v.  Junggren,  C.  D.  1904,  112  O.  G. 
252. 

648.  An  appeal  upon  the  ground  of  irregu- 
larity alleging  the  want  of  sufficiency  of  an 
affidavit  filed  under  Rule  94  (2),  but  which 
in  effect  is  an  attempt  to  have  reviewed  a 
favorable  decision  of  the  primary  examiner 
upon  an  applicant's  right  to  make  the  claim. 
Held,  that  such  appeal  will  not  be  entertained. 
Schubert  v.  Munro,  C.  D.  1904,  113  O.  G.  28:!. 

649.  Where  an  appeal  relates  to  appealable 
grounds,  but  in  reality  seeks  to  have  reviewed 
the  favorable  decision  of  the  primary  exam- 
iner upon  the  patentability  of  the  claims  and 
upon  his  opponent's  right  to  make  them.  Held, 
that  the  appeal  will  be  dismissed.  (Wilkin- 
son V.  Junggren,  ante,  374,  112  O.  G.  252.) 
Forsyth  v.  Emery,  C.  D.  1904,  113  O.  G.  2215. 

650.  Where  both  parties  move  to  dissolve 
the  interference  upon  all  grounds  permitted  by 
the  rules  and  the  motions  are  granted.  Held, 
that  an  appeal  will  not  be  entertained,  since 
a  party  cannot  appeal  from  a  decision  in  his 
favor  merely  because  he  disagrees  as  to  the 
reasons.  Scott  v.  Badeau,  C.  D.  1905,  116  O. 
G.  2007. 

651.  Where  the  examiner  dissolves  the  in- 
terference because  the  issue  is  not  patentable, 


INTERFERENCE,  XVII,  (d),  1. 


219 


Held,  that  an  appeal  relating  to  interference 
in  fact  involves  a  moot  question  and  will  not 
be  determined.  Newell  v.  Hubbard,  C.  D. 
1905,  11-)  O.  G.  1847. 

652.  Where  on  an  appeal  to  the  commis- 
sioner on  the  question  of  interference  in  fact 
it  appears  from  the  decision  of  the  primary 
examiner  and  the  brief  of  the  appellant  that 
the  real  question  is  one  relating  to  the  right 
to  make  the  claims,  the  appeal  will  be  dis- 
missed. Schofield  V.  McGovern  v.  Woods, 
C.  D.  190.'.,  119  O.  G.  1924. 

653.  Where  a  motion  is  brought  before  the 
examiner  to  dissolve  an  interference  on  the 
ground  that  there  is  no  interference  in  fact 
and  that  the  issue  is  not  patentable  and  the 
examiner  grants  the  motion  on  both  grounds. 
Held,  that  as  no  appeal  was  taken  to  the  ex- 
aminers-in-chief on  the  question  of  patenta- 
bility within  the  limit  of  appeal  the  interfer- 
ence stands  dissolved  and  the  question  of  in- 
terference in  fact  becomes  moot.  Appeal  dis- 
missed. Coleman  v.  Struble,  C.  D.  1905,  114 
O.  G.  973. 

654.  Where  the  primary  examiner  held  that 
the  interference  should  be  dissolved  on  the 
ground  of  non-interference  in  fact  because  a 
party  did  not  disclose  the  invention  and  the 
party  appealed  to  the  examiners-in-chief.  Held, 
that  the  examiners-in-chief  acted  correctly  in 
dismissing  the  appeal  so  far  as  it  related  to 
interference  in  fact  in  pointing  out  that  the 
real  ground  of  the  examiner's  decision  was 
one  appealable  to  them,  and  in  accepting  and 
considering  the  appeal  as  one  taken  on  this 
ground.  Harrison  v.  Shoemaker,  C.  D.  1905, 
117  O.  G.  1164. 

655.  Where  motion  for  dissolution  on 
ground  of  irregularity  in  declaration  alleges 
that  the  claim  is  vague  and  indefinite,  but 
the  question  involved  is  whether  the  claim 
involves  a  complete  combination  of  elements 
and  is  distinguished  from  what  is  shown  in 
the  prior  art.  Held,  that  the  examiner's  deci- 
sion finding  the  claim  patentable  is  not  ap- 
pealable. Wickers  and  Furlong  v.  Weein- 
wurm,  C.  D.  1905,  117  O.  G  1797. 

656.  Where  the  contention  was  made  on 
motion  for  dissolution  that  an  application  in- 
volved in  the  interference  had  become  aban- 
doned under  law  in  force  when  filed  by  for- 
eign patent  granted  to  same  inventor  on  ap- 
plication filed  more  than  seven  months  prior 
to  the  application  and  the  primary  examiner 
found  that  act  of  March  3,  1903,  extending  the 


period  of  seven  months  to  twelve  months,  was 
retroactive  and  that  no  rights  were  secured 
by  other  parties  upon  applications  filed  before 
the  passage  of  said  act  which  could  not  be 
affected  by  retroactive  interpretation  thereof. 
Held,  that  this  contention  involves  more  than 
a  mere  question  of  the  regularity  with  which 
the  interference  was  declared  and  attacks  the 
right  of  the  opposing  party  to  a  patent  and 
that  no  appeal  can  be  taken  from  the  exam- 
iner's favorable  decision  thereon.  Gueniffet, 
Benoit,  and  Nicault  v.  Wictorsohn,  C.  D. 
1905,  117  O.  G.  1492. 

657.  Where  the  examiner  upon  motion  for 
dissolution  on  the  ground  of  non-interfer- 
ence in  fact  stated  that  the  issue  did  not  read 
upon  the  construction  of  the  moving  party  and 
for  that  reason  granted  the  motion.  Held,  that 
the  appeal  of  the  opposing  party  to  the  exam- 
iners-in-chief from  this  decision  was  properly 
dismissed.  Kaczander  v.  Hodges  and  Hodges, 
C.  D.  1905,  118  O.  G.  836. 

658.  Where  no  irregularity  in  declaring  the 
interference  independent  of  the  contention  of 
non-interference  in  fact  was  presented.  Held. 
that  the  appeal  as  to  the  ground  of  irregular- 
ity in  declaration  would  be  dismissed.  Wal- 
ker V.  BrunhofT,  C.  D.  1905,  118  O.  G.  2537. 

659.  When  the  question  of  interference  in 
fact  as  raised  presented  for  consideration 
nothing  other  than  the  question  of  the  right 
of  a  party  to  claim  the  issue.  Held,  that  ap- 
peal upon  the  ground  of  non-interference  in 
fact  should  be  dismissed.  Blackmore  v.  Hall, 
C.  D.  1905,  118  O.  G.  2538. 

660.  Where  no  irregularity  was  urged  be- 
fore primary  examiner  except  that  opponent's 
case  contained  new  matter  and  appeal  was 
taken  from  examiner's  decision  finding  no  ir- 
regularity, but  one  of  right  to  make  the  claim, 
on  which  no  appeal  lies  from  affirmative  deci- 
sion, and  that  there  was  no  justification  for 
the  appeal.  Brooker  v.  Smith,  C.  D.  1905, 
119  O.  G.  652. 

661.  Where  a  party  made  no  motion  for 
dissolution,  he  cannot  appeal  from  the  refusal 
of  a  motion  made  by  another  party.  Town- 
send  V.  Copeland  v.  Robinson,  C.  D.  1905,  119 
O.  G.  2523. 

662.  Where  a  motion  to  dissolve  the  inter- 
ference on  the  ground  that  the  counts  of  the 
issue  mean  essentially  different  things  when 
read  in  the  two  applications  in  interference  is 
denied  by  the  primary  examiner  and  appeal  is 
taken  to  the  commissioner,  and  it  is  contended 


220 


INTERFERENCE,  XVII,   (d),  2. 


that  Rule  124  as  amended  June  12,  1906,  does 
not  apply,  since  the  examiner's  decision  was 
rendered  upon  June  4,  19(16,  Held,  that  as  the 
appeal  was  not  lilcd  until  June  22,  1906,  and 
is  clearly  barred  by  the  amended-  rule,  the 
appeal  must  be  dismissed.  Wheeler  v.  See- 
berger,  C.  D.  1900,  125  O.  G.  2363. 

663.  Where  action  is  taken  by  the  office 
upon  motion  to  dissolve  an  interference  from 
which  an  appeal  may  be  taken  in  the  inter- 
ference, and  the  opportunity  for  such  appeal 
is  neglected,  an  ex  forte  appeal  thereafter 
upon  the  same  matter  will  not  be  entertained. 
Newcomb  v.  Thomson,  1906,  122  O.  G.  3012. 

664.  When  a  party  may  not  appeal  from  the 
decision  on  the  motion,  he  may  not  appeal 
from  a  determination  upon  the  admissibility 
of  affidavits.  The  determination  in  such 
cases  will  only  be  reviewed  upon  a  petition 
making  out  an  apparent  case  of  abuse  of 
discretion.  Brown  v.  Stroud,  C.  D.  1906,  122 
O.  G.  2688. 

665.  Where  on  a  motion  to  dissolve  an  in- 
terference and  the  argument  in  support  there- 
of it  is  contended  that  the  counts  of  the  issue 
have  diflferent  meanings  in  the  applications 
of  the  respective  parties,  but  the  question  real- 
ly raised  relates  to  the  right  of  one  of  the 
parties  to  make  the  claims  in  issue.  Held,  that 
an  appeal  will  not  be  entertained  from  the  pri- 
mary examiner's  refusal  to  dissolve,  as  his 
decision  was  in  effect  an  affirmative  ruling 
upon  a  party's  right  to  make  claims.  Wein- 
traub  v.  Hewitt,  C.  D.  1906,  124  O.  G.  2534. 

666.  When  a  party  may  not  appeal  from  a 
decision  on  a  motion  to  dissolve,  he  may  not 
appeal  from  a  determination  upon  the  admis- 
sibility of  affidavits  tiled  with  that  motion. 
Brown  v.  Inwood  and  Lavenberg,  C.  D.  1907, 
131  O.  G.  1423. 

667.  The  court  of  appeals  of  the  District 
of  Columbia  has  no  jurisdiction  to  entertain 
an  appeal  from  a  decision  of  the  commissioner 
of  patents  on  a  motion  to  dissolve  an  inter- 
ference between  an  applicant  for  reissue  and 
an  original  application  holding  that  applicant 
had  no  right  to  a  reissue  on  the  ground  that 
his  showing  of  inadvertence,  accident,  or  mis- 
take was  insufficient  and  that  he  had  failed  to 
excuse  the  long  delay  of  more  than  two 
years  in  filing  the  reissue  application,  as  such 
judgment  does  not  constitute  an  adjudica- 
tion of  the  question  of  priority  between  the 
parties.  *In  re  Fullagar,  C.  D.  1910,  138  O. 
G.  259. 


668.  A  motion  by  E.  that  he  be  made  a  party 
to  an  ai)peal  to  the  court  of  appeals  of  the 
District  of  Columbia  taken  by  K.  from  a  deci- 
sion of  the  commissioner  of  patents  on  a  mo- 
tion to  dissolve,  holding  that  F.  had  no  right 
to  make  the  claims  of  the  issue  because  of  his 
delay  in  hling  his  reissue  application  involved 
in  this  interference  denied  on  the  ground  that 
the  commissioner's  decision  did  not  result  in 
an  award  of  priority  to  E.,  and  therefore  F. 
could  not  bring  him  before  the  court  by  an 
appeal.  For  the  same  person  E.'s  motions  to 
have  the  docket  entry  changed  and  to  dismiss 
F.'s  appeal  denied.    *Id. 

669.  Where  transmission  of  a  motion  to  dis- 
solve is  refused  and  an  amended  motion  is 
tiled,  appeal  from  the  decision  refusing  to 
transmit  the  original  motion  is  al)andoned. 
Lotterhand  v.  Cornwall,  C.  D.  1909,  148  O.  G. 
1344. 

670.  No  appeal  lies  from  a  decision  of  the 
primary  examiner  denying  a  motion  to  dis- 
solve an  interference  on  the  ground  that  the 
issue  is  unpatentalilc  and  that  the  counts  there- 
of have  different  meanings  in  the  cases  of 
different  parties.  Swift  v.  Crawford  v.  Balt- 
zer,  171  O.  G.  214. 

2.  Supervisory  Authority  of  Commissioner. 

671.  Upon  petition  by  M.  that  the  commis- 
sioner exercise  his  supervisory  power  and  re- 
view the  favorable  decision  of  the  examiner 
on  the  question  of  his  opponents'  right  to 
make  the  claim,  Held,  that  under  Rule  124 
there  is  no  appeal  from  the  decision  of  the 
examiner,  and  under  the  well-settled  practice 
of  the  office  such  decision  will  not  be  review- 
ed, either  upon  appeal  or  upon  petition  to  the 
commissioner,  except  in  an  unusual  case  where 
it  is  clear  that  the  examiner  has  erred.  An 
inspection  of  this  case  shows  that  it  does  not 
present  such  '  unusual  circumstances  and  ob- 
vious errors  by  the  examiner  as  would  war- 
rant the  exercise  of  the  supervisory  power  to 
overrule  his  action.  Mechlin  v.  Horn,  Col- 
clazer,  and  Mungen,  C.  D.  1900,  92  O.  G.  2507. 

672.  Where  a  petition  is  taken  to  the  com- 
missioner from  the  decision  of  the  examiner 
refusing  to  dissolve  an  interference  on 
grounds  some  of  which  are  appealable  in  the 
first  instance  to  the  examiners-in-chief  and 
from  others  no  appeal  lies,  Held,  that  a  peti- 
tion will  not  be  entertained  by  the  commis- 
sioner when  it  seeks  to  obtain  indirectly  a 
review  of  an  examiner's  decision  from  which 


INTERFERENCE,  XVII,  (d),  3. 


221 


no  direct  appeal  lies  by  merely  misnaming  the 
action  and  calling  it  a  petition.  (Woodward 
V.  Neuton,  C.  D.  1899,  13,  86  O.  G.  490.)  Goss 
V.  Scott,  C.  D.  1901,  96  O.  G.  842. 

673.  The  discretionary  power  of  the  com- 
missioner should  be  exercised  only  in  excep- 
tional cases,  and  then  only  to  correct  some 
palpable  error  in  the  decision  of  the  examiner 
which  is  clear  and  evident  on  its  face.  There 
should  be  no  mooted  question  as  to  the  patent- 
ability or  non-patentability  of  a  claim.  (Ben- 
der V.  Hoffmann,  C.  D.  1898,  262,  83  O.  G. 
1737.)     Id. 

674.  Where  an  appeal  is  taken  direct  to  the 
commissioner  from  the  decision  of  the  exam- 
iner refusing  to  dissolve  the  interference  on 
grounds  relating  to  the  merits,  Held,  that  de- 
cisions on  these  motions  when  appealable  go 
to  the  examiners-in-chief  in  the  first  instance, 
and  an  appeal  direct  to  the  commissioner 
should  be  dismissed.  (Rule  124.)  Goss  v. 
Scott,  C.  D.  1901,  96  O.  G.  1707. 

675.  Held,  that  since  the  question  of  the 
right  of  a  party  to  make  the  claims  in  issue 
may  be  contested  at  the  final  hearing  on 
priority  there  is  no  occasion  for  the  exer- 
cise of  the  commissioner's  supervisory  power 
to  review  the  ruling  of  the  primary  examiner 
affirming  a  party's  right  to  make  such  claims. 
Locke  v.  Crebbin,  C.  D.  lOnfi,  124  O.  G.  317. 

676.  No  appeal  lies  from  a  favorable  deci- 
sion on  the  right  to  make  the  claims  or  the 
identity  of  meaning  of  the  counts  in  the  cases 
of  different  parties,  and  such  a  decision  will 
be  reviewed  on  petition  in  the  exercise  of  the 
commissioner's  supervisory  authority  only  to 
correct  some  palpable  error  in  the  decision 
which  is  clear  and  evident  on  its  face.  Lip- 
schutz  v.  Floyd,  C.  D.  1907,  1.10  O.  G.  2718. 

677.  Where  the  question  presented  upon  a 
motion  for  dissolution  can  be  raised,  under 
Rule  130,  at  final  hearing  before  the  exam- 
iner of  interferences  and  upon  appeals  from 
such  decision,  there  is  no  occasion  for  the 
exercise  of  the  supervisory  authority  of  the 
commissioner.  Adkins  and  Lewis  v.  Sce- 
berger,  C.  D.  1907.  127  O.  G.  V-,7%. 

678.  Where  at  the  hearing  upon  a  motion 
for  dissolution  attention  is  directed  to  a  pat- 
ent which  is  in  a  remote  art  and  it  appears 
that  the  examiner  has  held  the  claims  in  issue 
patentable  thereover,  no  such  unusual  circum- 
stances as  will  justify  the  exercise  of  super- 
visory authority  exist.  Daggett  v.  Kaufmann. 
C.  D.  1907,  127  O.  G.  3641. 


679.  The  supervisory  authority  of  the  com- 
missioner will  not  be  exercised  to  determine 
whether  one  of  the  parties  to  the  interference 
has  a  right  to  make  the  claims  in  issue  where 
it  appears  that  a  motion  to  dissolve  on  that 
ground  has  been  transmitted  to  the  primary 
examiner  and  is  awaiting  action  on  his  part. 
Thiem  v.  Bowen,  C.  D.   1909,  143  O.  G.  1345. 

680.  Rule  124  provides  that  no  appeal  will 
be  allowed  from  a  decision  on  a  motion  to 
dissolve  affirming  an  applicant's  right  to  make 
the  claims.  In  view  of  the  fact  that  this  ques- 
tion can  be  raised  at  final  hearing  under 
the  provisions  of  Rule  130,  the  practice  of  at- 
tempting to  have  it  passed  upon  by  petition 
for  the  exercise  of  supervisory  authority  is 
to  be  condemned.  Frost  v.  Chase,  C.  D.  1010, 
151  O.  G.  741. 

681.  The  supervisory  authority  of  the  com- 
missioner will  not  be  exercised  to  review  a 
decision  of  the  primary  examiner  denying  a 
motion  to  dissolve,  based  on  the  ground  that 
certain  amendments  to  the  application  of  the 
opposing  party  involved  new  matter,  since 
this  involves  the  right  to  make  the  claims,  and 
the  moving  party  has  an  adequate  remedy 
under  the  provisions  of  Rule  130.  Samuelson 
V.  Flanders,  C.  D.  1911,  171  O.  G.  745. 

3.  Favorable  Decision  on  Merits. 

682.  No  party  can  appeal  from  a  decision 
favorable  to  himself,  and  the  decision  is  no 
less  favorable  because  rendered  on  a  motion 
of  his  opponent  similar  to  his  own  motion. 
Since  acquiescence  in  a  favorable  decision  can- 
not be  considered  acquiescence  in  the  reasons 
given  for  it,  no  hardship  results  from  a  re- 
fusal to  entertain  an  appeal.  Doolittlc  v. 
Hcrdman,  C.   D.   1898,  84   O.  G.   1728. 

683.  The  rule  prohibiting  an  appeal  from  a 
favorable  decision  on  patentability  applies, 
whatever  reason  is  given  for  that  decision, 
since  it  is  well  settled  that  the  appeal  must 
be  from  the  decision  and  not  from  the  rea- 
sons advanced  in  support  of  it.  (Breul  v. 
Smith,  C.  D.  1898,  124,  84  O.  G.  809.)  Wood- 
ward V.  Newton,  C.  D.  1899,  86  O.  G.  490. 

684.  There  being  no  direct  appeal  from  the 
examiner's  decision  affirming  patentability,  a 
contestant  will  not  be  permitted  to  obtain  in- 
directly a  review  thereof  upon  appeal  by 
merely  misnaming  the  action  and  calling  it 
a  petition.  (Manny  v.  Easley  v.  Greenwood, 
C.  D.  1889,  179,  48  O.  G.  .'J38,  cited).     Id. 


INTERFERENCE,  XVII,  (d),  3. 


685.  A  request  that  the  commissioner  ex- 
ercise his  supervisory  power  and  review  the 
favorable  decision  of  the  cxamincrs-in-chicf 
on  the  merits  denied,  since  the  present  case 
docs  not  present  any  such  state  of  facts  as 
would  warrant  a  violation  of  the  ordinary 
course  of  procedure.  Sharer  v.  McHcnry,  C. 
D.  moo,  91  O.  G.  1034. 

686.  Where  an  appeal  is  taken  to  the  com- 
missioner from  the  decision  of  the  examiner 
refusing  to  dissolve  the  interference  on  the 
ground  that  one  of  the  parties  has  no  right 
to  make  a  claim.  Held,  that  no  appeal  from 
such  a  decision  can  be  taken  and  should  be 
dismissed.  (Rule  1~4.)  Goss  v.  Scott,  C.  D. 
1901,  96  O.  G.  842. 

687.  Where  an  appeal  is  taken  to  the  com- 
missioner from  the  decision  of  the  examiner 
refusing  to  dissolve  the  interference  on  the 
ground  that  one  of  the  parties  has  the  right 
to  make  a  claim,  Held,  that  no  appeal  from 
such  a  decision  can  be  taken  and  should  be 
dismissed.      (Rule    124.)      Meyer    v.    Sarfert, 

C.  D.  1901,  96  O.  G.  1037. 

688.  The  proper  practice  on  an  interlocutory 
appeal  is  for  the  commissioner  to  refuse  to 
entertain  said  appeal  from  a  favorable  deci- 
sion on  the  merits,  and  said  appeal  should  be 
dismissed.  Cammctt  v.  Hallctt,  C.  D.  1901, 
96  O.  G.  1237. 

689.  Where  the  cxaminers-in-cliicf  on  mo- 
tion dismissed  an  appeal  taken  to  them  from 
a  favorable  inter  [>artcs  decision  of  the  pri- 
mary examiner  on  patentability,  their  action 
was  right,  as  such  appeal  was  obviously  taken 
in  contravention  to  the  provisions  of  Rule 
124.  White  V.  Thomson,  C.  D.  1902,  101  O. 
G.  282.-). 

690.  The  ruling  of  the  primary  examiner 
that  an  affidavit  under  Rule  75  is  sufficient  to 
overcome  a  reference  cited  is  a  favorable  de- 
cision from  which  no  appeal  lies  and  it  can- 
not be  brought  before  the  commissioner  in 
an  interference  by  alleging  it  as  irregularity 
in  the  declaration.     McCheslcy  v.   Krugcr,  C. 

D.  1902,  101  O.  G.  217. 

691.  Where  a  party  appeals  to  the  examin- 
ers-in-chief from  a  favorable  decision  upon 
the  merits  and  his  appeal  is  dismissed  and  he 
thereafter  asks  that  the  limit  of  appeal  be  ex- 
tended, so  that  he  can  bring  the  case  before 
the  commissioner  upon  the  allegation  that  the 
matter  relates  to  irregularity  in  the  declara- 
tion, Held,  that  the  request  will  be  denied. 
Richards  v.  Kletzker  and  Goesel,  C.  D.  1902, 
98  O.  G.  1709. 


692.  The  holding  by  the  examiner  that  an 
affidavit  filed  by  one  party  under  Rule  7.5  is 
sufficient  to  overcome  a  foreign  patent  cited 
as  a  reference  is  not  subject  to  review  on 
appeal,  since  it  is  a  favorable  decision  on  the 
merits.  Bryon  v.  Maxwell,  C.  D.  1903,  105 
O.  G.  499. 

693.  Where  after  decision  by  the  examiners- 
in-chief  holding  the  issues  patentable  B.  con- 
tends that  they  arc  not,  in  fact,  patentable  un- 
less amended,  Held,  that  the  affirmative  deci- 
sion of  the  e.\aminers-in-chief  upon  the  pat- 
entability of  the  issues  is  fmal  and  will  not 
be  reviewed  on  appeal.     Brown  v.  Lindmark, 

C.  D.  1904,  109  O.  G.  1071. 

694.  The  contention  on  a  motion  to  dissolve 
that  the  disclosure  in  a  party's  application  is 
too  incomplete  to  show  a  conception  of  the 
invention  relates  to  the  merits  and  there  is 
no  appeal  from  a  favorable  decision  in  regard 
to  it.     Auerbach   and  Cubing  v.  Wiswell,   C. 

D.  1904,  108  O.  G.  289. 

695.  Where  a  motion  to  dissolve  an  inter- 
ference is  denied  by  the  examiner  on  the 
ground  that  the  issue  is  patcntalile  when  con- 
strued broadly  enough  to  include  both  inter- 
fering structures.  Held,  that  no  appeal  lies 
from  such  decision.  Bechman  v.  Southgate, 
C.  D.  1904,  111  O.  G.  805. 

696.  Held,  that  L.  has  no  right  of  appeal 
from  the  decision  of  the  examiner  affirming 
the  right  of  S.  to  make  a  claim  correspond- 
ing to  the  count  of  the  issue.  Lowry  v.  Spoon, 
C.  D.  1904,  112  O.  G.  732. 

697.  Held,  that  Rule  124,  prohibiting  the 
right  of  appeal  in  an  interference  from  an  ac- 
tion of  the  examiner  affirming  the  patentabil- 
ity of  a  claim,  is  valid  and  not  inconsistent 
with  the  statute,  as  the  decision  is  not  a  final 
adverse  decision  denying  the  right  of  a  party 
to  a  patent.     Id. 

698.  There  is  no  appeal  from  llic  affirmative 
decision  of  the  primary  examiner  upon  the 
right  of  a  party  to  make  the  claim.  Myers 
V.  Brown,  C.  D.  1904,  112  O.  G.  209.3. 

699.  Where  the  primary  examiner  has  held 
on  a  motion  to  dissolve  that  the  party  has  a 
right  to  make  the  claim.  Held,  that  in  ac- 
cordance with  Rule  124  there  is  no  appeal  from 
his  decision.  Gaily  v.  Brand,  C.  D.  1904,  113 
O.  G.  851. 

700.  An  appeal  or  petition  for  review  of  the 
examiner's  decision  on  motion  holding  that 
the  issue  is  patentable  will  not  be  entertained 
and  determined.     Brewer,  Tily,  Rehfuss,  and 


INTERFERENCE,  XVII,  (d),  4. 


223 


Kehfuss    V.    Dement,    C.    D.    1905,    116    O.    G. 
2nH). 

701.  Held,  that  an  appeal  docs  not  lie  to 
the  commissioner  from  a  decision  of  the  ex- 
aniiners-in-chief  reversing  a  decision  of  the 
primary  examiner  rejecting  a  count  of  the 
issue  and  refusing  to  dissolve  an  interference 
as  to  that  count.  Coleman  v.  Bullard  v.  Stru- 
ble,  C.  D.  190,5,  114  O.  G.  973. 

702.  Held,  that  a  favorable  decision  by  the 
primary  examiner  that  a  party  has  the  right 
to  make  the  claim  does  not  warrant  enter- 
taining an  appeal  from  the  other  party  upon 
the  ground  that  such  decision  is  adverse  to 
him,  for  the  present  practice  docs  not  permit 
cither  party  In  appeal  from  a  favorable  deci- 
sion upon  the  right  to  make  the  claim.  Dur- 
yea  and  White  v.  Rice,  C.  D.  1905,  115  O.  G. 
80:!. 

703.  Though  parties  are  permitted  in  these 
proceedings  to  secure  reconsideration  by  the 
primary  examiner  of  his  ex  parte  conclusion 
that  their  opponents,  aside  from  the  conflict- 
ing claims  to  priority,  are  entitled  to  patents, 
and  though  they  are  entitled  to  appear  and 
oppose  upon  such  reconsideration  their  op- 
ponent's right  to  a  patent,  the  interest  of  a 
party  has  never  been  considered  such  that  he 
should  be  permitted  to  appeal  from  the  exam- 
iner's inter  partes  conclusion  affirming  his  op- 
ponent's right  to  patent.  Gueniffet,  Benoit, 
and  Nicault  v.  Wictorsohn,  C.  D.  1905,  117 
O.   G.  1492. 

704.  Held,  that  the  court  of  appeals  in  the 
case  of  Podlesak  and  Podlesak  v.  Mclnnerney 
(ante,  .558,  120  O.  G.  2127)  is  not  believed  to 
have  departed  from  its  position  announced  in 
the  case  of  Allen,  Commissioner  of  Patents 
V.  The  United  States  of  America  ex  rel. 
George  A.  Lowry  and  Planters'  Compress 
Company  (C.  D.  1905,  643,  116  O.  G.  2253), 
wherein  it  sustained  the  office  in  its  refusal 
to  permit  appeals  from  decisions  upon  motions 
for  dissolution  which  affirmed  the  merits  of 
a  party's  claim.  Miel  v.  Young,  C.  D.  1906, 
121  O.  G.  1350. 

705.  Neither  the  rules  of  the  patent  office 
nor  any  section  of  the  Revised  Statutes  pro- 
vide for  nor  permit  appeals  from  a  decision 
rendered  upon  a  motion  for  dissolution  affirm- 
ing the  patentability  of  the  issue.  (Allen  v. 
Lowry,  C.  D.  1905,  643,  116  O.  G.  2253.) 
*Sobey  V.  Holsclaw,  C.  D.  1907,  126  O.  G. 
3041. 

706.  From  the  decision  of  the  examiner 
holding  that   there  is  interference  in   fact  or 


that  the  counts  of  the  issue  have  the  same 
meaning  in  the  cases  of  the  different  parties 
no  appeal  is  permitted  under  the  provisions 
of  Rule  124.  Dukesmith  v.  Corringlon  v. 
Turner,  C.  D.  1907,  126  O.  G.  3422. 

707.  There  is  no  appeal  from  the  decision 
of  the  primary  examiner  affirming  the  oppo- 
nent's right  to  make  the  claims  or  the  iden- 
tity of  meaning  of  the  claims  in  their  respec- 
tive applications.  Daggett  v.  Kaufmann,  127 
O.  G.  3641. 

708.  A  decision  refusing  to  dissolve  an  in- 
terference on  the  ground  of  res  adjudicata 
is  a  favorable  decision  on  the  merits  and  will 
not  be  reviewed  on  appeal.  (Rule  124.) 
Degen  v.  Pfadt,  C.  D.  1908,  133  O.  G.  514. 

709.  Appeal  does  not  lie  to  the  commission- 
er from  a  decision  of  the  examiners-in-chief 
holding,  on  a  motion  to  dissolve,  that  certain 
counts  of  the  issue  are  patentable.  Langslow 
V.  Malocsay,  C.  D.   1010,  155  O.  G.  1043. 

710.  No  appeal  will  be  permitted  from  a 
decision  affirming  an  applicant's  right  to  make 
the  claims.  Samuelson  v.  Flanders,  C.  D. 
1911,  171  O.  G.  745. 

4.  Irregularity  in  Declaration. 

711.  Where  a  party  alleges  irregularity  in 
the  declaration  and  asks  that  the  issue  be  re- 
vised and  the  real  reason  given  is  that  the 
issue  is  too  broad,  Held,  that  the  commission- 
er will  not  review  the  favorable  decision  of 
the  examiner  upon  that  question  of  merits. 
Richards  v.  Kletzker  and  Gossel,  C.  D.  1902, 
98  O.  G.  1709. 

712.  Where  an  appeal  is  taken  from  a  deci- 
sion on  a  motion  for  dissolution  on  the  ground 
of  irregularity  in  the  declaration,  but  the  only 
contention  made  is  that  one  of  the  parties  has 
no  right  to  make  the  claim.  Held,  that  the  ap- 
peal will  be  dismissed.  Atherton  and  Happ  v. 
Cheney.  C.  D.  1904,  111  O.  G.  1040. 

713.  Where  the  examiner  denied  T.'s  mo- 
tion for  dissolution  for  irregularity  in  decla- 
ration and  no  motion  for  dissolution  on  this 
ground  had  been  filed  by  Y.  and  T.,  Held. 
that  Y.  and  T.  have  no  basis  for  appeal  and 
the  appeal  taken  dismissed.  Thullen  v.  Young 
and  Townsend,  C.  D.  1905,  113  O.  G.  2251. 

714.  Where  appeal  is  based  upon  the  ground 
of  irregularity  in  declaration  and  it  appears 
that  no  argument  was  made  before  the  pri- 
mary examiner  upon  this  ground  and  that  the 
primary  examiner  found  nothing  to  consider 
in    connection    with    this   ground.    Held,    that 


224 


INTERFERENCE,  XVII,  (e),  (f),  1. 


there  is  no  basis  for  an  appeal  from  the  re- 
fusal to  dissolve  as  to  this  ground.  Town- 
send  V.  Copcland  v.  Robinson,  C.  D.  1905,  119 
O.  G.  2523. 

(e)  Time  Allowable  ior  Filini.  Motions. 

715.  Under  Rule  114  motion  for  dissolution 
must  not  only  be  tiled,  but  must  also  be  no- 
ticed for  hearing  within  the  limit  of  appeal  in 
order  to  operate  as  a  stay  to  the  running  of 
the  time  limited.  (Meyrose  v.  Jahn,  C.  D. 
1891,  145,  56  O.  G.  H47,  cited.)  Trevctte  v. 
Dexter,  C.  D.  1898,  84  O.  G.  1283. 

716.  After  judgment  has  been  rendered  on 
the  record  under  Rule  114  a  motion  for  dis- 
solution may  be  made  at  any  time  within  the 
limit  of  appeal  from  such  judgment.  This  in- 
cludes not  merely  the  limit  of  appeal  first  set, 
but  any  extension  thereof  granted  with  the 
approval  of  the  office.  (Law  v.  Woolf,  C.  D. 
1891,  91,  55   O.   G.   1527.)      Morss  v.   Henkje, 

C.  D.  1899,  86  O.  G.  183. 

717.  Where  a  party  orders  from  the  office 
copies  of  his  opponent's  application,  but 
through  delays  in  the  office  they  are  not  re- 
ceived until  after  the  limit  of  appeal  has  ex- 
pired. Held,  that  he  is  thereafter  entitled  to 
make  a  motion  for  dissolution,  but  should 
make  it  as  soon  as  possible,  and  is  not  enti- 
tled to  a  period  of  twenty  days.  Niedermeyer 
v.  Walton,  C.  D.  1901.  97  O.  G.  2306. 

718.  Where  a  motion  to  dissolve  is  hied 
after  the  twenty  days  allowed  by  the  rule,  the 
burden  is  not  upon  the  office  or  the  opposing 
party  to  show  that  it  might  have  been  made 
earlier,  but  is  upon  the  moving  party  to  show 
that  it  could  not  have  been  made  earlier. 
Niedringhaus  v.   Marquard   v.   McConnell,   C. 

D.  1902,  101  O.  G.  1010. 

719.  A  motion  to  dissolve  after  testimony 
is  taken  comes  too  late,  since  it  should  be 
made  within  the  time  ti-xed  by  Rule  122.  Ditt- 
gen  V.  Parmenter,  C.  D.  1903,  103  O.  G.  1164. 

720.  Held,  that  motions  to  extend  the  time 
for  filing  motions  under  Rule  122  should  not 
be  granted,  for  the  reason  that  the  granting 
of  such  motions  would  have  no  other  effect 
than  to  cause  unnecessary  delay  in  the  pro- 
ceedings in  those  cases  where  the  motions  con- 
templated were  not  made.  Egly  v.  Schulze,  C. 
D.  1905,  117  O.  G.  276. 

721.  The  redeclaration  of  an  interference 
for  the  purpose  of  adding  another  party  there- 
to docs  not  give  the  right  to  one  of  the  orig- 
inal   parties    to    bring    a    motion    to    dissolve 


within  thirty  days  after  such  redeclaration, 
raising  questions  which  might  have  been  raised 
in  the  interference  as  originally  declared.  The 
time  for  bringing  such  motions  expired  at 
the  end  of  the  thirty-day  period  following 
the  original  declaration.  Townsend  v.  Ehrct 
V.  Young  V.  Strublc,  C.  D.  1908,  137  O.  G. 
1484. 

722.  A  party  may  under  Rule  122  wait  till 
the  thirtieth  day  after  the  approval  of  the 
preliminary  statements  to  bring  a  motion  to 
dissolve:  but  if  he  brings  it  before  the  thir- 
tieth day  he  waives  his  right  to  the  remainder 
of  the  period.  Rockstroh  v.  Warnock,  C.  D. 
1908,  132  O.  G.  234. 

(f)  Transmitt.xl  or  Motion  to  Primary  Ex- 

A. MINER. 

1.  In  General. 

723.  In  considering  the  transmission  of  a 
motion  the  examiner  of  interferences  deter- 
mines merely  whether  or  not  it  is  within  the 
rules  in  so  far  as  form  and  time  are  concerned 
and  does  not  pass  upon  the  sufficiency  of  the 
reasons  urged  in  support  of  the  motion.  Shep- 
pard  V.  Webb,  C.  D.  1901,  94  O.  G.  1577. 

724.  Where  a  motion  is  brought  before  the 
examiner  of  interferences  to  transmit  an  in- 
terference to  the  primary  examiner  to  dissolve 
the  same.  Held,  that  the  examiner  of  inter- 
ferences has  jurisdiction  to  consider  the  mo- 
tion to  the  extent  of  determining  whether  in 
his  opinion  the  motion  alleged  a  sufficient 
ground  for  the  dissolution  of  the  interference. 
Jarvis  v.  Quincy  v.  Jarvis  and  Blakeslee  v. 
Barron  v.  Briggs  and  Shepard,  C.  D.  1904, 
113  O.  G.  550. 

725.  A  decision  of  the  examiner  of  inter- 
ferences refusing  to  transmit  to  the  primary 
examiner  a  motion  to  dissolve  will  not  be  dis- 
turbed unless  it  is  shown  that  in  making  such 
decision  there  was  an  abuse  of  discretion  or 
that  the  decision  is  clearly  erroneous.  Dunn 
V.   Halliday,  C.  D.   1905,  119  O.  G.  2236. 

726.  Where  the  opposing  party  is  not  given 
sufficient  notice  of  the  hearing  on  the  motion 
to  transmit  a  motion  to  dissolve,  the  motion 
should  not  be  refused  transmission  on  that 
ground,  but  the  hearing  should  be  continued. 
Phillips  V.  Scott,  C.  D.  1907,  130  O.  G.  1312. 

727.  The  question  of  transmitting  motions 
to  dissolve  should  be  left  largely  to  the  discre- 
tion of  the  examiner  of  interferences,  and 
where  he  grants  a  motion  to  transmit  his  deci- 


INTERFERENCE.  XVII,  (f),  2. 


2SS 


sion  will  not  be  disturbed  unless  it  be  clearly 
shown  that  such  discretion  has  been  abused. 
Pickard  v.  Ashton  and  Curtis.  C.  D.  1908,  137 
O.  G.  977. 

728.  An  appeal  from  a  decision  of  the  ex- 
aminer of  interferences  refusing  to  transmit 
a  motion  to  dissolve  will  not  be  dismissed  for 
failure  to  include  a  specific  assignment  of 
error  where  the  question  it  is  desired  to  have 
reviewed  is  clear.  Gilkeson  v.  Valentine,  C. 
D.  1910,  i:)4  O.  G.  835. 

729.  Where  the  examiner  of  interferences 
refuses  to  transmit  a  motion  to  dissolve  and 
a  renewed  motion  is  filed,  it  was  proper  for 
the  examiner  of  interferences  to  set  a  limit  of 
appeal  from  his  decision  refusing  to  transmit 
the  second  motion.     Id. 

730.  The  fact  that  an  appeal  from  a  decision 
of  the  examiner  of  interferences  refusing  to 
transmit  a  motion  to  dissolve  contains  a  ref- 
erence to  a  patent  alleged  to  anticipate  the 
issue  constitutes  no  ground  for  expunging  the 
appeal  from  the  record.    Id. 

731.  The  transmission  of  motions  to  dis- 
solve is  left  largely  to  the  discretion  of  the 
examiner  of  interferences,  and  his  decision 
granting  a  motion  to  transmit  will  be  dis- 
turbed only  upon  a  clear  showing  of  abuse 
of  discretion.  Blood  v.  Ross,  C.  D.  1910,  161 
O.   G.   267. 

2.  Transmitted. 

732.  Where  a  motion  for  dissolution  is  in 
proper  form,  alleges  proper  grounds,  and  is 
filed  within  the  twenty  days  allowed  by  the 
rule,  Held,  that  the  examiner  of  interferences 
cannot  properly  refuse  to  transmit  it.  It  is 
for  the  primary  examiner  to  determine  the 
propriety  and  sufficiency  of  the  reasons  ad- 
vanced in  support  of  the  allegations  in  the  mo- 
tion. Cammett  v.  Hallett,  C.  D.  1900,  93  O. 
G.  939. 

733.  Where  a  motion  to  dissolve  alleges 
public  use  and  also  anticipation  by  certain 
references.  Held,  that  the  motion  should  be 
transmitted  to  the  primary  examiner  to  deter- 
mine the  question  of  anticipation.  Davis  v. 
Swift,  C.  D.   1901,  95  O.  G.  2409. 

734.  Where  the  effect  of  a  favorable  deci- 
sion on  a  motion  to  dissolve  would  be  to  grant 
a  patent  to  the  moving  party.  Held,  that  such 
motion  should  be  transmitted.  Hull  v.  Hall- 
berg,  C.   D.  1904,  110  O.  G.  1428. 

735.  Where  motion  for  dissolution  is 
brought  by  H.  and  V.  appeals  from  the  trans- 

15 


mission  thereof  because  H.'s  preliminary 
statement  did  not  overcome  the  filing  date  of 
the  senior  party  and  H.  was  under  order  to 
show  cause  why  judgment  should  not  be  ren- 
dered against  him.  Held,  that  if  H.'s  motion 
was  well  founded  it  is  a  complete  answer  to 
the  order  to  show  cause  and  that  since  it 
was  filed  in  the  time  permitted  by  the  rule 
and  was  found  to  be  in  proper  form  it  was 
properly  transmitted  to  the  primary  examiner 
as  a  matter  of  course.  Van  .^uken  v.  Os- 
borne V.  Harrison  v.  Canfield  and  Van  Auken, 

C.  D.  190.1,  119  O.  G.  1584. 

736.  Where  claims  have  been  suggested  to 
an  applicant  and  he  made  the  same  under  pro- 
test, with  a  statement  that  he  does  not  believe 
he  has  a  right  to  make  them,  and  where  after 
inspecting  the  other  party's  application  he  still 
contends  that  he  has  no  right  to  make  these 
claims.  Held,  that  he  should  be  permitted  to 
argue  the  question  before  the  primary  exam- 
iner, and  the  motion  to  dissolve  should  there- 
fore  be  transmitted.      (Miller  v.   Perham,  C. 

D.  1906,  157,  121  O.  G.  2667,  modified.)  Eichel- 
berger  and  Hilner  v.  Dillon,  C.  D.  1907,  129 
O.  G.  3161. 

737.  Although  the  date  of  a  reference  relied 
upon  in  a  motion  to  dissolve  alleging  antici- 
pation of  the  issue  is  later  than  the  date  of 
conception  set  up  in  the  preliminary  statement 
of  the  opposing  party,  the  motion  may  never- 
theless be  transmitted  in  order  that  the  pri- 
mary examiner  may  consider  the  pertinency  of 
the  reference  and  permit  the  filing  of  an  affi- 
davit alleging  the  facts  required  by  Rule  75 
outside  of  those  contained  in  such  preliminary 
statement.  Martin  v.  Goodrum  et  al..  C.  D. 
1907,  130  O.  G.  1480. 

738.  A  motion  to  dissolve  an  interference 
involving  a  reissue  application,  alleging  that 
the  oath  accompanying  the  application  was  in- 
sufficient to  warrant  the  grant  of  a  reissue 
patent,  should  be  transmitted  to  the  primary 
examiner.  Emmet  v.  Fullagar,  C.  D.  1907,  130 
O.  G.  2719. 

739.  Where  in  a  motion  for  dissolution  the 
right  of  the  adverse  party  to  make  the  claims 
in  issue  is  denied  and  it  is  also  alleged  that 
the  claims  when  read  upon  the  structures  dis- 
closed by  the  respective  parties  have  different 
meanings,  reasons  relied  upon  in  support  of 
such  contentions  being  clearly  pointed  out. 
Held,  that  the  motion  to  dissolve  should  be 
transmitted  as  to  both  grounds.  (Cushman  v. 
Edwards,  ante.  129,  128  O.  G.  456,  modified.') 


226 


INTERFERENCE.  XVII,    (f),  3. 


Eilerman   ct  al.   v.   McElroy,   C.  D.   1907,  130 
O.  G.  2721. 

740.  The  fact  that  a  statement  of  a  ground 
for  dissolution  of  an  interference  covers  two 
sets  of  counts,  as  to  one  set  of  which  it  is 
proper  to  transmit  the  motion  and  as  to  the 
other  of  which  transmission  is  improper,  is 
not  a  sufficient  reason  for  refusing  transmis- 
sion of  the  motion  as  a  whole.  The  motion 
should  be  transmitted  as  to  the  set  of  counts 
which   would   be  otherwise   transmitted.     Id. 

741.  A  motion  to  dissolve  alleging  the  bar 
of  prior  knowledge  and  use  should  not  be 
transmitted.  (Thomson  and  Unbehend  v. 
Hisley,  C.  D.  1894,  43,  66  O.  G.  1596;  Davis  v. 
Swift,  C.  D.  1901,  134,  96  O.  G.  2409;  Shrum 
V.  Baumgarten,  C.  D.  1903,  150,  104  O.  G.  577; 
Cory  et  al.  v.  Blakey,  C.  D.  1905,  116,  115  O. 
G.  1328.)     Id. 

742.  Where  a  party  acting  in  good  faith 
files  a  motion  which  is  held  to  be  indefinite 
and  an  amended  motion  curing  the  informal- 
ities is  promptly  filed  within  the  limit  of  ap- 
peal set  from  the  previous  decision,  the 
amended  motion  should  be  transmitted.  Rock- 
stroh  V.  Warnock,  C.  D.  1908,  132  O.  G.  234. 

743.  A  party  cannot  be  permitted  to  prose- 
cute a  case  experimentally,  and  where  the 
amended  motion  does  not  cure  the  informal- 
ities pointed  out  in  the  first  decision  a  third 
motion  is  entitled  to  no  consideration.     Id. 

744.  Where  an  applicant  adopted  claims  sug- 
gested under  Rule  96  from  another  applica- 
tion, a  motion  to  dissolve  filed  by  him  alleg- 
ing that  he  has  no  right  to  make  such  claims 
is  proper,  and  the  same  should  be  transmitted 
to  the  primary  examiner.  (Miller  v.  Per- 
ham,  C.  D.  1906,  157,  121  O.  G.  2667,  and  Mar- 
tin v.  Mullin,  C.  D.  1907,  119,  127  O.  G.  3216, 
modified ;  doctrine  of  Eichelberger  and  Hib- 
ner  v.  Dillon,  C.  D.  1907,  230,  129  O.  G.  3161, 
extended.)  Hermsdorf  v.  Driggs  v.  Schnei- 
der, C.  D.  1908,  133  O.  G.  1189. 

745.  It  is  well  settled  that  the  transmission 
of  motions  to  dissolve  is  left  largely  to  the 
discretion  of  the  examiner  of  interferences 
and  that  where  he  grants  a  motion  to  trans- 
mit his  decision  will  be  disturbed  only  upon 
a  showing  of  abuse  of  discretion.  Knight  v. 
Cutler,  C.  n.  1909,  149  O.  G.  1119. 

746.  Within  the  time  set  for  bringing  mo- 
tions K.  filed  a  motion  to  dissolve,  which  was 
denied  on  the  ground  of  indefiniteness.  Four 
days  later  he  filed  an  amended  motion  seek- 
ing to  overcome  the  indefiniteness  of  the  orig- 


inal motion.  On  the  day  of  hearing  he  filed 
an  affidavit  in  support  of  the  motion,  and 
upon  objection  by  C.  the  hearing  was  post- 
poned one  week.  Held,  that  these  facts  do 
not  show  any  abuse  of  discretion  upon  the 
part  of  the  examiner  of  interferences  in  trans- 
mitting the  amended  motion.    Id. 

747.  Where  the  issue  of  an  interference 
consists  of  one  hundred  and  thirty-two  counts, 
Held,  that  this  great  number  of  counts  would 
of  itself  tend  to  preclude  a  proper  determina- 
tion of  priority,  and  that  under  the  provisions 
of  Rule  212  the  interference  will  be  trans- 
mitted to  the  primary  examiner  to  hear  and 
determine  the  question  whether  the  interfer- 
ence should  not  be  dissolved  and  a  reasonable 
number  of  counts  substituted  for  those  form- 
ing the  issue.  Ragona  v.  Harris,  C.  D.  1910, 
150  O.  G.  266. 

3.  Not  Transmitted. 

748.  It  is  the  almost  uniform  practice  of  the 
office  not  to  transmit  motions  to  dissolve  an 
interference  until  after  the  preliminary  state- 
ments are  filed  and  approved.  In  the  excep- 
tional cases  where  such  motions  have  been 
transmitted  prior  to  the  approval  of  the  state- 
ments it  has  been  for  the  reason  that  the  hear- 
ing could  be  had  "under  such  circumstances 
as  would  make  it  just  to  hold  parties  to  the 
result  of  a  contest  as  res  adjudicata."  (Lau- 
rent-Cely  v.  Payen,  C.  D.  1890,  68,  51  O.  G. 
621.)  King  and  Babendreier  v.  Libby,  C.  D. 
1899,  89  O.   G.   2653. 

749.  A  motion  to  dissolve  an  interference 
on  the  ground  that  there  has  been  such  ir- 
regularity in  declaring  the  interference  as 
would  preclude  the  proper  determination  of 
the  question  of  priority  and  that  no  interfer- 
ence in  fact  exists  should  not  be  transmitted 
to  the  primary  examiner  until  the  preliminary 
statements  have  been  approved.     Id. 

750.  The  questions  raised  by  such  a  mo- 
tion cannot  be  so  correctly  determined  with- 
out an  inspection  of  the  opponent's  specifica- 
tion and  drawings  as  it  can  with  it.  It  can- 
not at  the  present  time  be  so  heard  and  de- 
termined that  the  parties  could  be  justly  held 
to  be  bound  by  it  in  subsequent  proceedings. 
Id. 

751.  Moving  to  dissolve  an  interference 
upon  any  of  the  grounds  stated  in  Rule  122 
before  the  preliminary  statements  are  opened 
and  approved  is  a  practice  not  to  be  encour- 
aged.   Id. 


INTERFERENCE,  XVII,  (f).  3. 


227 


752.  Even  though  a  decision  should  be  res 
adjudicata  between  the  parties  upon  one  or 
two  questions  presented  by  a  motion  to  dis- 
solve before  the  preliminary  statements  are 
opened,  the  other  grounds  upon  which  mo- 
tions to  dissolve  might  be  made  as  a  matter 
nf  right  within  twenty  days  after  the  state- 
ments arc  opened  and  approved  could  still  be 
considered,  and  the  condition  of  disposing  of 
motions  to  dissolve  by  piecemeal  would  result, 
thus  entailing  an  unnecessary  burden  upon 
parties  to  an  interference  and  increasing  the 
expense  of  proceedings  and  unnecessarily  pro- 
Innging  them.     Id. 

753.  A  motion  to  dissolve  made  before  the 
preliminary  statements  are  approved  when  as 
yet  the  parties  have  no  right  to  inspect  each 
other's  applications  should  not  be  transmitted 
to  the  primary  examiner  except  under  those 
unusual  circumstances  which  would  render  it 
just  to  hold  all  parties  bound  by  the  decision 
rendered.  Whipple  v.  Sharp,  C.  D.  1901,  96 
O.  G.  2229. 

754.  Where  a  motion  to  dissolve  an  inter- 
ference is  made  upon  the  ground  that  the  ap- 
plication of  one  of  the  parties  was  altered 
after  being  sworn  to  and  should  he  stricken 
from  the  files  under  Rule  31.  Held,  that  the 
motion  should  not  be  transmitted  to  the  pri- 
mary examiner,  since  he  has  no  authority  to 
strike  a  case  from  the  files.  Hopkins  v.  Scott, 
C.  D.  1903,  105  O.  G.  1263. 

755.  The  question  whether  the  junior  party's 
application  should  be  stricken  from  the  files 
because  altered  after  being  sworn  to  is  an 
ex  parte  one  which  cannot  affect  the  question 
of  priority  of  invention.     Id. 

756.  A  motion  to  dissolve  an  interference 
will  be  refused  transmission  to  the  primary 
examiner  where  based  upon  the  allegation  that 
one  of  the  parties  is  not  an  original  inventor, 
but  derived  his  knowledge  of  it  from  the 
other  party.  Cory,  Gebhart,  and  Martin,  Jr. 
v.   Rlakey.  C.  D.   1905,  115   O.  G.   1328. 

757.  Where  a  motion  for  dissolution  of 
an  interference  is  made  upon  the  ground  that 
the  opposing  party  is  estopped  from  making 
the  claim  by  delay  and  it  appears  that  the 
commissioner  has  ruled  upon  that  matter. 
Held,  that  the  motion  should  not  be  trans- 
mitted to  the  primary  examiner.  Egly  v. 
Schulze,  C.  D.  1905,  117  O.  G.  2363. 

758.  While  as  a  general  rule  the  examiner 
of  interferences  in  transmitting  a  motion  to 
dissolve  does  not  pass  upon  the  sufficiency  of 


the  grounds  alleged,  he  may  and  should  do 
so  where  the  consideration  of  the  motion 
would  obviously  result  in  a  mere  waste  of 
time.  Dunker  v.  Reist,  C.  D.  1905,  119  O.  G. 
1925. 

759.  A  motion  to  dissolve  an  interference 
on  the  ground  of  irregularity  which  alleges 
the  irregularity  to  be  the  improper  issue  of 
his  opponent's  patent  during  the  pendency  of 
his  application  should  not  be  transmitted  to 
the  primary  examiner,  as  it  is  a  matter  which 
the  office  cannot  remedy.    Id. 

760.  Held,  that  Rule  126  does  not  provide 
for  the  filing  of  motions  and  that  a  motion 
to  dissolve  purporting  to  be  brought  there- 
under should  not  be  transmitted  or  consid- 
ered. Struble  v.  Young,  C.  D.  1906,  121  O.  G. 
340. 

761.  The  examiner  of  interferences  prop- 
erly refused  to  transmit  to  the  primary  ex- 
aminer motions  which  the  primary  examiner 
has  no  authority  to  decide.  Becker  and  Patitz 
v.  Edwards,  C.  D.  1906,  123  O.  G.  1990. 

762.  Where  nothing  in  the  statement  of 
the  facts  upon  which  a  motion  to  dissolve  on 
the  ground  of  irregularity  in  declaration  was 
based  is  directed  to  anything  other  than  the 
patentability  of  claims,  the  rights  of  the  par- 
ties to  make  claims,  or  the  identity  in  mean- 
ing of  claims  when  read  in  the  respective 
cases.  Held,  that  the  motion  was  properly  re- 
fused transmission  as  to  this  ground.  Kle- 
pctko  v.  Becker,  C.  D.  1906,  120  O.  G.  658. 

763.  Where  no  facts  are  alleged  in  support 
of  a  motion  for  dissolution  on  the  ground  of 
non-patentability  except  such  as  relate  to  the 
right  of  a  party  to  make  claims.  Held,  that  the 
motion  was  properly  refused  transmission  as 
to  the  ground  of  non-patentability.     Id. 

764.  A  motion  to  dissolve  setting  up  ir- 
regularity on  account  of  the  insufficiency  of 
the  oath  to  the  application  of  the  opposing 
party  by  reason  of  the  failure  of  the  officer 
administering  the  same  to  impress  his  seal 
thereon  should  not  he  transmitted  to  the  pri- 
mary examiner  where  it  appears  from  an  af- 
fidavit of  such  officer  that  at  the  time  he  ad- 
ministered the  oath  he  w-as  empowered  to  do 
so  and  that  he  was  not  provided  with  a  seal, 
and  from  a  certificate  of  the  clerk  of  the 
county  in  which  the  oath  was  executed  that 
at  the  time  it  was  executed  such  officer  did, 
in  fact,  have  power  to  administer  it.  Scott  v. 
Hayes  and  Berger,  C.  D.  1906,  121  O.  G. 
2326. 


228 


INTERFERENCE.  XVII,  (f),  3. 


765.  Where  the  motion  for  dissolution  pre- 
sents matters  which  can  be  considered  in  con- 
nection with  or  as  part  of  the  determination  of 
priority  and  which  should  only  be  so  con- 
sidered, Held,  that  it  raises  no  proper  ques- 
tion for  consideration  by  the  primary  exam- 
iner and  transmission  was  properly  refused. 
Strublc  V.  Young,  C.  D.  1906,  121  O.  G.  339. 

766.  A  motion  to  dissolve  on  the  ground 
that  the  opposing  party  has  no  right  to  make 
the  claims  which  raises  the  question  whether 
such  party  is  entitled  to  the  date  of  the  ear- 
lier one  of  two  applications  mentioned  in  the 
notice  of  the  interference  should  not  be  trans- 
mitted to  the  primary  examiner,  as  the  ques- 
tion raised  is  one  to  be  determined  by  the  ex- 
aminer of  interferences  and  not  the  primary 
examiner.  Dickinson  v.  Hildrcth,  C.  D.  1906, 
122  O.  G.  1397. 

•  767.  A  motion  to  dissolve  on  the  ground 
of  non-interference  in  fact,  which  is  founded 
upon  the  alleged  character  of  a  machine  which 
the  moving  party  believes  the  opposing  party 
will  rely  upon  in  producing  his  evidence, 
should  not  be  transmitted,  even  though  the 
opposing  party  admits  the  substantial  truth 
of  the  allegations  respecting  such  machine. 
Barr  v.  Budd.  C.  D.  1906,  122  O.  G.  20fil. 

768.  Where  matter  is  set  forth  in  a  mo- 
lion  for  dissolution  as  a  basis  for  one  ground 
thereof  which  should  only  be  considered  in 
connection  with  another  and  different  ground, 
Held,  that  the  motion  is  not  in  proper  form 
and  should  not  be  transmitted.  Corey  v. 
Eiseman  and  Misar,  C.  D.  1906,  122  O.  G. 
20():5. 

769.  A  motion  for  dissolution  alleging  non- 
interference, in  fact,  in  addition  to  lack  of 
right  of  a  party  to  make  claims,  and  urging 
the  same  facts  or  reasons  in  connection  with 
each  ground  should  not  be  transmitted,  in 
view  of  the  unnecessary  labor  and  delay  at- 
tending such  double  consideration  of  the  same 
matter  both  before  the  primary  examiner  and 
upon  appeals.  Booth,  Booth  and  Flynt  v. 
Hanan  and  Gates  v.  Marshall,  C.  D.  1906,  123 
O.  G.  319. 

770.  Where  a  motion  to  dissolve  on  the 
grounds  of  non-interference  in  fact  and  ir- 
regularity is  refused  transmission,  because 
proper  reasons  for  dissolution  on  these 
grounds  are  not  stated,  and  appellant  urged 
that  he  will  thereby  be  cut  off  from  appeal 
in  case  a  decision  is  rendered  against  him 
on  the  remaining  grounds  of  the  motion,  Held, 


that  this  is  exactly  what  the  practice  is  in- 
tended to  accomplish  and  that  if  a  party  has 
no  reasons  to  allege  in  his  motion  which 
would  support  dissolution  upon  appealable 
grounds  he  should  not  be  permitted  to  waste 
the  time  and  labor  of  his  opponents  and  of 
the  office  with  appeals  which  can  have  no 
other  object  than  to  obtain  a  review  of  non- 
appealable decisions.  Pym  v.  Hadaway,  C.  D. 
1906,  123  O.  G.  1238. 

771.  Where  L.  moves  to  dissolve  on  the 
ground  of  no  interference  in  fact  and  in  sup- 
port of  this  ground  alleges  that  the  claims  in 
issue  arc  not  patcntalilc  unless  given  a  con- 
struction which  precludes  N.  from  making 
them  in  his  application.  Held,  that  the  mat- 
ters alleged  do  not  involve  the  question  of 
non-interference  in  fact  and  that  the  motion 
should  not  be  construed  as  relating  to  the 
question  of  right  to  make  the  claims  and 
should  not  be  transmitted  to  the  primary  ex- 
aminer. Lizotte  V.  Neuberth,  C.  D.  1906,  124 
O.  G.  1842. 

772.  Where  L.,  in  support  of  his  motion  to 
dissolve  on  the  ground  that  N.  has  no  right 
to  make  the  claims,  alleges  as  a  reason  that 
N.'s  original  disclosure  is  insufficient  to  sup- 
port the  claims  and  that  his  specification  and 
claims  were  unduly  enlarged  and  broadened. 
Held,  that  in  the  absence  of  any  indication  as 
to  whether  L.'s  motion  is  directed  to  all  or 
part  of  the  claims  in  issue  and  in  the  absence 
of  any  specific  statement  as  to  which  elements 
of  the  claims  are  not  supported  by  the  orig- 
inal disclosure  the  motion  should  not  be  trans- 
mitted to  the  primary  examiner.    Id. 

773.  .\  motion  for  dissolution  based  upon 
the  ground  that  the  moving  party  has  no 
right  to  make  the  claim  to  the  subject-matter 
in  issue  should  not  be  transmitted  to  the  pri- 
mary examiner.  Martin  v.  MuUin,  C.  D.  1907, 
127  O.  G.  3216. 

774.  Where  on  appeal  from  the  decision 
of  the  primary  examiner  dissolving  an  inter- 
ference the  examiners-in-chief  affirmed  the 
decision  of  the  examiner  as  to  claims  2,  3,  and 
4  and  reversed  it  as  to  claim  1,  and  thereupon 
one  party  filed  an  amendment  to  his  case, 
while  the  other  party  brought  a  motion  to 
dissolve.  Held,  that  the  decision  of  the  exam- 
iner of  interferences  refusing  to  transmit  the 
motion  to  dissolve  to  the  primary  examiner 
is  correct,  since  the  moti'^n  is  based  on  the 
proposed     amendment     and     presupposes     its 


INTERFERENCE,  XVII,  (f),  3. 


829 


entry.      Harnisch    v.    Gueniffet,    Bcnoit,    and 
Nicault,  C.  D.  1907,  128  O.  G.  455. 

775.  Public  use  is  considered  in  the  prac- 
tice of  this  office  as  a  separate  question  re- 
quiring an  investigation  independent  of  the 
question  of  priority  of  invention  involved  in 
an  interference  proceeding.  A  motion  for 
dissolution  based  upon  the  ground  of  public 
use  should  not  therefore  be  transmitted.  Bar- 
ber v.  Wood,  C.   D.  1907,  128  O.  G.  283.-. 

776.  A  motion  by  one  party  to  an  inter- 
ference to  dissolve  the  interference  as  to  cer- 
tain counts  in  case  certain  other  counts  are 
found  to  be  unpatentable  in  view  of  the  same 
references  upon  a  motion  to  dissolve  brought 
by  his  opponent  should  not  be  transmitted. 
Turner  v.  Macloskie,  C.  D.  1907,  128  O.  G. 
2835. 

777.  Where  suggested  claims  were  made 
by  the  joint  applicants  under  protest,  with  a 
statement  that  they  did  not  think  they  had  a 
right  to  make  the  same,  giving  their  reasons 
therefor.  Held,  that  the  declaration  of  inter- 
ference did  not  constitute  informality  within 
the  contemplation  of  the  rules  and  that  the 
transmission  of  a  motion  for  dissolution  based 
upon  this  ground  was  properly  refused. 
Eichelberger  and  Hibner  v.  Dillon,  C.  D.  1907, 
129  O.  G.  3161. 

778.  A  motion  to  dissolve  on  the  ground 
of  irregularity  in  the  declaration  of  the  in- 
terference properly  refused  transmission 
where  the  alleged  irregularity  is  that  the  issue 
of  the  present  interference  is  substantially 
the  same  as  that  of  a  former  interference 
which  the  primary  examiner  dissolved.  Sug- 
den  and  Gidgin  v.  Laganke  and  Smith  v.  Mar- 
shall,  C.   D.  1907,  130  O.   G.   1484. 

779.  A  motion  to  dissolve  on  the  ground  of 
informality  in  declaring  the  interference  was 
properly  refused  transmission  where  it  ap- 
pears that  the  alleged  informality  relates  to 
the  right  of  the  parties  to  make  the  claim. 
Danquard  v.  Courville,  C.  D.  1907,  131  O.  G. 
2421. 

780.  A  motion  to  dissolve  filed  after  the 
redeclaration  of  an  interference  with  addi- 
tional counts  directed  to  the  old  as  well  as 
the  new  counts.  Held,  to  have  been  properly 
refused  transmission  so  far  as  it  related  to 
the  old  counts,  no  showing  being  made  why 
this  part  of  the  motion  was  not  brought  in 
the  proper  time.  Murphy  v.  Borland,  C.  D. 
1908,  132  O.  G.  231. 


781.  The  interference  was  originally  de- 
clared between  A.  and  B.,  and  was  afterward 
redeclared  to  include  the  application  of  C,  the 
assignee  of  A.  Held,  that  a  motion  to  dis- 
solve brought  by  C.  on  the  grounds  that  the 
issue  is  not  patentable  and  that  B.  has  no 
right  to  make  the  claims  will  not  be  trans- 
mitted, since  C.  had  an  opportunity  to  bring 
such  a  motion  as  .'K.'s  assignee.  Townsend  v. 
Thullen  and  Thullen  v.  Young,  C.  D.  1908,  137 
O.  G.  1710. 

782.  A  motion  to  dissolve  based  on  the  de- 
fectiveness of  the  oath  tiled  by  the  opposing 
party  should  not  be  transmitted,  and  it  is 
well  settled  that  the  matter  of  a  proper  oath 
is  an  ex  parte  one  and  furnishes  no  ground 
for  dissolution.  Rowe  v.  Brinkmann,  C.  D. 
1908,  133  O.  G.  51.). 

783.  A  motion  to  dissolve  on  the  ground 
of  non-patentability  based  on  patents  granted 
on  applications  filed  subsequently  to  the  date 
of  invention  alleged  by  one  of  the  parties  to 
the  interference  in  his  preliminary  statement 
should  not  be  transmitted.  Raymond  v.  Kit- 
zelman  v.  Sommer  et  al.  v.  Claudin,  C.  D. 
1908,   134   O.   G.  2243. 

784.  A  motion  to  dissolve  on  the  ground 
of  irregularity  in  declaration  will  not  be  trans- 
mitted where  it  appears  that  the  basis  of  this 
ground  is  that  the  other  party  has  no  right 
to  make  the  claims  corresponding  to  the  issue. 
Skinner  v.  Carpenter,  C.  D.  1908, 135  O.  G.  661. 

785.  A  motion  to  dissolve  an  interference 
on  the  ground  that  one  of  the  parties  thereto 
had  no  right  to  make  the  claims  of  the  issue 
in  an  earlier  application  of  which  the  appli- 
cation in  issue  was  stated  in  the  declaration 
to  be  a  division  raises  a  question  relating  to 
the  burden  of  proof  and  should  not  be  trans- 
mitted. Townsend  v.  Ehret  v.  Young  v.  Stru- 
ble.  C.  D.  1903,  137  O.  G.   1484. 

786.  A  motion  to  dissolve  should  not  be 
transmitted  where  it  appears  that  the  moving 
party  had  had  an  opportunity  to  bring  a  mo- 
tion to  dissolve  on  the  same  ground  in  a 
prior  interference  involving  the  same  counts. 
Townsend  v.  Thullen  v.  Young,  C.  D.  1909, 
138  O.  G.  768. 

787.  A  motion  to  dissolve  on  the  ground 
of  the  non-patentability  of  the  issue  was  re- 
fused transmission  on  the  ground  that  the 
moving  party  had  had  an  opportunity  to  bring 
such  motion  in  a  prior  interference.  Held. 
that  a  subsequent  motion  alleging  that  a  new 
party  to  the  interference  had  no  right  to  make 


230 


INTERFEREiN'CE,  XVII,  (g),  1. 


the  claims  based  on  the  same  ground  as  the 
prior  motion  should  not  be  transmitted.    Id. 

788.  The  decision  in  Gold  v.  Gold    (C.   D. 

1908,  377,  131  O.  G.  1422)  and  Rockstroh  v. 
Warnock  (C.  D.  1908,  10,  132  O.  G.  234)  con- 
strued and  Held,  not  to  authorize  the  trans- 
mission, as  a  matter  of  course,  of  an  amended 
motion  to  dissolve  filed  within  the  limit  of 
appeal  from  a  decision  refusing  to  transmit 
a  defective  motion,  but  only  where  it  does  not 
appear  from  the  record  that  such  original  mo- 
tion was  not  brought  in  good  faith.  Mc- 
Quarrie  v.  Manson,  C.  D.  1909,  M2  O.  G.  288. 

789.  A  motion  to  dissolve  an  interfer- 
ence on  the  ground  that  the  issue  is  not  pat- 
entable, based  upon  ex  parte  affidavits,  should 
be  refused  transmission.  Barratt  v.  Swingle- 
hurst,  C.  D.  1909,  144  O.  G.  818. 

790.  Where  the  applications  involved  in  an 
interference  were  involved  in  a  prior  interfer- 
ence. Held,  that  a  motion  to  dissolve  was  prop- 
erly refused  transmission  as  to  any  grounds 
which  were  or  might  have  been  raised  on  a 
motion  to  dissolve  in  the  prior  interference. 
Colburn   and   Washburn   v.   Hitchcock,   C.   U. 

1909,  145  O.  G.  1022. 

791.  A  motion  to  dissolve  on  the  ground 
of  irregularity  in  the  declaration  of  the  inter- 
ference was  properly  refused  transmission 
where  the  ground  relied  on  to  show  irregular- 
ity raises  a  question  which  relates  to  the 
merits  of  the  case.     Id. 

792.  Points  alleged  to  constitute  irregu- 
larity in  the  declaration  of  an  interference  and 
raised  for  the  first  time  in  the  brief  filed  at 
the  hearing  on  appeal  from  the  decision  of  the 
e.xaminer  of  interferences  refusing  to  trans- 
mit a  motion  to  dissolve  can  receive  no  con- 
sideration.   Id. 

793.  A  motion  to  dissolve,  alleging  infor- 
mality because  the  claims  in  issue  are  for  in- 
complete combinations  when  read  on  the  op- 
posing party's  disclosure,  was  properly  refused 
transmission,  since  this  question  is  one  rela- 
ting to  the  merits.  Lotterhand  v.  Cornwall, 
C.  D.  1909,  148  O.  G.  1344. 

794.  An  interference  was  dissolved  as  to 
one  count,  but  upon  presentation  of  a  modi- 
fied claim  was  redeclared.  Held,  that  trans- 
mission of  a  motion  to  dissolve  was  properly 
refused  so  far  as  it  related  to  the  other  counts. 
Kennedy  v.  McLain,  C.  D.  1910,  153  O.  G.  547. 

795.  A  motion  to  dissolve  on  the  ground 
of  irregularity  in  the  declaration  thereof  based 
in  part  upon  an  alleged  difference  in  the  mean- 


ing of  the  counts  as  applied  to  the  applica- 
tions of  the  different  parties  and  in  part  upon 
the  alleged  lack  of  right  of  one  of  the  parties 
to  make  the  claims.  Held,  properly  refused 
transmission.  Vanderveld  v.  Smith,  C.  D. 
1910,  1.59  O.  G.  490. 

796.  Where  after  the  denial  of  a  motion 
to  dissolve  an  interference  based  on  the  ref- 
erences of  record  the  moving  party  brings  a 
second  motion  based  on  an  additional  refer- 
ence and  it  does  not  appear  that  such  refer- 
ence could  not  have  been  found  within  the 
time  originally  set  for  bringing  motions.  Held, 
that  such  motion  was  properly  refused  trans- 
mission. Topping  V.  Price,  C.  D.  1910,  ICO  O. 
G.  774. 

797.  A  motion  to  dissolve  alleging  that  the 
application  oath  of  the  opposing  party  is  de- 
fective in  that  it  does  not  comply  with  all 
the  requirements  of  Rule  46,  Held,  properly 
refused  transmission,  since  the  matter  of  a 
proper  oath  is  an  ex  parte  one.  Graham  v. 
Langhaar,  C.  D.  1911,  164  O.  G.  739. 

798.  Where  a  party  to  an  interference  calls 
attention  to  an  informality  in  the  application 
oath  of  the  opposing  party  and  contends  that 
lie  should  not  be  required  to  contest  the  in- 
terference unless  a  proper  oath  is  filed.  Held, 
that  an  order  may  be  issued  calling  upon  the 
delinquent  party  to  file  an  oath  in  compliance 
with  Rule  46,  within  a  limited  time  set,  under 
penalty  of  dissolution  of  the  interference.    Id. 

799.  Where  an  interference  was  declared 
between  the  application  of  the  winning  party 
to  a  prior  interference  and  an  application 
owned  by  the  assignee  of  the  losing  party 
thereto,  Held,  that  a  motion  to  dissolve  on 
grounds  which  were  or  might  have  been  raised 
in  the  prior  interference  was  properly  refused 
transmission.  Keely  v.  Dempster,  C.  D.  1911, 
104  O.  G.  975. 

800.  Where  a  motion  to  dissolve  alleged 
informality  in  the  declaration  of  the  interfer- 
ence based  on  the  allegation  that  certain  addi- 
tions to  the  disclosure  of  the  opposing  party 
were  unwarranted.  Held,  that  the  motion  was 
properly  refused  transmission  as  to  this 
ground,  since  the  allegation  relates  to  the  right 
to  make  the  claims.  Lasher  v.  Barratt,  C.  D. 
1911,  106  O.  G.  751. 

(g)  Motion  Delayed. 
1.  In  General. 

801.  It  is  only  within  the  twenty  days  al- 
lowed by  the  rule  that  the  examiner  of  inter- 


INTERFERENCE,  XVII,  (g),  2. 


231 


ferences  is  bound  to  transmit  a  motion  to  the 
primary  examiner  if  in  proper  form.  After 
that  time  he  is  not  bound  to  transmit  it,  al- 
though it  is  in  proper  form  and  could  not 
have  been  made  earlier,  but  he  must  exercise 
his  discretion  in  determining  whether  it  shall 
be  transmitted  under  all  of  the  circumstances. 
Pupin  V.  Hutin  and  Leblanc  v.  Stone,  C.  D. 
1898,  82  O.  G.  1418. 

802.  After  testimony  has  been  taken  the 
showing  which  would  warrant  remanding  the 
case  to  the  primary  examiner  must  not  only 
make  it  plain  that  the  motion  could  not  have 
been  made  earlier  but  that  it  is  absolutely 
necessary  that  the  matter  be  passed  upon  in 
order  that  a  proper  conclusion  may  be  reached 
on  the  question  of  priority.    Id. 

803.  The  examiner  of  interferences  is 
bound  to  transmit  proper  motions  noticed  for 
hearing  within  the  limit  of  appeal,  if  in  prop- 
er form;  but  after  that  time  he  will  exercise 
his  discretion  under  the  circumstances  of  each 
case  in  determining  whether  the  motion  shall 
be  transmitted.  Trevette  v.  Dexter,  C.  D. 
1S98,  84  O.  G.  1283. 

804.  Where  a  motion  to  dissolve  is  brought 
after  the  time  fixed  by  the  rule  and  is  based 
upon  newly-  discovered  evidence.  Held,  that  it 
should  be  made  to  appear  that  the  evidence 
could  not  have  been  obtained  earlier  by  the 
exercise  of  reasonable  diligence  and  that  the 
motion  was  brought  as  soon  as  possible  after 
the  discovery  of  the  evidence.  Lipe  v.  Miller, 
C.  D.  1903,  105  O.  G.  1263. 

805.  Briefs  upon  motions  should  be  filed 
three  days  before  the  hearing,  as  provided  in 
Rule  163.  They  will  not  be  considered  when 
filed  later  except  where  the  consent  of  the 
tribunal  hearing  the  cause  is  obtained.    Id. 

2.  Delay  Excused. 

806.  Where  a  motion  to  dissolve  an  inter- 
ference based  on  any  of  the  grounds  speci- 
fied in  Rule  122  is  filed  outside  the  twenty- 
day  limit  fixed  by  the  rule,  the  question  of  its 
transmittal  rests  largely  within  the  discretion 
of  the  examiner  of  interferences,  who  may 
upon  a  proper  showing  in  excuse  of  the  delay 
transmit  the  motion  to  the  primary  examiner. 
Winter  v.  Slick  v.  VoUkommer,  C.  D.  1901,  97 
O.  G.  1837. 

807.  A  motion  to  dissolve  an  interference 
brought  after  the  twenty-day  limit  allowed 
by  the  rule  for  such  motions  should  be  trans- 
mitted when  the  delay  is  slight  and  it  appears 


that  no  testimony  has  been  taken  and  that  a 
motion  to  dissolve  on  another  ground  is  al- 
ready before  the  primary  examiner.  Arbetter 
V.  Lewis,  C.  D.  1902,  99  O.  G.  1383. 

808.  If  reasons  exist  why  an  interference 
should  not  be  continued,  it  is  for  the  interest 
of  all  concerned  that  all  such  reasons  be  con- 
sidered at  the  same  time.  Hence  the  matter 
submitted  in  excuse  of  the  delay  will  not  be 
so  closely  scrutinized  as  when  presented  at  a 
later  stage  of  the  proceedings.    Id. 

809.  Where  the  delay  which  occurred  in 
bringing  a  motion  to  dissolve  was  due  in  part 
to  delays  in  this  office  in  filling  an  order  for 
a  copy  of  the  opponent's  file-wrapper  and  the 
facts  show  that  the  inventions  are  not  simple 
ones,  but,  on  the  contrary,  are  quite  compli- 
cated, and  the  moving  party  did  not  have  suf- 
ficient funds  at  hand  to  promptly  order  the 
certified  copy  and  no  testimony  has  been  taken. 
Held,  that  the  reasons  given  are  sufficient  to 
excuse  the  delay  in  this  particular  case. 
Kletzker  and  Goesel  v.  Dodson,  C.  D.  1902, 
101  O.  G.  2822. 

810.  Where  the  examiner  of  interferences 
transmitted  a  motion  for  dissolution  brought 
two  days  after  the  time  allowed  by  the  rules. 
Held,  that  such  action  of  the  examiner  of 
interferences  was  not  an  abuse  of  discretion 
nor  clearly  erroneous  and  would  not  be  dis- 
turbed, citing  Winter  v.  Slick  v.  VoUkommer 
(C.  D.  1901,  210,  97  O.  G.  1837).  Harrison  v. 
Shoemaker,  C.  D.  1904,  109  O.  G.  2170. 

811.  Where  the  delay  in  bringing  a  motion 
for  dissolution  is  slight  and  no  testimony  has 
been  taken,  it  cannot  be  held  that  the  affidavit 
of  the  attorney  that  he  had  been  occupied  with 
other  matters  demanding  immediate  attention 
which  prevented  earlier  consideration  of  the 
case  may  not  be  considered  sufficient  excuse 
for  transmitting  the  motion.    Id. 

812.  A  motion  to  dissolve  an  interference 
filed  five  days  after  the  expiration  of  the 
twenty  days  allowed  for  such  motions  was 
properly  transmitted  to  the  primary  examiner 
in  view  of  a  verified  showing  that  copies  of 
the  interfering  applications  were  ordered  im- 
mediately after  the  declaration  of  the  inter- 
ference, but  that  such  copies  were  not  re- 
ceived until  three  days  after  the  expiration 
of  that  twenty  day  period.  On  such  showing 
it  was  not  necessary  to  distinctly  allege  that 
such  copies  were  orders  directly  from  the  pat- 
ent office  and  not  through  an  agent.  Stein- 
metz  v.  Thomas,  C.  D.  1905,  119  O.  G.  1260. 


232 


INTERFERENCE,  XVII,  (g),  1. 


813.  Where  the  hearing  on  a  motion  to 
transmit  a  motion  to  dissolve  is  extended  by 
stipulation  of  the  parties  and  before  the  hear- 
ing an  amended  motion  is  filed  stating  the 
grounds  of  the  first  motion  more  specifically, 
Ili-ld.  that  the  motion,  if  in  proper  form, 
should  have  been  transmitted  even  if  the 
first  motion  was  not  sufficiently  specific. 
Smith  V.  Fo.x,  C.  D.  1907,  130  O.  G.  1312. 

814.  A  delay  of  seven  days  in  filing  an 
amended  motion  to  dissolve,  curing  objections 
relating  to  indertniteness  of  the  allegations  of 
a  prior  motion,  may  be  excused  where  it  ap- 
pears that  the  first  motion  attempted  in  good 
faith  to  comply  with  the  practice  of  the  office. 
Auxer  v.  Pierce,  Jr.,  C.  D.  1907,  131  O.  G.  359. 

815.  A  decision  of  the  examiner  of  inter- 
ferences transmitting  a  motion  to  dissolve  will 
not  be  disturbed  merely  because  the  motion 
was  filed  more  than  thirty  days  after  the  pre- 
liminary statements  of  the  parties  were  ap- 
proved, but  only  where  it  is  shown  that  there 
has  been  a  clear  abuse  of  discretion  by  the 
examiner  of  interferences  in  transmitting  such 
motion.  Thiem  v.  Bowen,  C.  D.  1909,  143  O. 
G.  Ki4,-j. 

816.  A  delay  of  about  six  weeks  in  bring- 
ing a  motion  to  dissolve,  alleging  non-patent- 
ability of  the  issue  in  view  of  a  foreign  pat- 
ent, excused  where  the  issue  related  to  a  knit- 
ted fabric  and  it  appeared  that  the  moving 
party  had  made  a  search  through  the  patents 
in  the  United  States  patent  office,  in  the 
classes  where  he  thought  the  device  of  the 
issue  should  be  found,  and  then  communica- 
ted with  various  foreign  manufacturers,  in- 
quiring about  the  novelty  of  the  invention  in 
issue,  and  finally  learned  by  this  means  of  the 
patent  on  which  the  motion  was  founded, 
which  relates  primarily  to  a  knitting-machine 
capable  of  producing  the  fabric  of  the  issue 
and  not  to  the  fabric  itself.  Barratt  v.  Swin- 
glehurst,  C.  D.  1909,   144  O.  G.  818. 

1.  Delay  Not  Excused. 

817.  The  fact  that  negotiations  were  pend- 
ing between  the  parties  with  a  view  to  a  set- 
tlement of  the  contest  without  proceeding  with 
the  interference  is  no  valid  excuse  for  delay 
in  presenting  a  motion  for  dissolution,  since 
the  delay  which  will  be  excused  must  be 
caused  by  circumstances  which  have  some- 
thing of  a  compelling  power.  Latham  v.  Force 
V.  Parantian,  C.  D.  1898,  82  O.  G.  185. 


818.  A  motion  to  dissolve,  made  after  the 
testimony  has  been  taken,  should  not  be  trans- 
mitted to  the  primary  examiner  when  no  ex- 
cuse is  given  for  the  delay  except  in  so  far 
as  it  is  based  upon  the  testimony.  Such  mo- 
tions cannot  properly  be  based  upon  the  testi- 
mony. Shiels  V.  Lawrence  ct  al.,  C.  D.  1899, 
87  O.  G.  180. 

819.  Where  it  appears  that  a  party  to  an 
interference  could  and  should  have  made  a 
motion  to  dissolve  the  interference  within  the 
time  allowed  by  Rule  122  and  that  he  would 
not  be  deprived  of  any  substantial  rights  by 
failing  to  have  the  examiner  again  consider 
the  state  of  facts  known  during  the  treatment 
of  the  two  applications  involved  in  the  inter- 
ference, the  motion  should  not  be  transmitted 
to  the  examiner.  Annand  v.  Spalckhaver,  C. 
D.  1900,  93  O.  G.  753. 

820.  When  a  motion  to  dissolve  an  inter- 
ference is  not  made  within  the  time  fixed  by 
Rule  122,  it  is  permissible  to  consider  the 
probability  of  the  grant  of  the  motion  to  dis- 
solve and  whether  substantial  justice  cannot 
be  done  without  the  delay  incident  to  the 
transmission  of  the  motion  to  dissolve,  its  de- 
cision by  the  primary  examiner,  and  in  proper 
cases  an  appeal  to  the  commissioner.     Id. 

821.  In  order  to  warrant  transmitting  a 
motion  filed  after  the  twenty  days  allowed 
by  the  rule,  it  must  be  satisfactorily  explained 
why  it  was  not  possible  to  bring  it  within  the 
time.  The  fact  that  the  reasons  for  it  did 
not  occur  to  the  party  bringing  it,  when  the 
information  was  within  his  reach,  is  not  a  suf- 
ficient excuse.  Potter  v.  Van  Vleck  v.  Thom- 
son, C.   D.  1901,  95  O.  G.  2484. 

822.  Where  a  party  fails  to  make  a  mo- 
tion for  dissolution  within  the  twenty  days  al- 
lowed by  the  rule  and  thereafter  makes  one 
in  view  of  a  recent  decision  of  the  primary  ex- 
aminer dissolving  a  kindred  interference  which 
he  claims  throws  new  light  upon  the  invention, 
but  which  in  reality  merely  encourages  him  to 
make  use  of  information  which  has  long  been 
available  to  him.  Held,  that  the  motion  should 
not  be  transmitted  to  the  primary  examiner. 
Id. 

823.  A  motion  to  dissolve  an  interference 
brought  after  testimony  has  been  taken  and 
unaccompanied  by  a  motion  to  transmit  to  the 
primary  examiner  and  by  no  excuse  for  the 
delay  is  not  brought  in  accordance  with  the 
rules  and  has  no  standing.  Frederick  v.  Fred- 
erick and  Frederick,  C.  D.  1902,  99  O.  G.  18G5. 


INTERFERENCE,  XVII,  (g),  1. 


233 


824.  A  second  motion  for  dissolution  upon 
grounds  urged  in  the  first  motion  amounts  to 
a  request  for  a  rehearing,  and  it  will  not  be 
transmitted  to  the  primary  examiner  after  the 
twenty  days  allowed  by  the  rules  have  expired 
except  upon  such  a  showing  as  would  warrant 
the  granting  of  a  rehearing.  Wilcomb  v. 
Lasher,  C.  D.  1902,  101  O.  G.  666. 

825.  Where  a  party  fails  to  make  a  motion 
to  dissolve  under  Rule  122  within  the  time 
provided,  but  waits  before  bringing  his  motion 
until  testimony  has  been  taken  and  a  judgment 
rendered  on  priority,  the  jurisdiction  of  the 
examiner  of  interferences  will  not  be  restored 
for  the  purpose  of  considering  the  transmis- 
sion of  such  motion  to  the  primary  examiner. 
Fessenden  v.  Potter,  C.  D.  1902,  101  O.  G. 
282:!. 

826.  Where  a  motion  for  dissolution  was 
brought  twenty-three  days  after  the  expira- 
tion of  the  twenty  days  allowed  by  Rule  122 
and  the  reason  given  for  delay  is  that  the  ref- 
erence on  which  the  motion  is  based  was  not 
found  until  after  the  expiration  of  the  time 
allowed  by  the  rule  and  it  does  not  appear 
that  the  reference  was  not  found  in  its  ex- 
pected place  or  that  any  attempt  had  been 
made  to  find  the  reference  within  the  time 
allowed  by  the  rule,  Held,  that  the  examiner 
of  interferences  properly  refused  to  transmit 
the  motion.  Sturgis  v.  Hopewell,  C.  D.  1904, 
109  O.  G.  1067. 

827.  A  motion  to  dissolve  an  interference 
will  not  be  transmitted  to  the  primary  exam- 
iner after  the  twenty  days  fixed  by  the  rule 
merely  because  no  testimony  has  been  taken. 
Good  reasons  must  be  shown  for  the  delay. 
Arbetter  v.  Lewis,  C.  D.  1902.  161,  99  O.  G. 
lliS."!,  distinguished.     Id. 

828.  The  transmission  of  motions  for  dis- 
solution brought  after  the  twenty  days  allow- 
ed by  Rule  122,  but  before  testimony  is  taken, 
without  satisfactory  showing  of  reasons  for 
delay  would  nullify  the  provisions  of  the 
rule  in  this  respect.    Id. 

829.  Motions  to  dissolve  generally  involve 
delay,  which  is  often  useless  and  vexatious. 
It  is  desirable  that  they  be  brought  as  soon 
as  possible,  and  twenty  days  seems  to  be  suf- 
ficient time  for  that  purpose  when  not  pre- 
vented by  circumstances  of  a  compelling  na- 
ture.    Id. 

830.  Rule  126  provides  sufficiently  for  the 
consideration  of  matters  which  might  have 
been   made   the   basis   of   motion   under   Rule 


122,  but  which  were  not  so  presented,  and  the 
action  of  the  examiner  of  interferences  trans- 
mitting or  refusing  to  transmit  a  motion 
brought  after  the  twenty  days  allowed  by  the 
rule  will  not  be  disturbed  except  where  there 
has  been  an  abuse  of  discretion  or  his  action 
is  clearly  erroneous.     Id. 

831.  Where  a  motion  is  filed  after  the 
twenty  days  to  transmit  a  motion  to  dissolve 
and  the  motion  to  transmit  is  denied  on  the 
ground  that  no  sufficient  reasons  have  been  set 
forth  to  excuse  the  delay  and  thereafter  an- 
other motion  is  made.  Held,  the  subsequent 
motion  should  be  treated  as  a  motion  for  re- 
hearing, and  no  limit  of  appeal  from  a  deci- 
sion on  that  motion  should  be  set.  Good- 
fellow  V.  Jolly,  C.  D.  1904,  110  O.  G.  602. 

832.  Where  a  motion  to  transmit  an  in- 
terference is  brought  by  a  new  attorney  ap- 
pointed after  the  time  for  filing  has  expired, 
and  it  appears  that  the  reason  why  the  motion 
was  not  brought  within  the  prescribed  time 
was  that  the  attorney  then  having  charge  of 
the  case  did  not  think  such  motion  advisable, 
and  so  far  as  appears  the  motion  at  this  time 
is  due  to  a  change  of  purpose,  arising  from 
the  fact  that  a  new  attorney  was  appointed, 
Held,  that  such  reason  is  not  sufficient  excuse 
for  the  delay,  and  motion  should  be  denied. 
Rayburn  v.  Strain,  C.  D.  1904,  110  O.  G.  603. 

833.  A  motion  to  dissolve  filed  after  the 
twenty  days  permitted  by  the  rule  will  not  be 
transmitted  to  the  primary  examiner  in  the 
absence  of  a  showing  why  it  was  not  sooner 
presented.  Mc.\rthur  v.  Gilbert,  C.  D.  1904, 
111  O.  G.  1624. 

834.  The  pendency  of  a  motion  to  shift  the 
burden  of  proof  is  no  good  reason  for  delay 
in  bringing  a  motion  for  dissolution.     Id. 

835.  Where  a  motion  for  dissolution  is 
brought  nearly  a  year  after  the  expiration  of 
the  twenty  days  allowed  by  Rule  122  and  the 
reason  given  for  delay  is  that  the  reference 
on  which  the  motion  is  based  was  not  found 
until  after  the  expiration  of  the  time  allowed 
by  the  rule  and  it  does  not  appear  that  the  ref- 
erence was  not  found  in  its  expected  place  or 
that  any  attempt  had  been  made  to  find  the 
reference  within  the  time  allowed  by  the  rule. 
Held,  that  the  examiner  of  interferences  prop- 
erly refused  to  transmit  the  motion.  (Stur- 
gis V.  Hopewell,  ante,  82,  109  O.  G.  1067.) 
Schirmer  v.  Lindemann  and  Stock,  C.  D.  1904, 
111  O.  G.  2222. 


234 


INTERFERENCE,  XVII,  (g),  1. 


836.  Where  a  motion  for  dissolution  is 
brought  long  after  the  expiration  of  the 
twenty  days  allowed  by  the  rule  and  no  at- 
tempt has  been  made  to  show  that  the  moving 
party  could  not  have  brought  the  motion  ear- 
lier (Nicdringhaus  v.  Marquard  v.  McCon- 
ncll,  C.  D.  1902,  403,  101  O.  G.  1610)  or  that 
the  alleged  anticipating  patent  could  not  have 
been  found  by  exercising  reasonable  diligence 
(Lipe  V.  Miller,  C.  D.  1903,  266,  105  O.  G. 
1532),  Held,  that  the  motion  should  not  be 
transmitted.     Id. 

837.  The  fact  that  the  moving  party  has 
had  several  attorneys  to  represent  him  during 
the  prosecution  of  his  application  is  not  a 
valid  excuse  for  failure  to  bring  his  motion 
to  dissolve  within  the  time  expressly  given 
by  the  rule.  The  right  of  the  party  directly 
involved  is  not  the  present  attorney,  but  the 
applicant,  who  had  an  opportunity  to  take  ad- 
vantage of  Rule  123,  but  failed  to  do  so.    Id. 

838.  When  motion  to  dissolve  for  no  inter- 
ference in  fact  is  denied  by  primary  examiner 
and  by  commissioner  on  appeal  and  a  new  mo- 
tion is  then  brought  by  same  party  to  dissolve 
on  ground  of  non-patentability  of  issue,  but 
the  time  for  bringing  motions  has  expired. 
Held,  that  the  transmission  of  the  new  mo- 
tion depends  upon  whether  good  and  sufficient 
reasons  are  shown  why  the  new  ground  was 
not  presented  as  part  of  the  earlier  motion 
or  within  the  time  fixed  by  the  rules  for  bring- 
ing such  motions.  Hedlund  v.  Curtis,  C.  D. 
1904,  113  O.  G.  1419. 

839.  It  would  obviously  be  preferable  from 
the  point  of  view  of  parties  who  cannot  pre- 
vail upon  priority,  to  raise  first  the  contention 
of  no  interference  in  fact  and  in  the  event 
of  an  adverse  decision  on  this  issue  to  attack 
the  patentability  of  the  claims;  but  the  in- 
terest of  other  parties  and  good  practice  de- 
mand that  this  course  be  permitted  only  upon 
showing  of  good  and  sufficient  reasons  why 
all  of  the  questions  were  not  raised  in  the 
first  instance.    Id. 

840.  When  on  previous  motion  to  dissolve 
for  no  interference  in  fact  the  examiner  and 
commissioner  had  pointed  out,  respectively, 
different  specific  structures  as  included  by  the 
claim  in  issue,  but  the  claim  is  obviously  lim- 
ited to  neither  of  these  structures.  Held,  that 
this  divergence  of  the  commissioner's  from 
the  examiner's  decision  did  not  create  a  new 
situation    or    furnish    reasonable   ground    for 


surprise,    warranting   transmission   of    a   new 
and  tardy   motion   for  dissolution.     Id. 

841.  That  the  moving  party  had  arbitrarily 
adopted  a  narrow  interpretation  of  the  issue 
and  had  not  anticipated  an  unfavorable  deci- 
sion upon  his  earlier  motion  cannot  be  ac- 
cepted as  a  showing  sufficient  to  justify  trans- 
mission when  the  second  motion  comes  long 
after  the  time  fixed  by  the  rules  for  filing  mo- 
tions.   Id. 

842.  Where  a  party  consumes  the  twenty 
days  in  which  motions  for  dissolution  should 
be  filed  in  negotiations  for  a  settlement  of 
the  interference  and  waits  until  the  negotia- 
tions are  broken  off,  which  occurs  a  few 
weeks  after  the  expiration  of  the  twenty 
days,  before  he  makes  a  search  for  antici- 
pating references,  Held,  that  a  motion  to  dis- 
solve brought  at  that  late  date  should  not  be 
transmitted  to  the  primary  examiner.  In- 
goldsby  V.  Bellows,  C.  D.  1904,  113  O.  G. 
2214. 

843.  Held,  that  negotiations  for  a  settle- 
ment of  an  interference  are  not  circumstances 
of  a  compelling  nature  which  prevent  the 
bringing  of  a  motion  to  dissolve  within  the 
time  permitted  by  the  rules.     Id. 

844.  Where  motion  for  dissolution  is  made 
after  the  twenty  days  allowed  by  the  rule  and 
no  showing  is  made  why  the  grounds  of  the 
motion  were  not  discovered  and  the  motion 
brought  within  the  twenty  days  except  that 
the  motion  was  delayed  to  await  decision  upon 
a  motion  by  another  party,  Held,  that  the  mo- 
tion will  not  be  transmitted  to  the  primary 
examiner.  Jackson  v.  Cuntz,  C.  D.  1905,  115 
O.  G.  510. 

845.  The  pendency  of  one  motion  furnishes 
no  excuse  for  delay  in  presenting  another  mo- 
tion beyond  the  twenty  days  fixed  by  the 
rule.     Id. 

846.  Where  a  motion  for  dissolution  is 
brought  long  after  the  time  fixed  by  the  rules 
and  is  based  upon  patents  discovered  six 
months  before  the  motion  was  made.  Held, 
that  the  motion  will  not  be  transmitted  to  the 
examiner  for  consideration.  Wilcox  v.  New- 
ton,  C.   D.   1905,   116  O.  G.   1452. 

847.  Where  motion  for  dissolution  was  filed 
long  after  the  time  allowed  by  the  rules  and 
in  excuse  for  the  delay  it  is  said  that  a  refer- 
ence relied  upon  was  newly  discovered,  but 
it  appears  that  other  references  are  cited  and 
other    grounds    for    dissolution    given.    Held, 


INTERFERENCE,  XVII,  (g),  1. 


235 


tliat  the  excuse  is  insufficient.     Pfingst  v.  An- 
derson, C.  D.  190.-,,  117  O.  G.  597. 

848.  The  pendency  of  an  appeal  upon  one 
motion  is  no  excuse  for  delay  in  filing  another 
motion  which  the  rules  permit  on  condition 
that  it  is  filed  within  a  specified  time.     Id. 

849.  Where  it  appears  that  a  motion  to  dis- 
solve was  not  brought  by  counsel  for  one  of 
the  parties  within  the  time  permitted  by  the 
rules  because  such  procedure  was  not  deemed 
admissible,  Held,  that  a  mere  change  of  opin- 
ion after  retention  of  additional  counsel  will 
not  justify  transmission  of  the  motion  for  dis- 
solution long  after  the  time  when  it  should 
have  been  brought.  Carver  v.  McCanna,  C. 
D.  Ul0.i,  117  O.  G.  .599. 

850.  Where  motion  for  dissolution  was  filed 
two  months  after  access  was  permitted  to  op- 
ponent's case  and  it  appeared  that  the  delay 
was  due  to  several  delays  in  attending  to  the 
preliminaries  to  the  motion,  not  shown  to  be 
unavoidable,  Held,  that  the  motion  would  not 
be  entertained.  Carney  v.  Latimer,  C.  D.  \WJ, 
119  O.  G.  652. 

851.  Where  excuses  offered  for  delay  in 
bringing  motion  for  dissolution  do  not  cover 
the  period  in  which  the  motion  should  have 
been  brought  or  some  of  the  subsequent  pe- 
riod, but  apply  only  to  the  latter  portion  of 
the  subsequent  period.  Held,  that  the  motion 
should  not  be  transmitted.  McKee  v.  Baker, 
C.  D.  1906,  120  O.  G.  657. 

852.  Where  it  is  not  shown  that  a  party 
went  diligently  to  work  upon  his  case  at  the 
proper  time  to  discover  whether  a  motion  for 
dissolution  should  be  brought,  nor  that  he 
was  prevented  from  making  the  necessary 
investigation  and  bringing  the  motion  within 
the  period  fixed  by  the  rules,  Held,  that  the 
motion   should   not   be  transmitted.      Id. 

853.  The  rule  requiring  motions  to  be 
brought  within  a  fixed  time  is  a  wholesome 
one,  and  its  enforcement  requires  that  motions 
be  not  accepted  when  brought  after  the  ex- 
piration of  that  time  except  where  circum- 
stances are  shown  which  made  it  impossible 
to  bring  the  motion  within  the  regular  period 
or  under  which  the  party  could  not  reasonably 
be  expected  to  have  brought  it  therein.     Id. 

854.  A  delay  of  three  months  in  bringing 
a  motion  to  dissolve  is  not  excused  because 
of  alleged  delay  to  the  moving  party  in  pro- 
curing copies  of  two  applications  which  are 
referred  to  in  the  preliminary  statement  of 
the  opposing  party.     It  was  not  necessary  to 


the  bringing  of  the  motion  to  procure  copies 
of  such  applications,  as  they  were  not  includ- 
ed in  the  interference  and  could  not,  there- 
fore, form  a  basis  for  its  dissolution.  Moore 
V.  Curtis,  C.  D.  1906,  121  O.  G.  2325. 

855.  Where  a  motion  to  dissolve  was 
brought  more  than  seven  months  after  the 
time  li.xed  by  the  rules  and  the  e.xcuse  for  the 
delay  was  that  the  attorney  was  so  busy  with 
other  business  matters  that  he  could  not  soon- 
er bring  the  motion.  Held,  insufficient  to  ac- 
count for  the  long  delay.  Townsend  v.  Cope- 
land  V.  Robinson,  C.  D.  1906,  124  O.  G.  1210. 

856.  Where  it  is  urged  that  even  though  the 
showing  in  excuse  of  the  delay  in  bringing  a 
motion  to  dissolve  be  regarded  as  insufficient 
the  motion  should  nevertheless  be  transmitted 
in  view  of  the  fact  that  no  testimony  has  yet 
been  taken  and  that  there  is  a  motion  to 
amend  now  pending  before  the  examiner. 
Held,  that  these  circumstances  are  not  con- 
trolling and  that  the  provision  of  Rule  122  re- 
quiring motions  to  be  brought,  if  possible, 
within  a  time  fixed  is  conducive  to  orderly 
procedure  and  must  be  enforced.     Id. 

857.  The  fact  that  similar  motions  have 
been  brought  in  companion  interferences  con- 
stitute no  sufficient  excuse  for  delay  in  bring- 
ing a  motion  to  dissolve.  Cutler  v.  Carichoff, 
C.  D.  19U7,  130  O.  G.  656. 

858.  Where  a  motion  to  dissolve  on  the 
ground  that  the  adverse  party  had  no  right 
to  make  the  claims  and  that  his  application 
did  not  show  an  operative  device,  was  brought 
nearly  two  months  after  the  expiration  of  the 
thirty  days.  Held,  that  the  fact  that  attorneys 
were  busy  with  other  matters  and  that  it  was 
necessary  to  make  certain  models  constitutes 
no  sufficient  excuse  for  the  delay,  especially  as 
no  showing  w-as  made  why  it  was  necessary 
to  make  so  many  models  or  to  take  so  long 
a  time  to  complete  them.  Josleyn  v.  Hulse, 
C.  D.  1097,  130  O.  G.  1689. 

859.  The  pendency  of  a  motion  under  Rule 
109  is  no  excuse  for  the  delay  in  bringing  a 
motion  to  dissolve.     Id. 

860.  The  fact  that  numerous  appeals  and 
petitions  have  been  taken  to  have  transmitted 
a  motion  to  dissolve  which  was  not  in  proper 
form  constitutes  no  excuse  for  the  delay  in 
bringing  the  motion  in  proper  form.  Brant- 
ingham  v.  Draver  and  Draver,  C.  D.  1907, 
130  O.  G.  2720. 

861.  A  delay  of  seven  weeks  in  the  filing  of 
a  motion  to  dissolve  will  not  be  excused  on 


236 


INTERFERENCE,  XVII,  (li),  i. 


a  showing  that  counsel  called  applicant's  at- 
tention to  the  advisability  of  filing  the  motion, 
that  it  was  applicant's  intention  to  visit  Wash- 
ington for  the  purpose  of  consulting  his  attor- 
ney regarding  the  motion,  but  that  before  a 
meeting  could  be  arranged  business  of  great 
importance  called  him  to  other  places,  espe- 
cially in  view  of  a  vigorous  protest  by  the  op- 
posing party  against  delay  and  a  showing  that 
such  delay  would  result  in  hardship  to  him. 
Blackmore  v.  Hall,  C.  D.  1908.  132  O.  G.  158. 

862.  The  fact  that  an  appeal  had  been  taken 
from  a  decision  refusing  to  transmit  a  former 
motion  to  dissolve  and  that  applicant  was 
awaiting  a  decision  thereon,  Held,  insufficient 
to  excuse  delay  in  bringing  a  second  motion. 
PapendcU  v.  Bunnell  v.  Reizenstein  v.  Gais- 
man  v.  Gillett,  C.  D.  1908,  1,32  O.  G.  18:57. 

863.  The  pendency  of  a  motion  to  shift  the 
burden  of  proof  is  no  excuse  for  the  delay  in 
bringing  a  motion  to  dissolve.  Price  v.  Black- 
more,  C.  D.  1908,  i:«  O.  G.  514. 

864.  A  motion  to  dissolve  filed  late  and 
based  on  alleged  admissions  in  a  motion  filed 
by  the  opposing  party  will  not  be  transmitted. 
Ellis  v.  Schroeder  v.  Allen,  C.  D.  1908,  l,-i4 
O.  G.  180!!. 

865.  Where  in  answer  to  an  order  issued 
under  Rule  114  against  a  junior  party  to  an 
interference  to  show  cause  why  judgment 
should  not  be  rendered  against  him  such  party 
presents  a  motion  for  dissolution  alleging  non- 
patentability  of  the  issue,  it  is  incumbent  upon 
him  to  comply  strictly  with  the  provisions  of 
Rule  122,  and  such  a  motion  filed  after  the 
expiration  of  the  thirty  days  allowed  by  the 
rule  should  not  be  transmitted  in  the  absence 
of  a  very  satisfactory  showing  of  reasons  why 
it  was  not  earlier  presented.  Ryder  v.  Brown 
V.  Tripp  and  McMeans  v.  White,  C.  D.  1908, 
i:!7  O.  G.  228. 

866.  The  fact  that  the  primary  examiner 
discovers  a  reference  and  brings  it  forward 
of  his  own  motion  in  a  companion  interfer- 
ence is  no  excuse  for  the  delay  of  a  party  in 
bringing  a  motion  to  dissolve  based  on  such 
reference  where  it  does  not  appear  that  the 
same  could  not  have  been  discovered  in  time 
had  diligence  been  exercised.  Townsend  v. 
Ehret  v.  Young  v.  Struble,  i:?7  O.  G.  1484. 

867.  A  motion  to  dissolve  brought  by  the 
junior  party  after  the  expiration  of  his  time 
for  taking  testimony,  Held,  properly  refused 
transmission  in  the  absence  of  satisfactory 
reasons    why    such    motion    was   not   brought 


within  the  time  allowed  by  Rule  122.     Ries  v. 
Gould  v.  Pomeroy,  C.  D.  1911,  171  O.  0.  483. 

(h)  Defiiiilcncss  of  Motion. 
1.  In  General. 

868.  A  motion  to  dissolve  an  interference 
will  not  be  regarded  as  in  proper  form  for 
transmission  to  the  primary  examiner  unless 
it  is  made  definite  and  gives  information  as 
to  the  point  to  be  argued.  Vreeland  v.  Fessen- 
den  v.  Schloemilch,  C.  D.  1905,  117  O.  G.  26Xi. 

869.  In  order  to  restrict,  so  far  as  possible, 
the  labor  of  investigation  and  consideration 
on  the  part  of  the  office  and  on  the  part  of 
the  parties  against  whom  motions  for  dissolu- 
tion are  brought  to  the  exact  matters  by  rea- 
son of  which  the  moving  party  believes  the 
interference  should  be  dissolved,  it  is  believed 
that  the  motion  should  set  forth  the  specific 
facts  relied  upon  to  show  that  the  interference 
should  not  continue.  Klepetko  v.  Becker,  C. 
D.   190G,  120  O.  G.  G5S. 

870.  In  setting  forth  facts  in  motions  for 
dissolution  the  distinctions  between  the  gen- 
eral grounds  of  dissolution  which  have  been 
pointed  out  in  Wodward  v.  Newton  (C.  D. 
1899,  13,  86  O.  G.  490)  ;  Owens  v.  Richardson 
(C.  D.  1904,  289,  111  O.  G.  1037),  and  Kac- 
zander  v.  Hodges  and  Hodges  (C.  D.  1905, 
361,  118  O.  G.  836),  must  be  carefully  ob- 
served. The  observance  of  these  distinctions 
is  necessary  to  the  logical  presentation  of  the 
questions  raised  and  to  the  avoidance  of  con- 
fusion in  the  matter  of  appeals.     Id. 

871.  Where  the  motion  does  not  state  facts 
of  such  nature  as  might  form  proper  basis 
for  dissolution  upon  the  general  ground  upon 
which  the  facts  are  alleged,  the  motion  is  not 
sufficiently  clear  and  definite,  and  it  should 
not  be  transmitted  as  to  those  grounds  to 
which  such  objections  apply.    Id. 

872.  Where  a  motion  is  brought  to  dissolve 
the  interference  on  the  ground  of  irregularity 
in  the  declaration,  because  the  counts  are  not 
clear  and  definite.  Held,  that  the  alleged  in- 
definiteness  must  reside  in  certain  portions  of 
the  counts  or  in  certain  words  used  and  that 
the  motion  should  point  out  wherein  the  sup- 
posed indefiniteness  lies.  The  motion  need 
not  state  the  arguments,  but  should  definitely 
set  forth  the  points  to  be  argued.  Berrye, 
Kane,  and  Stengard  v.  Hildreth,  C.  D.  1906, 
122  O.  G.  1722. 

873.  A  motion  to  dissolve  on  the  ground 
of  non-patentability  of  the  counts  of  the  issue 


INTERFERENCE,  XVII,  (h),  2,  3. 


237 


should  be  refused  transmission  unless  the 
patents  rehed  upon  are  specifically  named  and 
applied.  Lotterhand  v.  Cornwall,  148  O.  G. 
1344. 

874.  A  motion  to  dissolve  on  the  ground 
of  nonpatentahility  which  does  not  clearly 
point  out  the  pertinency  of  the  references  re- 
lied upon  should  not  be  transmitted.  Vander- 
weld  V.  Smith,  l.j'J  O.  0.  41)0. 

2.  Sufficiently   Definite. 

875.  The  specific  facts  upon  which  a  mo- 
tion to  dissolve  is  based  need  not  be  stated 
when  the  only  facts  relied  upon  arc  disclosed 
in  the  record.  (Law  v.  Woolf,  C.  D.  1801, 
91,  :>r,  O.  G.  1.J27;  Wells  v.  Packer,  C.  D.  I90n, 
35,  90  O.  G.  1947.)  Winter  v.  Slick  v.  VoU- 
knmmer,  C.  D.   1901,  97  O.  G.  1837. 

876.  A  motion  to  dissolve  alleging  non-pat- 
tcntability  of  the  opposing  party's  claims  in 
view  of  certain  specified  patents  is  not  in- 
definite simply  because  the  patents  are  early 
enough  to  anticipate  the  claims  of  both  par- 
ties. The  allegation  that  the  patents  antici- 
pate the  claims  of  the  opposing  party  only 
will  not  prevent  a  holding  by  the  primary  ex- 
aminer that  they  anticipate  the  claims  of  both 
parties.  Latour  v.  Lundell,  C.  D.  1906,  122  O. 
G.    !046. 

877.  A  motion  to  dissolve  on  the  ground  of 
non-interference  in  fact  which  alleges  that  no 
interference  in  fact  exists,  for  the  reason  that 
certain  specified  elements  of  specified  counts 
cannot  be  read  on  the  constructions  of  both 
parties  with  the  same  meaning,  is  not  open 
to  the  objection  of  indefiniteness.  It  is  not 
necessary  for  the  motion  to  state  the  grounds 
on  which  the  allegations  are  based,  as  this  is 
a  matter  of  argument.  Garcia  v.  Pons,  C.  D. 
1906,    122   O.    G.    1396. 

878.  A  motion  to  dissolve  on  the  ground 
of  non-patentability,  which  states  that  a  given 
count  "does  not  involve  patentable  invention 
over  each  of  the  foUow-ing  Letters  Patent," 
after  which  certain  patents  are  specified,  is  not 
open  to  the  objection  of  indefiniteness.  Mc- 
Canna  v.  Morris,  C.  D.  1907,  128  O.  G.  1292. 

3.  Not  Sufficiently  Definite. 

879.  Where  more  than  two  parties  are  in- 
volved in  an  interference  and  a  motion  for 
dissolution  is  made  alleging  no  interference 
in  fact,  but  not  stating  the  particular  parties 
in    regard   to   which   the   contention    is   to   be 


made.  Held,  that  the  motion  is  not  sufficiently 
definite.  Vreeland  v.  Fessenden  v.  Schloc- 
milch,  C.  D.  190.-),  117  O.  G.  263.3. 

880.  A  motion  for  dissolution  alleging  ir- 
regularity in  the  declaration  without  specify- 
ing the  nature  of  the  supposed  irregularity  is 
not  sufficiently  degnite.    Id. 

881.  A  motion  for  dissolution  alleging  that 
there  is  no  interference  in  fact,  but  not  speci- 
fying the  counts  of  the  issue  in  regard  to 
which  the  contention  is  to  be  made,  is  not 
sufficiently  definite.  Vreeland  v.  Fessenden 
V.  Schloemilch,  C.  D.  1905,  119  O.  G.  1259. 

882.  A  motion  for  dissolution  should  give 
the  opposing  party  a  reasonably  definite  idea 
of  the  points  to  be  considered  when  the 
hearing  is  had.     Id. 

883.  No  motion  for  dissolution  should  be 
brought  unless  the  moving  party  has  some 
definite  point  in  mind  which  he  wishes  to 
make,  and  it  is  no  hardship  to  require  him 
to  state  the  point  in  his  motion.     Id. 

884.  Where  a  motion  for  dissolution  alleges 
irregularity  in  the  declaration,  but  the  spe- 
cific statement  of  facts  upon  which  the  alle- 
gation is  based  shows  that  the  real  question 
goes  to  the  right  of  a  party  to  make  the  claim. 
Held,  that  they  should  be  included  under  the 
allegation  that  the  opposing  party  has  no  right 
to  make  the  claim.     Id. 

885.  A  motion  to  dissolve  alleging  that  a 
party  has  no  right  to  make  the  claims  is  not 
sufficiently  definite  where  the  point  to  be  ar- 
gued is  stated  to  be  merely  the  failure  of 
such  party  to  disclose  anything  in  his  appli- 
cation which  is  "suggestive  of  the  issue."  The 
particular  element  or  elements  which  are  be- 
lieved to  be  not  properly  disclosed  and  the 
particular  count  or  counts  including  such  ele- 
ments should  be  specified.  Dunker  v.  Reist, 
C.  n.  1905,  119  O.  G.  1925. 

886.  In  a  motion  to  dissolve  the  bare  alle- 
gation that  there  is  no  interference  in  fact  is 
insufficient.  The  point  or  points  to  be  argued 
should  be  specified  with  great  particularity. 
Not  only  the  count  or  counts,  but  the  particu- 
lar element  or  elements  which  are  to  be 
brought  in  question,  should  be  specified.     Id. 

887.  .\  motion  to  dissolve  which  alleges  that 
the  opposing  party  has  no  right  to  make  the 
claims  of  the  issue,  five  in  number,  because 
he  does  not  show  five  specified  combinations 
of  elements,  is  objectionable  on  the  ground  of 
indefiniteness,  where  it  is  found  that  the  five 
combinations    specified    are    the    same    as    the 


233 


INTERFERENCE,  XVll,  (h).  3. 


combinations  of  the  claims  in  issue.  The  alle- 
gation amounts  to  nothing  more  than  a  state- 
ment that  the  opposing  party  has  no  right  to 
make  the  claims  of  the  issue.  Latour  v.  Lun- 
dcll,  C.   D.  1906,   122  O.  G.  1046. 

888.  A  motion  to  dissolve  on  the  ground  of 
non-interference  in  fact  which  alleges  that 
neither  party  should  be  permitted  to  secure 
claims  broad  enough  to  cover  the  other's  con- 
struction is  indefinite  and  should  not  be  trans- 
mitted to  the  primary  examiner.  Dickinson 
V.  Hildreth,  C.  D.  1906,  122  O.  G.  1397. 

889.  Where  nineteen  unapplied  references 
are  cited  as  a  reason  for  dissolution  of  an  in- 
terference on  the  ground  of  non-patentability. 
Held,  obviously  bad  and  that  this  reason  for 
dissolution  will  not  be  entertained  in  consid- 
ering the  motion.  Pym  v.  Hadaway,  C.  D. 
1906,  123  O.  G.  1238. 

890.  A  motion  to  dissolve  on  the  ground 
of  lack  of  interference  in  fact  which  alleges 
merely  that  there  is  no  interference  in  fact  as 
to  either  count,  because  they  do  not  mean  the 
same  thing  when  read  on  the  constructions  of 
both  parties,  is  not  sufficiently  definite,  as  it 
fails  to  specify  the  element  or  elements  of  the 
counts  wherein  the  different  meanings  are 
supposed  to  reside,  and  should  not  be  trans- 
mitted to  the  primary  examiner.  Miller  v. 
Mann,  C.  D.  1906,  122  O.  G.  730. 

891.  In  augurating  the  practice  of  requiring 
definiteness  in  motions  to  dissolve  it  was  the 
intention  not  to  require  that  the  arguments 
should  be  given,  but  that  reasonable  notice 
should  be  given  of  the  points  to  be  argued. 
These  facts  must  be  in  the  mind  of  the  mov- 
ing party  when  the  motion  is  drawn,  if  it  is 
one  brought  in  good  faith,  and  no  reason  is 
known  why  his  opponent  should  not  be  given 
this  information  before  the  hearing  for  his 
assistance  in  preparing  his  defense.  Heyne, 
Hayward,  and  McCarthy  v.  De  Vilbiss,  Jr., 
C.  D.  1906,  12.5  O.  G.  669. 

892.  Where  the  motion  to  dissolve  alleges 
non-patentability  of  the  ten  counts  of  the  issue 
in  view  of  six  enumerated  patents,  Held,  that 
if  the  moving  party  is  of  the  opinion  that  each 
of  the  references  is  an  anticipation  of  each  of 
the  claims  the  motion  should  so  state;  if  not, 
the  motion  should  enumerate  the  references 
in  connection  with  the  claims  to  which  they 
will  be  applied  in  the  argument.  If  the  con- 
tention of  non-patentability  is  based  upon  the 
theory  of  aggregation  or  double  use  or  sub- 
stitution of  equivalents,   it  should  appear  in 


the  motion,  also  the  manner  in  which  it  is  pro- 
posed to  combine  the  references.     Id. 

893.  Where  a  motion  for  dissolution  refers 
to  the  prior  art  cited  in  the  records  of  the 
applications  and  gives  no  information  as  to 
what  patents  are  to  be  urged  against  the  re- 
spective counts  or  how  they  are  to  be  used 
or  combined  to  anticipate  invention  stated  in 
said  counts,  Held,  that  the  motion  is  too  in- 
definite and  transmission  of  the  same  was 
properly  refused.  Brown  v.  Inwood  and  Lav- 
enberg,  C.  D.  1907,  130  O.  G.  978. 

894.  Where  it  is  moved  to  dissolve  an  inter- 
ference on  the  ground  that  the  issue  is  not 
patentable  in  view  of  certain  references  cited. 
but  it  is  not  stated  how  these  references  arc 
to  he  applied,  the  motion  to  transmit  should 
be  denied.  Phillips  v.  Scott,  S.  D.  1907,  130 
O.  G.  1312. 

895.  The  allegation  in  a  motion  for  disso- 
lution that  the  issue  is  unpatentable  in  view 
of  eight  references,  of  which  it  is  said  that 
"each  of  the  counts  is  also  met  in  each  of  the 
above  patents,  singly  or  in  combination,"  is 
vague  and  indefinite,  and  the  transmission  of 
the  motion  for  dissolution  was  properly  re- 
fused. Thullen  v.  Townsend,  C.  D.  1907,  130 
O.  G.  1312. 

896.  Held,  that  a  motion  to  dissolve  an  in- 
terference on  the  ground  that  the  claims  in 
issue  are  not  patentable  in  view  of  certain 
patents  and  others  which  "will  be  cited  more 
than  five  days  before  the  hearing"  should  not 
be  transmitted.  Rule  122  requires  that  the 
motion  for  dissolution  must  "contain  a  full 
statement  of  grounds  relied  upon."  Papen- 
dell  V.  Bunnell  et  al.,  C.  D.  1907,  131  O.  G. 
362. 

897.  A  motion  to  dissolve  alleging  that  each 
of  the  counts  of  the  issue  is  anticipated  or 
necessarily  limited,  so  as  to  prevent  them  from 
being  read  upon  the  devices  of  both  of  the 
parties  in  view  of  seven  enumerated  patents, 
is  indefinite,  because  the  allegation  that  the 
counts  are  anticipated  or  limited  is  in  the  al- 
ternative and  the  motion  does  not  state  which 
counts  are  to  be  urged  as  anticipated  and 
which  limited,  nor  does  it  state  which  of  the 
patents  are  relied  upon  for  anticipation  and 
which  for  restriction.  Murphy  v.  Borland,  C. 
D.  1908,  132  O.  G.  231. 

898.  A  motion  alleging  that  the  opposing 
party  has  no  right  to  make  the  claims  on  ac- 
count of  informality  of  his  specification  is  too 


INTERFERENCE,  XVII,  (i),  1. 


239 


indefinite    to   be   transmitted.     Id.      Rowe    v. 
Brinkmann,  C.  D.  isns,  lH.i  O.  G.  51.1. 

899.  Where  a  motion  for  dissolution  refers 
only  to  "the  old  form  of  hickey"  as  evidence 
of  unpatentability  and  merely  alleges  irregu- 
larity in  the  declaration,  without  showing 
wherein  it  consists.  Held,  that  the  motion  is 
too  indefinite,  and  transmission  thereof  on 
these  grounds  was  properly  refused.  Joseph 
V.  Kennedy  v.  McLain,  C.  D.  1909,  144  O.  G. 
1089. 

900.  A  motion  to  dissolve,  alleging  no  in- 
terference in  fact  on  account  of  the  meaning 
which  it  is  contended  should  be  given  a  cer- 
tain term,  is  too  indefinite  to  be  transmitted 
where  this  term  does  not  occur  in  all  the 
counts  and  it  is  not  stated  to  which  of  the 
counts  the  motion  is  intended  to  apply.  Bactz 
V.  Kukkuck,  C.  D.  1909,  148  O.  G.  1343. 

901.  An  allegation  in  a  motion  to  dissolve 
that  the  opposing  party  has  no  right  to  make 
the  claims  "since  the  issue  covers  an  inven- 
tion not  contemplated  nor  disclosed  by  him 
in  the  original  specification  (Rule  70),"  Held, 
not  a  sufficiently  definite  statement  of  the  rea- 
sons upon  which  the  motion  is  based  and 
transmission  of  the  motion  properly  refused. 
Id. 

902.  A  motion  to  dissolve  or.  the  ground  of 
the  lack  of  right  of  the  opposing  party  to 
make  the  claims  was  properly  refused  trans- 
mission where  the  motion  did  not  specifically 
state  what  elements  of  the  claims  were  not 
shown.    Id. 

(i)  Irregularity  in  Declaration. 

1.  Dissolved. 

903.  Where  the  issue  of  the  interference 
was  for  a  process  and  the  examiner  included 
under  that  issue  claims  for  an  article  of  man- 
ufacture which  were  not  made  by  one  of  the 
parties.  Held,  that  the  interference  was  im- 
properly declared  and  that  the  article  claims 
should  not  have  been  included  in  the  inter- 
ference. Calm  V.  Schweinitz  v.  Dolley  v. 
Geisler,  C.  D.  1899,  86  O.  G.  1633. 

904.  Since  the  decision  in  Hammond  v.  Hart 
(C.  D.  1898,  ^2,  83  O.  G.  743)  it  has  been  the 
practice  of  the  office  to  dissolve  an  interfer- 
ence where  each  party  has  not  made  the  claim 
of  the  other,  if  no  testimony  has  been  taken 
and  the  parties  will  not  be  injured  by  the  dis- 
solution.    Id. 

905.  Both  parties  disclose  a  lubricator  of 
the  type  known  as  "balanced  hydrostatic  sight- 


feed  lubricators."  They  disclose  suitable  cyl- 
inder and  equalizing-pipe  connections.  In 
Wood's  claim  in  interference  these  connec- 
tions are  specified,  while  in  Essex's  they  are 
not.  Both  parties  disclose  a  valve  for  con- 
trolling the  by-passage  automatically,  and  it 
is  recited  as  an  element  in  the  respective  claims 
of  the  parties.  Wood's  claim  recites  that  this 
valve  is  automatically  regulated  "by  variations 
of  pressure  within  the  duct,"  such  a  state- 
ment not  being  in  Essex's  claim.  Held,  that 
under  the  practice  of  the  office  the  limitations 
found  in  one  claim  and  not  in  the  other  can- 
not be  construed  as  non-essential,  and  the  in- 
terference was  improperly  declared.  Essex 
V.  Woods,  C.  D.  1899,  89  O.  G.  3.53. 

906.  Held,  further,  that  had  the  examiner 
believed  that  Essex's  device  was  inoperative 
without  the  use  of  suitable  cylinder  and  equal- 
izing-pipe connections  and  without  the  valve 
being  automatically  operated  by  variations  of 
pressure  within  the  duct,  and  called  upon 
Essex  to  amend  his  claim  accordingly,  there 
would  have  been  no  necessity  for  placing  a 
construction  upon  Essex's  claim  by  reading 
into  it  certain  limitations.     Id. 

907.  Held,  further,  that  had  Essex  refused 
to  comply  with  the  examiner's  suggestion,  the 
examiner  would  have  been  justified  in  reject- 
ing Essex's  claim  as  being  for  an  inoperative 
device  and  as  unpatentable  sver  the  Woods  in- 
vention.    Id. 

908.  An  interference  is  not  sufficiently  clear 
and  definite  which  requires  that  certain  lim- 
itations in  the  claims  of  one  party  should  be 
held  to  be  immaterial  and  that  other  limita- 
tions should  be  read  into  the  claims  of  either 
one  or  the  other  party  to  the  proposed  inter- 
ference in  order  to  make  them  the  issue  of 
interference.  (Wolfenden  v.  Price  C  D 
1898,   87,  83  O.   G.   1801,  cited.)      Id.      '       " 

909.  Where  the  claims  constituting  the  issue 
are  so  vague  and  indefinite  that  it  is  impos- 
sible to  obtain  a  clear  idea  of  their  scope, 
confusion  will  result  in  taking  testimony,  and 
therefore  the  interference  should  be  dissolved 
on  the  ground  of  irregularity  in  the  declara- 
tion. Dinkel  v.  D'Olicr,  C.  D.  1904,  113  O  G 
2J07. 

910.  Where  the  claims  of  the  parties  differ 
in  phraseology  and  the  claims  of  one  party 
contain  expressions  not  found  in  the  claims  of 
the  other  party.  Held,  that  the  interference 
should  be  dissolved.  Reichert  v.  Brown  C. 
D.  1906,   124  O.  G.  2903. 


^' 


240 


INTERFERENCE.  XVII,  (i),  2. 


911.  Vagueness  and  indefiniteness  of  the 
issue  are  proper  questions  to  raise  under  al- 
legations of  informality  or  irregularity  in  the 
declaration  of  the  interference.  Field  v.  Cole- 
man, C.  D.  1907,  131  O.  G.  1686. 

912.  The  examiner  suggested  to  M.  two 
claims  which  were  the  same  as  two  of  K.'s 
claims,  except  that  the  term  "supporting  mem- 
ber" was  substituted  for  "attaching-lirackct," 
but  did  not  suggest  them  to  K.  After  M. 
made  the  claims  the  interference  was  declared 
with  these  claims  as  two  counts  of  the  issue. 
J/clH.  that  this  was  an  irregularity  in  the 
declaration  of  the  interference,  as  Rule  96 
clearly  contemplate  that  the  issue  shall  be  in 
terms  of  the  claims  actually  made  by  both  par- 
ties or  which  they  have  had  an  opportunity  to 
make.  McBride  v.  Kroder,  C.  D.  1908,  133 
O.  G.  1680. 

2.  Not  Dissolved. 

913.  When  under  the  present  practice  the  in- 
terference was  improperly  declared  by  reason 
of  the  fact  that  the  claims  of  the  parties  are 
not  of  the  same  scope,  but  it  appears  that  the 
party  with  the  specific  claim  can  make  and  in- 
tends to  make  the  broad  claim,  although  he 
has  not  actually  presented  such  claim  by 
amendment.  Held,  that  the  interference  should 
not  be  dissolved,  since  a  dissolution  would 
merely  result  in  a  redeclaration  on  the  same 
issue.  Morss  v.  Henkle,  C.  D.  1899,  86  O.  G. 
IS  3. 

914.  It  is  irregular  to  include  several  claims 
of  one  party  under  one  issue;  but  when  judg- 
ment has  been  rendered  on  the  record  and  no 
testimony  is  to  be  taken,  it  is  not  such  ir- 
regularity as  to  preclude  a  proper  decision  on 
priority,  and  is  therefore  not  a  good  ground 
for  dissolution.     Id. 

915.  Where  the  irregularity  is  alleged  to 
consist  in  the  fact  that  M.  has  stated  in  his 
applications  involved  in  the  interference  that 
they  are  divisions  of  a  prior  patent  granted 
to  him.  Held,  that  such  a  statement  does  not 
in  any  way  effect  the  disclosure  of  the  inven- 
tion in  cither  the  patent  or  the  applications. 
It  merely  calls  attention  to  an  alleged  fact 
(Bundy  v.  Rumbarger,  C.  D.  1900,  143,  92 
O.  G.  2002)  and  does  not  constitute  such  an 
"irregularity  in  declaring"  the  interference  "as 
will  preclude  a  proper  determination  of  the 
question  of  prioritj'."  Meyer  v.  Sarfert,  C. 
D.  1901,  96  O.  G.  1037. 


916.  Where  the  examiner  has  not  notified 
the  parties  that  the  claims  in  issue  are  patent- 
able. Held,  that  this  does  not  constitute  such 
irregularity  as  will  preclude  a  proper  decision 
of  the  question  of  priority  of  invention  and 
does  not  warrant  a  dissolution  of  the  interfer- 
ence. Luger  V.  Browning,  C.  D.  1902,  100  O. 
G.  231. 

917.  Held,  that  questions  as  to  the  patenta- 
bility of  the  claims  and  irregularity  in  the 
declaration  should  be  raised  by  motion  under 
Rule  122  and  that  they  will  not  be  considered 
upon  an  appeal  relating  to  priority  of  inven- 
tion.    Id. 

918.  A  petition  that  the  interference  be  re- 
manded to  the  primary  e-xamincr  with  direc- 
tions to  dissolve  it  on  the  ground  that  the 
issue  is  not  patentably  different  from  the  issue 
in  another  interference  between  the  same  par- 
ties denied,  since  even  if  the  contention  is 
well  founded  there  is  nothing  to  prevent  a 
proper  decision  on  priority.  Dorr  v.  Ames 
and  Rcarson,  C.  D.  1903,  106  O.  G.  263. 

919.  Where  it  is  contended  that  there  was 
irregularity  in  the  declaration  of  interference 
because  one  party  was  not  required  to  furnish 
a  supplemental  oath,  Held,  that  this  is  an  ex 
j'arte  matter  not  open  to  argument  in  the  in- 
terference. Auerbach  and  Gubing  v.  Wiswcll, 
C.   D.  1904,  108  O.  G.  289. 

920.  Where  on  a  motion  to  dissolve  it  is 
contended  that  the  issue  is  a  species  of  the  in- 
vention shown  by  H.,  H.,  and  H.  which  they 
did  not  claim  originally  and  that  they  should 
not  have  been  permitted  to  shift  from  one  spe- 
cies to  another.  Held,  that  this  is  a  mere  mat- 
ter of  procedure  alone  which  in  no  way  affects 
the  rights  of  B.  and  is  not  such  irregularity 
as  will  preclude  a  proper  decision  as  to  pri- 
ority of  invention.  Hoefer,  Hoefer  and  Hoe- 
fer  v.  Barnes.  C.  D.  1904,  108  O.  G.  .560. 

921.  Where  it  is  urged  that  the  interference 
was  irregularly  declared,  because  the  claims 
cover  two  species  of  the  invention.  Held,  that 
this  is  not  such  irregularity  as  will  preclude 
a  proper  decision  of  the  question  of  priority 
of  invention  and  that  it  furnishes  no  good 
ground  for  dissolution.  Atherton  and  Happ 
V.  Cheney,  C.  D.  1904,  111  O.  G.  1040. 

922.  Where  on  a  motion  to  dissolve  it  is 
.  contended  the  interference  is  irregularly  de- 
clared because  a  supplemental  oath  lacks  a 
notarial  seal.  Held,  that  this  is  an  ex  parte 
matter,  and  furthermore  is  not  such  irreg- 
ularity as  will  preclude  a  proper  determination 


INTERFERENCE,  XVII,  (i),  2. 


241 


of    the    question    of    priority.        Schubert    v. 
Munro,  C.  D.  1904,  113  O.  G.  283. 

923.  Where  motion  for  dissolution  is  based 
upon  the  contention  that  the  suggestion  of 
the  claim  in  interference  to  a  party  by  the 
examiner  was  improper,  because  said  party 
had  not  claimed  substantially  the  same  inven- 
tion expressed  in  said  claim,  Held,  that  the 
question  raised  involves  no  such  irregularity 
in  declaring  the  interference  as  might  pre- 
clude proper  determination  of  the  question  of 
priority  of  invention  and  that  no  ground  for 
dissolving  the  interference  is  presented  there- 
on. Meden  v.  Curtis,  C.  D.  1905,  117  O.  G. 
1795. 

924.  Where  party  requests  that  a  claim  of 
his  opponent  be  added  to  the  issue,  under 
Rule  109,  and  this  is  done.  Held,  that  the  party 
is  hardly  in  a  position  to  urge  that  the  ac- 
tion of  declaring  the  interference  as  to  this 
claim  was  irregular.  Wickers  and  Furlong  v. 
Weinwurm,  C.  D.  1905,  117  O.  G.  1747. 

925.  The  improper  suggestion  of  claims 
under  Rule  96  is  not  considered  such  an  ir- 
regularity in  the  declaration  of  the  interfer- 
ence as  will  preclude  a  proper  determination 
of  the  question  of  priority  and  is  not  there- 
fore, a  sufficient  warrant  for  dissolving  the 
same.  Templin  v.  Sergeant,  C.  D.  1905,  119 
O.  G.  961. 

926.  Failure  to  include  in  the  issue  certain 
claims  made  by  both  parties  does  not  consti- 
tute an  irregularity  where  such  claims  are  not 
patentahly  different  from  those  which  were 
included.  Gaily  v.  Burton,  C.  D.  1906,  130 
O.  G.  325. 

927.  The  omission  or  improper  use  of  hy- 
phens in  the  counts  of  an  issue  and  the  use 
of  the  word  "power"  instead  of  the  word 
primary  are  mere  clerical  errors,  which  may 
be  corrected  by  a  letter  of  the  primary  ex- 
aminer calling  attention  to  them,  and  they 
furnish  no  reason  for  dissolving  the  inter- 
ference on  the  ground  of  irregularity  in  the 
declaration.     Id. 

928.  Where  two  interferences  are  declared, 
one  between  an  application  of  S.  and  a  divi- 
sional application  of  P.  and  the  other  be- 
tween the  same  application  of  S.  and  the  pa- 
rent case  of  P.,  the  fact  that  the  issue  in- 
volving the  parent  case  could  as  well  have 
been  included  in  the  interference  involving  the 
divisional  application  does  not  constitute  such 
an  irregularity  as  will  prevent  a  proper  de- 
termination    of     the     question     of     priority. 

16 


Phillips  V.   Sensenich,  C.   D.   1906,   122  O.  G. 
1047. 

929.  Where  neither  of  the  applications  in 
interference  was  ready  for  allowance,  but  the 
decision  of  the  commissioner  on  appeal  affirm- 
ing the  rejection  of  certain  claims  of  one  of 
the  applications  had  become  final,  and  said 
application  was  not  open  for  prosecution  but 
merely  awaited  the  cancelation  of  the  re- 
jected claims.  Held,  not  such  an  irregularity 
as  to  preclude  a  proper  determination  of  the 
question  of  priority  or  to  warrant  dissolution 
of  the  interference,  until  one  of  the  applica- 
tions was  in  condition  for  allowance.  Locke 
V.  Crehbin.  C.  D.  1906,  124  O.  G.  317. 

930.  Held,  that  the  failure  of  the  examiner 
to  include  in  the  issue  claims  which  he  thinks 
do  not  patentahly  differ  therefrom  did  not 
constitute  an  irregularity.  (Gaily  v.  Burton, 
ante,  7,  120  O.  G.  325.)     Id. 

931.  A  motion  to  dissolve  the  interference 
on  the  ground  of  irregularity  in  declaration 
by  reason  of  uncertainty  in  the  meaning  of 
the  counts  of  the  issue  denied,  since  the  issue 
appears  to  be  clear  and  definite.  Goodwin 
V.  Smith,  C.  D.  1906,  123  O.  G.  998. 

932.  Where  both  parties  are  applicants  and 
under  the  head  of  informality  in  declaring  the 
interference  it  is  alleged  in  a  motion  to  dis- 
solve that  the  claims  do  not  apply  to  the 
structures  of  either  party.  Held,  that  this  is 
not  such  an  admission  as  to  justify  a  decision 
on  priority  adverse  to  the  moving  party.  (The 
case  of  Lipe  v.  Miller,  C.  D.  1904,  114,  109 
O.  G.  1608,  distinguished.)  Danquard  v.  Cour- 
villc.  C.  V).  1907,  131  O.  G.  2421. 

933.  The  failure  of  an  examiner  to  include 
in  the  interference  issue  claims  not  patentahly 
different  from  the  issue  furnishes  no  reason 
for  the  dissolution  thereof  on  the  ground  of 
informality  in  the  declaration.  Earll  v.  Love, 
C.  D.  1909,  140  O.  G.  1209. 

934.  Where  a  party  contends  that  a  claim 
in  issue  is  not  readable  upon  that  one  of  two 
of  his  applications  involved  in  which  it  is 
made,  but  upon  the  other.  Held,  that,  if  true, 
this  would  not  constitute  such  irregularity  as 
to  preclude  a  proper  determination  of  priority 
and  that  the  supervisory  authority  of  the  com- 
missioner will  not  be  exercised  to  have  the 
claim  transferred  from  one  application  to  the 
other.  Hewitt  and  Waterman  v.  Greenfield, 
C.  D.  1909,  149  O.  G.  1119. 

935.  It  is  well  settled  that  the  question  of 
whether  claims  inserted  by  amendment  should 


243 


INTERFERENCE,  XVII,  (j),  1,  2,  3. 


be  supported  by  a  supplemental  oath  is  an  ex 
parte  matter  not  open  for  argument  in  the 
interference  proceeding  and  that  in  the  ab- 
sence of  such  an  oath,  even  where  it  should 
have  been  furnished,  there  is  no  such  irregu- 
larity as  will  preclude  the  proper  determina- 
tion of  the  interference.    Rietzel  v.  Harmatta, 

C.  D.  inin,  161  O.  G.  1043. 

936.  Where  a  party  moves  to  dissolve  an 
interference  on  the  ground  that  he  should 
have  been  made  the  senior  instead  of  the 
junior  party.  Held,  that  this  alleged  irregular- 
ity relates  merely  to  the  burden  of  proof  and 
affords  no  ground  for  dissolving  the  interfer- 
ence. The  Seamless  Rubber  Co.  v.  The  Star 
Rubber  Co.,  C.  D.  1910,  152  O.  G.  957. 

(j)  Right  to  Make  Claims. 
1.  In  General. 

937.  When  two  applications  of  one  party 
are  included  under  one  issue,  the  allegation 
that  the  applicant  has  no  right  to  make  the 
claim  in  one  of  those  cases,  although  it  is  ad- 
mitted that  he  has  such  right  in  the  other 
case,  is  a  proper  ground  for  a  motion  to  dis- 
solve.     Sadtler    v.    Carmichael    v.    Smith,    C. 

D.  1S99,   86   O.   G.   149S. 

938.  Where  a  motion  to  dissolve  an  inter- 
ference as  to  some  of  the  counts  of  the  issue 
on  the  ground  that  one  of  the  three  parties 
has  no  right  to  make  the  claims  is  granted. 
Held,  that  the  interference  is  continued  as  to 
the  remaining  counts  without  the  necessity  of 
a  redeclaration  as  to  them.  Maxwell  v.  Bryon 
v.  Henry,  C.  D.  1902,  98  O.  G.  1968. 

939.  The  contention  that  one  of  the  parties 
has  no  right  to  make  the  claim  will  not  be  con- 
sidered upon  an  appeal  upon  the  question  of 
priority  of  invention,  but  should  be  presented 
by  a  motion  to  dissolve.  Woods  v.  Waddell, 
106   O.   G.   2017. 

940.  Facts  which  will  support  the  ground 
of  no  right  to  make  claims  relate  to  extent 
of  disclosure,  estoppel,  operativeness,  and  the 
like  and  if  established,  lead  to  rejection  of  the 
claims  in  the  application  of  at  least  one  of  the 
parties.  Booth,  Booth  and  Flynt  v.  Hanan  and 
Gates  V.  Marshall,  C.  D.  1906,  123  O.  G.  319. 

941.  Where  the  real  contention  of  the  ap- 
pellant is  that  he  has  no  right  to  make  the 
claims  in  issue,  Held,  there  is  no  reason  why 
the  office,  having  once  decided  that  a  party  is 
entitled  to  make  certain  claims,  should  recon- 
sider the  question  on  the  party's  own  motion. 
Goodwin  V.   Smith,  C.  D.  1906,  123  O.  G.  998. 


942.  A  motion  to  dissolve  alleging  that 
some  of  the  counts  do  not  properly  read  on 
the  patented  structure  of  the  moving  party 
relates  to  the  right  of  the  patentee  to  make 
the  claims  and  is  not  a  question  of  informal- 
ity in  the  declaration.  Earll  v.  Love,  C.  D. 
1909,  140  O.  G.  1209. 

943.  Where  an  interference  is  dissolved  on 
the  ground  that  one  of  the  parties  thereto 
has  no  right  to  make  claims  corresponding  to 
the  counts  of  the  issue  and  no  appeal  is  taken 
from  such  decision,  the  question  of  his  right 
to  make  such  claims  is  res  adjudicata.  *Gold 
v.  Gold,  C.  D.  I9ie,  150  O.  G.  570. 

944.  Where  the  commissioner  of  patents  af- 
fiims  a  decision  dissolving  an  interference  on 
the  ground  that  one  of  the  parties  thereto 
has  no  right  to  make  the  claims,  Held,  that 
since  the  question  of  the  right  to  make  the 
claims  is  ancillary  to  that  of  priority  the  com- 
missioner had  jurisdiction  to  enter  an  order 
that  such  party  is  not  the  first  inventor.  *Cos- 
pcr  V.  Gold  &  Gold,  C.  D.  1911,  168  O.  G.  787. 

945.  "We  attach  no  importance  to  the  fail- 
ure to  give  a  representation  of  the  car  in 
connection  with  the  foregoing  drawing.  It 
is  not  necessary  to  add  a  drawing  of  that 
which  was  well  known  to  every  one  whether 
skilled  in  the  art  or  not.  This  reasonable  doc- 
trine, well  established  in  the  patent  office,  has 
been  repeatedly  sanctioned  by  this  court.    *Id. 

2.  Dissolved. 

946.  Where  the  claim  of  the  issue  includes 
"compensating  devices"  as  a  separate  and  in- 
dependent feature  from  the  other  elements  of 
the  combination  and  one  party  discloses  no 
such  independent  devices.  Held,  that  he  has 
no  right  to  make  the  claim.  Bowditch  v. 
Todd,  C.  D.  1902,  98  O.  G.  792. 

3.  Not   Dissolved. 

947.  Where  a  motion  to  dissolve  an  inter- 
ference is  made  upon  the  ground  that  the 
opposing  party's  claim  is  anticipated  in  a  pat- 
ent cited,  but  the  preliminary  statement  of 
that  party  alleges  invention  before  the  date 
of  the  patent.  Held,  that  the  interference  will 
not  be  dissolved.  Forsyth  v.  Richards,  C.  D. 
1905,  115  O.  G.   1327. 

948.  Where  D.  discloses  the  mechanism  cov- 
ered by  the  issue  and  that  mechanism  is  me- 
chanically operative,  his  right  to  make  the 
claim  of  the  issue  is  not  to  be  denied  upon  any 


INTERFERENCE,  XVII,  (k),  1. 


243 


conclusion  as  to  the  comparative  superiority 
as  between  his  device  and  those  of  the  other 
parties.     Jenncr    v.    Dickinson    v.    Thibedeau, 

C.  D.  1905,  116  O.  G.  1181. 

949.  There  is  no  apparent  reason  why  the 
office  should  consider  the  question  of  a  party's 
right  to  make  claims  on  his  request  after  hav- 
ing once  decided  that  he  had  the  right  to 
make  them.  Miller  v.  Perham,  C.  D.  1906,  121 
O.  G.  2667. 

950.  Where  the  issue  specifies  "means  for 
narrowing  and  widening"  a  knit  tube  and 
certain  "pickers"  necessary  in  the  perform- 
ance of  this  operation  are  not  shown  or  re- 
ferred to  in  the  application,  but  reference  is 
made  to  ordinary  stocking-knitters  in  which 
it  is  common  to  use  "pickers,"  Held,  that  the 
disclosure  is  sufficient  to  inform  those  skilled 
in  the  art  that  the  usual  "pickers"  are  to  be 
used  and  that  the  disclosure  is  sufficient  to 
support  the  issue.    Kilbourne  v.  Herner,  C.  D. 

1906.  124  O.  G.  1841. 

951.  The  right  of  the  appellant  to  make 
the  claim  of  the  issue  will  not  be  considered, 
for  reasons  stated  in  Miller  v.  Perham  (ante, 
157,  121  O.  G.  2667.)     Kinney  v.  Goodhue,  C. 

D.  1906,  123  O.  G.  1663. 

952.  A  party  cannot  be  deprived  of  the  right 
to  make  a  claim  by  reason  of  the  fact  that  his 
structure  performs  some  function  in  addition 
to  what  is  called  for  by  the  claim.  Miel  v. 
Young.  C.  D.  1907.  126  O.  G.  2591. 

953.  The  contention  that  a  party  has  no 
right  to  make  a  claim  for  a  process  of  pro- 
ducing a  printing  surface  because  he  de- 
scribes a  step  of  heating  the  plate  which  is 
not  included  in  the  issue  cannot  be  admitted 
as  well  founded  where  his  specification  makes 
it  clear  that  the  step  is  not  necessary  in  all 
cases.    *Wickers  and  Furlong  v.  McKee,  C.  D. 

1907,  129  O.  G.  869. 

954.  The  question  whether  or  not  a  sup- 
plemental oath  should  be  required  has  been 
uniformly  held  by  the  office  to  be  an  ex  farte 
matter  upon  which  the  proper  determination 
of  priority  is  not  dependent,  and  the  absence 
of  such  an  oath  furnishes  no  ground  for  hold- 
ing that  the  issue  is  not  patentable  to  the 
party  in  whose  case  the  same  is  required. 
Phillips  v.  Sensenich,  C.  D.  1908,  132  O.  G. 
677. 

955.  The  original  specification  of  N.'s  ap- 
plication relating  to  combined  type-writing 
and  adding-machines  did  not  describe  the 
adding-machines,  but  stated  that  the  invention 


was  illustrated  "in  connection  with  an  adding- 
machine  of  the  class  known  as  'registering  ac- 
countants,' "  and  only  the  case  and  a  few 
minor  elements  thereof  were  shown  in  the 
drawings.  Held,  that  in  view  of  the  evidence 
showing  that  such  term  referred  to  a  well- 
known  construction  and  that  such  construction 
was  the  only  one  on  the  market  which  had  the 
distinctive  appearance  illustrated  in  the  draw- 
ing, N.  had  the  right  to  make  claims  to  a 
combination  including  specific  elements  of  such 
adding-machine.  *Hopkins  v.  Newman,  C.  D. 
1908,  134  O.  G.  2028. 

(k)  Non  Interference  in  Fact. 
1.  In  General. 

956.  Where  the  commissioner  dissolves  an 
interference  as  to  a  certain  count  on  the 
ground  of  no  interference  in  fact,  because  one 
of  the  parties  does  not  show  a  feature,  or 
the  equivalent  thereof,  shown  and  included  in 
the  claim  of  the  other  party,  the  commissioner 
does  not  decide  necessarily  that  either  party 
is  entitled  to  a  claim  in  the  language  of  the 
particular  count  under  consideration.  In 
such  case  the  commissioner  decides  merely 
that  one  of  the  parties  is  attempting  to  cover 
a  certain  structure,  but  he  does  not  decide 
that  the  language  which  the  party  employs 
clearly  defines  that  structure.  Ex  parte  Scott, 
C.   D.   1903,   102   O.   G.  820. 

957.  It  is  clear  that  two  claims  in  the  same 
language  should  not  be  allowed,  and  when 
such  claims  are  drawn  on  substantially  dif- 
ferent structures  it  follows  that  one  of  them 
at  least  does  not  define  the  invention  on  which 
it  is  based  in  the  clear,  concise,  and  exact 
terms  required  by  law.  A  claim  might  be 
readable  on  both  of  such  structures,  but  in 
connection  with  one  of  them  it  must  neces- 
sarily be  indefinite  or  ambiguous.     Id. 

958.  Where  an  interference  has  been  dis- 
solved by  the  commissioner  on  the  ground  of 
no  interference  in  fact  and  the  claims  of  the 
parties  are  in  the  same  language,  the  primary 
examiner  should  determine  in  which  case  the 
claims  define  the  invention  disclosed  in  clear 
and  exact  terms,  and  he  should  object  to  the 
claims  in  the  other  case  as  ambiguous  or  in- 
definite.   Id. 

959.  Where  the  examiner  dissolved  the  in- 
terference because  of  non-interference  in  fact 
and  because  one  party  had  no  right  to  make 
claim  and  was  reversed  on  appeal  as  to  latter 


244 


INTERFERENCE,  XVII,  (k),  1. 


ground,  but  no  appeal  as  to  former  ground 
was  taken,  Held,  that  the  interference  must 
be  continued,  not  because  of  any  technical 
rights  of  the  parties,  but  because  the  office 
must  refuse  to  issue  two  patents  in  the  same 
art  with  identical  claims.  Elspass  v.  Taj'Ior, 
C.  D.  1905,  117  O.  G.  1748. 

960.  Where  contention  was  made  that  de- 
vices of  the  parties  were  essentially  different, 
but  it  appeared  that  the  terms  of  the  issue 
referred  in  the  respective  case  to  correspond- 
ing parts  having  corresponding  operation  and 
functions.  Held,  that  there  was  no  ground  for 
contention  that  the  counts  meant  different 
things  in  the  applications  of  the  different  par- 
ties. Walker  v.  Brunhoff,  C.  D.  190.3,  118  O. 
G.  2:.:i7. 

961.  Where  the  counts  in  issue  are  claims 
made  by  both  parties,  there  is  interference  in 
fact,  unless  the  terms  of  the  counts  have  dif- 
ferent meanings  when  read  in  the  applications 
of  the  different  parties.  Townsend  v.  Cope- 
land  V.  Robinson,  C.  D.  190.S,  119  O.  G.  2523. 

962.  The  terms  of  claims  cannot  properly 
be  held  to  have  different  meanings  in  the  ap- 
plications of  different  parties  merely  because 
the  elements  to  which  they  refer  are  espe- 
cially different  in  the  devices  of  the  different 
parties.    Id. 

963.  In  determining  the  question  of  inter- 
ference in  fact  the  counts  of  the  issue  will 
not  be  construed  in  view  of  the  prior  art  to 
have  more  limited  meanings  than  are  neces- 
sitated by  the  limitations  which  they  express- 
ly include.  In  determining  the  meaning  of 
counts  the  fair  natural  significance  of  the  lan- 
guage used  will  be  adopted.  If  the  state  of 
the  art  should  require  a  different  meaning, 
it  must  be  put  into  the  counts  by  amendment. 
Id. 

964.  Where  arguments  advanced  amount  to 
denial  that  the  issue  is  patentable  when  read 
with  only  those  limitations  which  arc  demand- 
ed by  the  language  used,  Held,  that  such 
arguments  will  not  be  considered  in  connec- 
tion with  the  question  of  interference  in  fact. 
Id. 

965.  Dissolution  for  non-interference  in  fact 
must  be  based  only  on  those  facts  and  rea- 
sons which  show  that  the  counts  of  the  issue 
have  such  different  meanings  that  they  might 
properly  be  allowed  to  both  parties.     Id. 

966.  Non-interference  in  fact  was  placed  in 
the  rules  as  a  ground  for  dissolution  of  inter- 
ference as  a  time  when  parties  were  put  into 


interference  proceedings  who  had  not  made 
the  same  claims  and  is  a  thing  of  compara- 
tively rare  occurrence  in  interferences  de- 
clared under  the  present  practicc^i.  c,  where 
both  parties  make  claims  in  identical  lan- 
guage. Blackmore  v.  Hall,  C.  D.  1905,  119 
O.  G.  252.3. 

967.  Where,  as  at  present,  parties  have  made 
the  same  claims,  there  can  be  no  question  of 
the  existence  of  interference  in  fact  separate 
from  that  of  the  right  of  a  party  to  make 
claims,  except  in  those  rare  cases  where  the 
same  terms,  though  properly  used  in  the  ap- 
plication of  each  party,  have  distinctly  differ- 
ent meanings  in  the  respective  cases.     Id. 

968.  Observation  of  the  distinction  between 
interference  in  fact  and  right  to  claim  is  im- 
portant, for  the  reason  that  dissolution  for 
non-interference  in  fact  affords  no  ground 
for  refusing  the  claims  in  issue  to  either 
party,  and  dissolution  should  not,  therefore, 
be  based  on  this  ground,  except  where  it 
would  be  proper,  so  far  as  the  matters  con- 
sidered in  connection  therewith  are  concerned, 
to  issue  patents  to  both  parties  containing  the 
claims  in  question.     Id. 

969.  The  term  "interference  in  fact"  as 
used  in  the  patent  office  must  be  restricted  in 
meaning  to  exclude  questions  of  right  to  make 
claims  in  order  to  avoid  confusion  through  the 
different  courses  of  appeal  permitted  in  the 
two  cases.  The  question  of  interference  in 
fact  does  not  properly  arise  until  it  has  been 
found  or  assumed  that  the  parties  have  the 
right  to  make  the  claims  under  consideration, 
and  when  raised  the  question  is  one  merely  of 
identity  or  diversity  in  the  meaning  of  those 
claims  as  they  rightfully  appear  in  the  appli- 
cations of  the  respective  parties.  Warner  v. 
Mead,  C.  D.  1906,  122  O.  G.  2061. 

970.  The  decision  of  the  primary  examiner. 
upon  the  question  of  interference  in  fact  re- 
lates to  the  specific  subjects  covered  by  the 
claims  instead  of  to  the  devices  disclosed  by 
the  parties  and  has  no  force  beyond  the 
claims  before  him  when  the  decision  is  ren- 
dered. Warner  v.  Mead,  C.  D.  1906,  122  O. 
G.  2061. 

971.  Where  it  is  urged  that  if  the  claims 
are  literally  construed  they  are  not  patentable 
in  view  of  a  certain  specified  patent,  and  for 
this  reason  they  must  be  limited  by  construc- 
tion to  the  specific  device  shown  by  the  re- 
spective parties,  and  that  as  so  limited  there 
is  no  interference  in  fact.  Held,  that  this  ar- 


INTERFERENCE,  XVII,  (k),  2,  (1),  1. 


245 


gument  ret|uires  a  comparison  of  the  counts 
with  the  prior  art  to  determine  whether  they 
are  patentable,  that  the  question  of  patenta- 
hihty  cannot  be  thus  raised  on  a  motion  to 
dissolve  alleging  non-interference  in  fact,  but 
that  the  patentability  of  the  counts  must  be 
taken  as  estal)lished,  and  that  the  only  ques- 
tion open  for  consideration  is  the  identity  of 
the  subject-matter  claimed.  Klepetko  v. 
Becker,  C.  D.  1906,  129  O.  G.  908. 

972.  Where  a  motion  for  dissolution  con- 
tains no  positive  allegation  that  certain  terms 
appearing  in  the  issue  have  such  distinct  mean- 
ings when  read  as  claims  in  the  different  ap- 
plications that  different  inventions  are  repre- 
sented thereby,  Held,  that  the  motion  contains 
nothing  which  may  be  properly  urged  as  a 
basis  for  dissolution  on  the  ground  that  there 
is  no  interference  in  fact.  Booth,  Booth,  and 
Flynt  V.  Hanan  and  Gates  v.  Marshall,  C.  D. 
1906,   123  O.  G.   319. 

973.  Facts  which  support  the  ground  of 
non-interference  in  fact  relate  to  the  meanings 
of  words  and,  if  established,  should  lead  to 
the  rejection  of  the  claim  in  all  the  applica- 
tions, as  failing  to  define  the  invention  of  any 
party  from  the  different  inventions  of  the 
other  parties.     Id. 

974.  Where  a  motion  is  made  to  dissolve 
the  interference  on  the  ground  of  non-inter- 
ference in  fact.  Held,  that  the  only  question 
to  be  considered  is  whether  the  language  of 
the  issue  supports  different  meanings  with 
equal  propriety  in  the  applications  of  the  re- 
spective  parties.      Kinney   v.   Goodhue,    C.    D. 

1906,  123  O.   G.  1663. 

975.  If  there  is  no  interference  in  fact,  it 
is  either  because  one  of  the  parties  has  no 
right  to  make  the  claims  or  because  the  claims 
have  different  meanings  in  the  applications  of 
the  different  parties.  The  parties  will  not  be 
heard  to  deny  their  own  right  to  make  the 
claims.  (Miller  v.  Perham,  C.  D.  1906,  1.17, 
121  O.  G.  2067.)     Daggett  v.  Kaufmann,  C.  D. 

1907,  127  O.  G.  3041. 

976.  The  provision  in  Rule  122  for  dissolu- 
tion upon  the  ground  of  difference  in  the 
meaning  of  claims  was  placed  there  to  cover 
a  clean-cut  class  of  cases  which  theoretical 
considerations  show  may  arise,  but  which,  in 
fact,  are  of  very  rare  occurrence.  To  justify 
transmission  of  a  motion  brought  upon  this 
ground,  facts  must  be  alleged  indicating  some- 
thing more  than  a  possible  lack  of  right  upon 
the  part  of  one  or  the  other  of  the  parties  to 


use  the  language  of  the  claim  in  issue.     Cush- 
man  v.  Edwards,  C.  D.  1907,  128  O.  G.  456. 

977.  Where  it  is  found  upon  motion  for  dis- 
solution that  the  claims  in  issue  have  differ- 
ent meanings  in  the  cases  of  the  respective 
parties,  the  examiner  should  require  one  or 
both  of  the  applicants  to  so  modify  the  claims 
as  to  avoid  a  conflict  in  the  terms  employed 
to  define  the  respective  inventions.  Id.  Eiler- 
man  et  al.  v.  McElroy,  C.  D.  1907,  130  O.  G. 
2721. 

2.  Dissolved. 

978.  Where  Finzelberg  and  Schmidt's  appli- 
cation did  not  clearly  describe  the  process 
which  is  the  subject-matter  involved  in  the 
interference,  and  no  claim  was  made  to  it, 
and  the  application  did  not  contain  an  allowed 
or  allowable  claim  interfering,  within  the 
meaning  of  the  law,  with  Dolley's  claim,  and 
their  single  claim  was  under  rejection,  Held, 
that  the  interference  should  be  dissolved  be- 
cause such  irregularities  preclude  proper  de- 
termination of  the  question  of  priority.  (Ham- 
mond V.  Hart,  ante,  52,  83  O.  G.  743,  cited.) 
Calm  V.  Dolley  v.  Finzelberg  and  Schmidt,  C. 
D.  1898,  84  O.  G.  1869. 

979.  When  the  claim  of  a  party  covers  a 
method  which  includes  a  step  not  claimed 
or  disclosed  by  the  other  parties,  there  is  no 
interference  in  fact  whether  or  not  he  has 
the  right  to  claim  that  method  himself.  Sadt- 
ler  V.  Carmichael  v.  Smith,  C.  D.  1S99,  8G  O. 
G.   1498. 

(1)  .Woii-Patciilabilily  of  Issue. 
1.  In  General. 

980.  A  motion  to  dissolve  an  interference 
on  the  ground  of  non-patentability  is  in  the 
nature  of  a  suggestion  to  the  office  of  certain 
facts  which  are  believed  to  negative  patent- 
ability or  to  show  that  one  of  the  parties  is 
not  entitled  to  make  the  claim.  It  is  not  a 
contest  in  which  testimony  can  be  received  or 
anything  presented  for  consideration  which  is 
not  actually  or  presumably  within  the  knowl- 
edge of  the  examiner  in  the  ex  parte  treatment 
of  the  applications  of  the  respective  parties 
prior  to  the  declaration  of  the  interference. 
Painter  v.  Hall,  C.  D.  1898,  83  O.  G.  180.3. 

981.  The  motion  is  brought  not  on  the 
ground  that  the  interest  of  the  party  bringing 
it  would  be  adversely  affected  by  the  issuance 


246 


INTERFERENCE,  XVII,  (I).  2. 


of  a  patent  for  the  subject-matter  to  his  oppo- 
nent, but  for  the  reason  that  it  appears  to  the 
moving  party  that  the  office  was  in  error  in 
finding  the  claim  patentable.     Id. 

982.  The  fact  that  the  interest  of  the  mov- 
ing party  may  be  adversely  affected  by  the  is- 
suance of  the  patent  for  the  subject-matter  to 
his  opponent  does  not  in  itself  entitle  him  or 
any  other  person  to  be  heard,  nor  is  it  a  fact 
to  be  considered  in  the  determination  of  the 
question  by  the  examiner.  The  question  is 
the  same  question  that  was  considered  before 
the  declaration  of  the  interference — a  ques- 
tion of  patentability.     Id. 

983.  If  the  examiner,  upon  hearing  the  mo- 
tion to  dissolve,  adheres  to  his  decision  that 
the  claims  are  patentable  and  patentable  to 
the  respective  parties,  the  contest  as  to  these 
questions  is  concluded  in  so  far  as  it  is  pre- 
liminary to  the  question  of  priority.    Id. 

984.  The  commissioner  is  clothed  with  pow- 
er to  dissolve  an  interference  on  the  ground 
that  the  issue  is  not  patentable  without  de- 
ciding the  question  of  priority.  This  power, 
however,  should  be  exercised  with  great  care, 
and  the  interference  should  not  be  dissolved 
except  in  a  clear  case.  (Bender  v.  Hoffmann, 
C.  D.  1898,  2G2,  85  O.  G.  1737,  and  Anderson 
and  Dyer  v.  Lowry,  C.  D.  1899,  230,  89  O.  G. 
1861,  cited.)  Walsh  v.  Hallbauer,  C.  D.  1901, 
94  O.  G.  223. 

985.  Where  objection  to  the  motion  is  made 
on  the  ground  that  non-patentability  of  the 
issues  is  alleged,  not  generally,  but  to  one  of 
the  parties.  Held,  that  the  objection  is  not  a 
valid  one,  as  it  is  conceivaljle  that  the  claims 
might  have  such  different  meanings  in  the 
cases  of  the  respective  parties  as  to  be  patent- 
able in  one  case  and  not  in  the  other.  Pym 
V.  Hadaway,  C.  D.  1906,  123  O.  G.  1238. 

986.  The  consideration  of  a  motion  to  dis- 
solve alleging  non-patentability  of  the  issue 
should  not  be  postponed  until  after  the  de- 
termination of  a  motion  to  shift  the  burden 
of  proof,  as  such  practice  would  result  in 
piecemeal  prosecution  of  the  motion  to  dis- 
solve. Field  v.  Colman,  C.  D.  1907,  131  O.  G. 
1686. 

2.  Dissolved. 

987.  The  question  as  to  whether  either  or 
both  parties  are  entitled  to  claims  as  broad 
as  the  issue  would  ordinarily  be  left  to  the 
examiner,  but   where   the  conclusions  on   the 


question  of  interference  in  fact  regularly  ap- 
pealed necessarily  involve  the  question  of  the 
right  of  either  applicant  to  make  the  claims. 
Held,  that  the  question  will  be  considered. 
V'alipuet  v.  Johnson,  C.  D.  1900,  92  O.  G.  179.">. 

988.  Where  the  issue  is  in  effect  broadly 
for  a  loose  gasket  and  a  patented  structure, 
when  operated  as  the  patentee  clearly  intend- 
ed that  it  should  be,  produces  a  loose  gasket, 
Held,  that  the  issue  is  not  patentable  and  the 
case  remanded  to  the  examiner,  with  instruc- 
tions to  reject  the  claims  of  the  parties  in- 
volved. (Bender  v.  Hoffman,  C.  D.  1898,  262, 
85  O.  G.  1737.)     Id. 

989.  Where  the  examiners-in-chief  had  con- 
strued counts  of  the  issue  so  that  they  dis- 
tinguished from  a  reference,  but  so  that  they 
failed  to  include  appellant's  proofs,  and  ap- 
pellant accepts  the  construction  so  far  as  nec- 
essary to  distinguish  from  the  reference,  but 
opposes  it  so  far  as  it  excludes  his  proofs, 
Held,  that  the  counts  in  question  read  upon 
the  reference  as  well  as  they  did  upon  any 
of  the  structures  involved  in  the  interference 
and  that  the  interference  should  be  dissolved 
as  to  these  counts.  Briggs  v.  Lillie  v.  Cook 
V.  Jones  and  Taylor,  C.  D.  1905,  116  O.  G.  871. 

990.  Where  it  was  contended  that  counts  of 
the  issue  were  not  met  by  a  patent,  because 
operating  parts  of  the  patented  device  must 
be  considered  in  abnormal  position  in  order 
to  meet  the  terms  of  the  issue,  but  it  appears 
that  the  position  of  the  parts  referred  to  as 
abnormal  was  one  which  they  were  intended 
to  occupy  in  the  regular  operation  of  the  ma- 
chine, and  that  whether  considered  in  this 
or  in  other  positions  the  patented  machine  dis- 
closed all  of  the  elements  specified  by  the 
counts  in  question,  and  these  elements  were 
capable  of  performing  and  were  intended  to 
perform  every  operation  necessarily  involved 
by  the  counts  in  question,  Held,  that  the 
counts  were  anticipated  by  the  reference.     Id. 

991.  Where  various  contentions  had  been 
made  as  to  the  meaning  of  counts  of  the  issue 
and  these  counts  had  been  maintained  over 
prior  art  only  through  construction  and  inter- 
pretation, by  which  they  were  assumed  to  be 
limited  to  structure  which  their  terms  did 
not,  in  fact,  define.  Held,  that  if  the  counts 
were  capable  of  supporting  the  various  mean- 
ings which  had  been  suggested  for  them  it 
would  follow  that  they  were  so  vague  and  in- 
definite as  to  prevent  proper  determination 
of  the  question  of  priority  of  invention.    Id. 


INTERFERENCE,  XVII,  (m),  (n). 


247 


(m)  Afl'licant  v.  Patentee. 

992.  Where  in  an  interference  between  an 
applicant  and  a  patentee  it  appears  that  the 
claims  are  not  patentable  to  the  applicant, 
Held,  that  the  question  of  priority  of  inven- 
tion should  not  be  decided ;  but  the  interfer- 
ence should  be  sent  to  the  primary  examiner 
to  consider  the  question  of  dissolution.  Hall 
V.  Weber,  C.  D.  1904,  109  O.  G.  1607. 

993.  Where  a  patentee  in  interference  with 
an  applicant  moves  to  dissolve  upon  the 
ground  that  the  issue  is  not  patentable,  this 
office  will  not  refuse  to  entertain  the  motion 
on  the  ground  that  the  decision  may  cast  a 
cloud  upon  the  patent.  (Bellows  v.  King,  C. 
D.  1903,  328,  206  O.  G.  997;  and  Lipe  v.  Miller, 
C.  D.  1904,  114,  109  O.  G.  1608,  distinguished.) 
Baltzley  v.  Seeberger,  C.  D.  1903,  113  O.  G. 
1324. 

994.  The  office  does  not  refuse  to  entertain 
motions  or  decide  questions  upon  the  mere 
ground  that  the  decision  may  cast  a  cloud 
upon  a  patent  already  issued,  but  does  refuse 
where  that  is  the  only  purpose  and  effect  of 
the  motion.    Id. 

995.  Where  the  opponent  of  the  party  mov- 
ing to  dissolve  for  non-patentability  of  the 
issue  is  a  patentee.  Held,  that  the  interference 
should  be  dissolved  without  consideration  of 
patentability  and  that  the  case  is  distinguished 
from  one  w'here  both  parties  are  applicants, 
in  which  case  the  moving  party  is  heard  for 
the  assistance  of  the  office  in  deciding  a  ques- 
tion kept  actually  before  it  by  the  opposing 
applicant  insisting  upon  his  right  to  a  patent. 
Griffith  v.  Dodson,  C.  D.  1905,  116  O.  G.  1737. 

996.  Where  applicant  claims  that  he  has  the 
right  under  the  statute  and  rules  to  have  con- 
sidered the  patentability  of  the  issue,  Held, 
that  the  statute  does  not  specifically  provide 
for  the  consideration  of  motions,  and  the 
rule  limits  the  right  to  such  consideration  to 
those  cases  where  the  opponent  of  the  moving 
party  is  an  applicant.    Id. 

997.  Where  the  opponent  of  a  motion  to 
dissolve  for  non-patentability  is  the  holder  of 
a  patent  inadvertently  issued  during  the  pen- 
dency of  the  moving  party's  application.  Held, 
that  the  case  is  not  distinguished  from  one 
where  the  opponent's  patent  was  regularly  is- 
sued and  that  the  interference  should  be  dis- 
solved without  consideration  of  patentability. 
Id. 

998.  Where  an  applicant  is  the  prior  inven- 
tor of  matter  for  which  a  patent  has  been  in- 


advertently issued  to  another  during  the  pen- 
dency of  his  application,  Held,  that  he  may  es- 
tablish his  rights  against  such  patentee  by 
proving  his  priority  in  an  interference  de- 
clared for  the  purpose  of  giving  him  that  op- 
portunity and  that  if  he  is  not  the  prior  in- 
ventor he  is  not  affected  by  the  inadvertent 
issue  of  the  patent,  except  as  one  of  the  gen- 
eral public.     Id. 

999.  Where  a  motion  for  dissolution  is 
based  on  the  grounds  that  the  issue  is  not 
patentable  to  one  of  the  parties  because  it  has 
already  been  patented  to  him,  and  that  the 
issue  is  not  patentable  over  the  prior  art,  and 
it  is  contended  that  the  motion  should  not  be 
transmitted  because  a  decision  might  cast  a 
cloud  on  the  party's  prior  patent.  Held,  that 
the  reason  is  not  sufficient,  and  the  motion 
should   be   transmitted.     Griffith   v.    Dodgson, 

C.  D.  1906,  122  O.  G.  2064. 

1000.  Where  applicant  moves  for  dissolu- 
tion upon  ground  of  non-patentability  and  his 
opponent  is  involved  upon  a  regularly-issued 
patent  and  the  motion  is  brought  after  the 
expiration  of  the  time  for  taking  testimony 
and  no  testimony  has  been  taken,  Held,  that 
the  practice  announced  in  Lipe  v.  Miller   (C. 

D.  1904,  114,  109  O.  G.  1608)  should  not  be 
followed  and  that  the  case  should  proceed  to 
judgment.  Smith  v.  Slocum,  C.  D.  1906,  123 
O.  G.  1990. 

(n)   Claims  Identical  in   Two  Applications. 

1001.  Where  both  parties  to  an  interference 
have  the  same  claims  in  their  applications, 
Held,  that  the  interference  should  not  be 
permanently  dissolved  except  upon  some 
ground  which  will  form  a  basis  for  rejection 
or  for  requiring  modification  of  the  claims 
in  the  application  of  one  of  the  parties.  Corey 
V.  Eiseman  and  Misar,  C.  D.  1906,  122  O.  G. 
2063. 

1002.  Where  parties  have  made  the  same 
claims,  the  interference  should  not  be  dis- 
solved unless  it  is  shown  either  that  one  of 
the  parties  has  no  right  to  make  the  claims 
or  that  the  language  of  the  claims  as  properly 
used  in  the  respective  applications  has  dis- 
tinctly different  meanings  therein.  Booth, 
Booth  and  Flynt  v.  Hanan  and  Gates  v.  Mar- 
shall. C.  D.  1906,  123  O.  G.  319. 

1003.  The  only  contentions  and  arguments 
which  are  in  order  in  support  of  motions  to 
dissolve  interferences  for  non-interference  in 
fact  where  the  parties  have  made  the  same 


348 


INTERFERENCE,  XVII,  (o),  (p). 


claims  are  those  tending  to  show  that  the 
claims  have  different  meanings  in  the  cases 
of  the  respective  parties,  notwithstanding  a 
perfect  right  upon  the  part  of  each  party  to 
make  the  claims.  Goodwin  v.  Smith,  C.  D. 
1906,  12:5  O.  G.  998. 

(o)  Ex  parte  Affidavits  and  Exhibits. 

1004.  The  question  of  public  use  cannot  prop- 
erly be  considered  on  a  motion  to  dissolve, 
and  in  no  event  can  mere  ex  parte  affidavits 
warrant  the  rejection  of  a  claim.  Davis  v. 
Swift,  C.  D.  1901,  95  O.  G.  2409. 

1005.  Affidavits  which  consist  merely  of 
opinions  of  various  parties  as  to  the  ques- 
tion of  interference  in  fact  between  the  claims 
involved  in  the  interference  are  incompetent 
and  should  not  be  received.  Summers  v. 
Hart,  C.   D.  1902,  98   O.  G.   2585. 

1006.  Where  an  interference  is  transmitted 
to  the  examiner  to  determine  the  right  of  a 
party  to  make  the  claim,  Held,  that  affidavits 
and  an  exhibit  tending  to  show  that  he  was  in 
possession  of  the  invention  before  he  filed  his 
application  are  incompetent  and  should  not 
be  received  and  considered.  Dow  v.  Con- 
verse, C.  D.  1903,  106  O.  G.  2291. 

1007.  Affidavits  tending  to  assist  the  primary 
examiner  in  determining  the  question  trans- 
mitted to  him  may  be  received  in  an  interfer- 
ence; but  the  office  will  not  accept  any  and  all 
affidavits  that  the  parties  choose  to  present. 
(Greenawalt  v.  Mark,  construed.)     Id. 

1008.  Where  the  question  is  whether  the  ap- 
plication discloses  the  invention,  the  only  af- 
fidavits acceptable  are  those  throwing  light 
upon  the  question  what  the  application  would 
mean  to  those  skilled  in  the  art.     Id. 

1009.  Consideration  of  affidavits  on  motion 
to  dissolve  an  interference  is  not  a  right  which 
parties  are  entitled  to  demand.  Browne  v. 
Stroud,  C.  D.  1906,  122  O.  G.  2688. 

1010.  Ex  parte  affidavits  are  not  equivalent 
to  testimony,  and  the  office  is  not  bound  to 
give  effect  thereto  in  determining  patentability. 
Browne  v.  Stroud,  C.  D.  1906,  122  O.  G.  2688. 

1011.  All  proper  rules  for  the  exclusion  of 
voluminous  and  multitudinous  affidavits  should 
be  applied  strictly.     Id. 

1012.  Where  affidavits  are  filed  by  any  of 
the  parties  which  are  not  in  answer  to  affi- 
davits filed  by  opponents,  they  must  ordinarily, 
under  established  practice,  be  served  upon  the 
opponents  at  least  five  days  before  the  date 


of  hearing.  Affidavits  in  rebuttal  may  then 
be  filed  by  opponents;  but  such  affidavits 
should  ordinarily  be  served  before  the  day 
of  the  hearing.  Ordinarily,  further  affidavits 
should  not  be  necessary,  and  such  further  af- 
fidavits should  not  in  any  case  be  admitted 
except  upon  a  satisfactory  showing  excusing 
the  delay  or  justifying  the  admission  of  surre- 
buttal  evidence.     Id. 

1013.  The  conclusion  of  the  primary  exam- 
iner upon  the  character  of  an  affidavit  as  basis 
for  its  admission  or  exclusion  will  only  be 
set  aside  in  cases  of  clear  error,  and  exten- 
sive affidavits  will  not  be  studied  upon  appeal 
to  determine  whether  proper  or  improper  un- 
less the  matters  urged  upon  the  appeal  have 
been  fully  urged  before  the  primary  examiner 
and  the  supposed  errors  in  his  decision  are 
clearly  pointed  out  on  appeal.     Id. 

1014.  An  interference  will  not  be  dissolved 
upon  the  affidavit  of  a  party  thereto  alleging 
that  an  affidavit  of  an  opposing  party  filed 
under  Rule  75  during  the  ex  parte  prosecu- 
tion of  the  opposing  party's  application  to 
avoid  a  reference  was  false  or  upon  such  an 
affidavit  considered  in  connection  with  the^ 
testimony  taken  in  the  interference,  which,  it 
is  alleged,  tends  to  disprove  the  allegations 
made  in  such  affidavit.  The  affidavit  of  the 
moving  party  which  merely  denies  the  allega- 
tions of  the  affidavit  filed  under  Rule  75  is 
obviously  insufficient  evidence,  and  it  is  well 
settled  that  an  interference  will  not  be  dis- 
solved on  grounds  arising  out  of  the  testi- 
mony taken  on  the  question  of  priority. 
Schuler  v.  Barnes  v.  Swartwout,  C.  D.  1909, 
140  O.  G.   509. 

1015.  Motions  to  dissolve  alleging  that  the 
adverse  party  has  no  right  to  make  the  claims, 
which  allegation  is  supported  by  or  based  upon 
affidavits,  should  not  be  transmitted,  nor 
should  affidavits  in  support  of  a  motion  to 
dissolve  be  considered  by  the  primary  exam- 
iner at  the  hearing  of  the  motion.  Horton 
V.  Leonard,  C.  D.  1910,  155  O.  G;  305. 

(p)   Testimony  and  Facts  Outside  Record. 

lOlG.  A  motion  to  dissolve  an  interference 
cannot  properly  be  based  upon  grounds  rising 
out  of  the  testimony  taken  on  the  question  of 
priority,  since  the  questions  involved  in  such 
motion  have  nothing  to  do  with  the  actions 
of  the  applicants  in  making  the  invention  or 
reducing  it  to  practice  or  with  anything  not 
appearing    from    the   applications   themselves. 


INTERFERENCE,  XVII,  (p). 


849 


Latham  v.  Force  and  Paranteau,  C.  D.  1898, 
82  O.  G.  185. 

1017.  Since  the  application  is  the  absolute 
foundation  of  the  applicants  rights  and  can- 
not be  moditied  or  limited  by  some  other  docu- 
ment or  statement,  the  examiner  is  bound  by 
the  language  of  the  application,  and  nothing 
else,  in  declaring  an  interference  and  also  in 
considering  a  motion  to  dissolve.     Id. 

1018.  The  fact  that  the  invention  referred  to 
in  the  testimony  is  not  the  same  as  that  cov- 
ered by  the  issue  is  no  ground  for  a  dissolu- 
tion of  the  interference,  but  is  matter  within 
the  jurisdiction  of  the  examiner  of  interfer- 
ences, who  has  the  exclusive  right  to  deter- 
mine the  competency,  construction,  scope,  and 
legal  meaning  of  the  evidence  introduced  and 
to  decide  whether  it  covers  the  same  inven- 
tion as  that  involved  in  the  interference.     Id. 

1019.  The  dissolution  of  an  interference  after 
testimony  has  been  taken  should  not  be  per- 
mitted under  the  decision  of  Hammond  v. 
Hart  (ante,  52,  83  O.  G.  743),  when  another 
interference  upon  the  same  subject-matter 
would  necessarily  follow,  even  though  the 
claims  of  the  parties  are  not  the  same. 
O'Rourke  v.  Gillespie,  ante,  136,  84  O.  G.  984, 
and  Wright  and  Stebbins  v.  Church,  ante, 
173,  84  O.  G.  1585,  cited.)  Richards  v.  Nick- 
erson,  C.  D.  1898,  84  O.  G.  1585. 

1020.  Upon  a  motion  to  dissolve  an  interfer- 
ence after  testimony  has  been  taken,  on  the 
ground  that  there  is  no  interference  in  fact, 
under  the  practice  as  indicated  in  the  decision 
of  Hammond  v.  Hart  (ante,  52,  83  O.  G.  743), 
Held,  that  after  parties  have  been  put  to  the 
delay  and  expense  of  taking  testimony  the  of- 
fice should  not  dissolve  an  interference  with 
the  certainty  that  it  will  be  redeclared  upon 
another  issue  based  upon  the  same  subject- 
matter.  (O'Rourke  v.  Gillespie,  ante,  13G, 
84  O.  G.  984,  cited.)  Wright  and  Stebbins  v. 
Church,  C.  D.  1898.  84  O.  G.  1585. 

1021.  The  examiner  of  interferences  cannot 
transm;  to  the  primary  examiner  a  motion  to 
dissolve  an  interference  brought  subsequent 
to  the  taking  of  testimony.  Nor  is  such  a 
motion,  if  based  upon  and  requiring  considera- 
tion of  testimony  taken  in  the  case,  within  the 
jurisdiction  of  the  primary  examiner  to  de- 
termine, even  if  transmitted.  Wethey  v.  Rob- 
erts. C.  D.  1898.  84  O.  G.  1580. 

1022.  A  dissolution  of  an  interference  which 
has  proceeded  beyond  the  stage  at  which  mo- 
tions to   dissolve  may  properly  be  made  but 


in  which  it  is  clear  that  there  is  no  interfer- 
ence in  fact  between  the  applications  involved 
is  provided  for  by  Rule  126.     Id. 

1023.  When  it  is  not  disputed  that  there  is 
an  invention  common  to  the  two  parties  to  an 
interference  it  is  unjust,  after  testimony  has 
been  taken,  to  permit  dissolution  for  the  pur- 
pose of  permitting  a  redeclaration  with  the 
claims  of  the  parties  the  same.  (Citing  Park 
V.  Davis,  ante,  111,  84  O.  G.  146.)  Smith  v. 
Warner,  C.  D.  1898,  85  O.  G.  151. 

1024.  When  after  decision  by  the  court  of 
appeals  on  the  question  of  priority  a  motion 
to  dissolve  on  the  ground  that  D.'s  applica- 
tion does  not  disclose  an  operative  device  is 
transmitted  to  the  primary  examiner  and  he 
denies  the  motion,  holding  that  D.'s  device  is 
operative.  Held,  that  such  holding  is  a  favor- 
able decision  on  D.'s  right  to  make  the  claim, 
and  no  appeal  can  be  taken.  Fowler  v.  Dodge, 
C.   D.  1898,  85  O.  G.  1584. 

1025.  The  question  as  to  the  operativeness  of 
D.'s  device  clearly  involves  the  merits,  and 
if  an  appeal  was  proper  at  all  it  should  have 
been  taken  to  the  examiners-in-chief  rather 
than  to  the  commissioner.     Id. 

1026.  F.  may  have  an  interest  in  having  D.'s 
application  withheld  from  issue;  but  the  rights 
of  D.  as  well  as  the  rights  of  F.  must  be  con- 
sidered, and  since  there  has  been  a  definite 
decision  by  the  office  that  D.  is  entitled  to  a 
patent  to  still  refuse  to  allow  such  patent  and 
to  permit  F.  to  further  contest  his  right  there- 
to would  be  to  deny  him  a  right  to  which  the 
office  has  adjudged  him  entitled.     Id. 

1027.  Contests  as  to  whether  a  patent  shall 
issue  to  a  particular  applicant  are  permitted 
in  this  office  not  because  of  the  interest  of  the 
contestant,  but  because  the  circumstances  are 
such  that  there  is  doubt  as  to  whether  the 
applicant  is  entitled  to  a  patent,  and  this  ques- 
tion cannot  properly  be  determined  without 
further  investigation.  After  the  office  be- 
comes satisfied  on  this  question  it  would  not 
be  justified  in  continuing  the  contest.     Id. 

1028.  F.'s  contention  that  a  direct  appeal 
should  be  entertained,  since  no  indirect  con- 
sideration on  appeal  may  now  be  had  at  final 
hearing  before  the  examiners-in-chief  and 
commissioner,  as  might  have  been  the  case  if 
his  motion  to  dissolve  had  been  made  in  prop- 
er time  under  Rule  122,  denied,  since  his  fail- 
ure to  get  such  indirect  consideration  was 
due  to  his  own   failure  to  make  the  motion 


2J0 


INTERFERENCE,  XVII,   (p). 


and  to  no  fault  of  the  office  or  of  his  oppo- 
nent.    Id. 

1029.  F.'s  request  that  it  be  directed  that  his 
patent  is.sue  dismissed,  since  although  worded 
as  a  motion  it  is  in  effect  an  appeal  and  is 
evidently  an  attempt  to  obtain  a  decision  by 
the  commissioner  as  to  the  operativeness  of 
D.'s  device.  (Manny  v.  Easley  v.  Greenwood, 
C.   D.  1889,  179,  48  O.  G.  .538.)      Id. 

1030.  Certain  affidavits  tiled  in  the  case  on 
motion  to  dissolve  should  not  be  considered, 
as  they  were  not  entitled  in  the  cause  (Gold- 
stein V.  Whelan,  C.  D.  1894,  518,  69  O.  G. 
124)  ;  but  the  memorandum  filed  on  behalf  of 
one  of  the  parties  referring  to  certain  publica- 
tions to  show  that  the  invention  as  described 
by  another  of  the  parties  is  inoperative  should 
be  considered  to  the  extent  of  examining  the 
publications  referred  to  in  that  paper  to  ascer- 
tain whether  they  show  that  the  process  is 
inoperative.  Calm  v.  Schweinitz  v.  Dolly 
V.  Geisler,  C.  D.  1899,  86  O.  G.  1633. 

1031.  Where  on  a  motion  to  dissolve  an  in- 
terference affidavits  and  exhibits  were  intro- 
duced, on  a  motion  to  strike  them  from  the 
record  on  the  ground  that  they  attempt  to 
show  that  the  subject-matter  of  the  inter- 
ference was  not  patentable  and  that  ex  parte 
affidavits  are  not  sufficient  to  show  non-pat- 
entability, Held,  that  the  affidavits  and  ex- 
hibits should  not  remain  a  part  of  the  record, 
as  the  patent  office  would  not  be  warranted 
in  dissolving  an  interference  upon  such  af- 
fidavits and  exhibits.  McKenzie  v.  Gillespie 
v  Ellis  V.  McElroy  v.  Ocumpaugh  v.  Norton, 
C.   D.   1900,  93  O.  G.  2103. 

1032.  Held,  further,  that  as  the  statutory  bar 
of  public  use  cannot  be  proved  by  ex  parte 
affidavits,  neither  can  a  patent  be  supplement- 
ed by  such  affidavits  to  show  that  the  inven- 
tion is  not  patentable.    Id. 

1033.  Held,  further,  that  the  affidavits  and 
accompanying  exhibits  should  be  removed 
from  the  files,  but  should  remain  in  the  office 
for  such  further  consideration  as  may  be 
warranted  by  the  subsequent  proceedings  in 
the  case.    Id. 

1034.  It  is  not  necessary  that  the  facts  upon 
which  a  motion  to  dissolve  is  based  be  stated 
in  any  case  where  the  only  facts  relied  upon 
are  disclosed  in  the  record.  A  fair  presump- 
tion is  that  where  the  moving  party  does  not 
state  any  additional  facts  he  considers  that 
the  record  discloses  sufficient  to  warrant  the 
dissolution   of   the   interference,   and    that  he 


does  not  wish  to  refer  to  anything  not  thus 
disclosed.  (Law  v.  Woolf,  C.  D.  1891,  91,  53 
O.  G.  1527,  construed.)  Wells  v.  Packer,  C. 
U.  1900,  90  O.  G.  1947. 

1035.  Where  a  motion  to  dissolve  an  inter- 
ference is  based  upon  facts  not  disclosed  in 
the  record,  the  motion  should  make  a  showing 
of  the  facts  outside  of  the  record,  so  that 
there  would  be  no  surprise  nor  any  necessity 
for  delay  in  the  proceeding.    Id. 

1036.  On  the  hearing  of  a  motion  to  dissolve 
an  interference  nothing  should  be  considered 
by  the  primary  examiner  outside  of  the  facts 
disclosed  by  the  record,  unless  a  showing  of 
such  additional  facts  accompanies  the  mo- 
tion to  transmit  to  the  primary  examiner.     Id. 

1037.  The  allegation  that  the  testimony  taken 
on  the  question  of  priority  made  clear  the 
meaning  of  the  issue  and  showed  that  there 
is  no  interference  in  fact  is  no  excuse  for  the 
delay  in  bringing  a  motion  for  dissolution, 
since  the  question  of  interference  in  fact  must 
be  determined  from  the  applications  them- 
selves, and  this  should  be  done  before  testi- 
mony is  taken.  Felbel  v.  Oliver,  C.  D.  1000, 
92  O.  G.  2339. 

1038.  The  fact  that  F.  in  his  testimony  placed 
a  different  construction  on  the  issue  from  that 
given  it  by  O.  furnishes  us  good  ground  for 
transmitting  to  the  primary  examiner  a  mo- 
tion to  dissolve  after  the  twenty  days  allowed 
by  the  rule  have  expired  and  after  testimony 
has  been  taken.     Id. 

1039.  Where  a  motion  to  dissolve  was  made 
fourteen  months  after  the  declaration  of  the 
interference  and  was  based  upon  testimony 
taken  in  the  case.  Held,  that  the  examiner  of 
interferences  properly  refused  to  transmit  it 
to  the  primary  examiner.  Sullivan  v.  Thom- 
son,  C.   D.   1901,  94   O.   G.   585. 

1040.  When  the  motion  alleges  that  T.'s  de- 
vice does  not  operate  in  the  manner  set  forth 
in  his  specification  and  certain  admissions  by 
T.  in  his  testimony  are  referred  to  as  show- 
ing this.  Held,  that  the  motion  is  based  upon 
the  testimony  and  should  not  be  transmitted. 
Id. 

1041.  If  it  appears  from  the  applications 
themselves  and  not  from  the  testimony  that 
there  is  no  interference  in  fact,  the  discovery 
should  have  been  made  by  an  examination  of 
the  applications  within  the  time  allowed  by  the 
rules  instead  of  waiting  until  after  testimony 
was  taken.    Id. 


INTERFERENCE,  XVII,  (p). 


251 


1042.  It  is  settled  practice  of  this  office  that 
nothing  can  be  considered  by  the  primary 
examiner  on  a  motion  to  dissolve  an  inter- 
ference which  is  not  contained  in  the  record 
of  the  case  unless  timely  notice  of  such  mat- 
ter as  may  be  urged  in  support  of  the  motion 
which  is  not  of  record  is  served  upon  the 
opposing  party  before  the  time  set  for  hear- 
ing.    Summers  v.  Hart,  C.  D.  1902,  98  O.  G. 

1043.  To  permit  a  party  who  relies  upon  such 
matter  to  delay  presentation  thereof  until  the 
time  of  hearing  would  necessitate  a  postpone- 
ment of  the  hearing.  Such  a  delay  of  the 
proceedings  might  be  obtained  at  any  time  by 
the  observance  of  this  course  by  the  moving 
party.  Such  a  delay  should  not  be  permitted 
except  upon  a  showing  of  facts  that  the  new 
matter  could  not  have  been  earlier  presented. 
Id. 

1044.  A  motion  for  dissolution  should  not  be 
brought  on  grounds  arising  from  the  testi- 
mony. Facts  which  are  alleged  to  be  estab- 
lished by  the  testimony  are  to  be  determined 
on  final  hearing  and  not  on  motions  for  dis- 
solution. Shellenberger  v.  Andrews,  C.  D. 
1903,   too  O.   G.   3013. 

1045.  Where  facts  not  disclosed  by  the  rec- 
ord are  to  be  considered  in  determining 
whether  or  not  an  interference  should  be  dis- 
solved, due  and  timely  notice  of  those  facts 
should  be  given  to  the  parties.  Greenawalt 
v.  Mark,  103  O.  G.  1913. 

1046.  A  motion  to  dissolve  an  interference 
based  upon  the  allegation  of  two  years'  public 
use  and  supported  by  ex  parte  affidavits 
should  not  be  transmitted  to  the  primary  ex- 
aminer although  filed  within  twenty  days  after 
the  approval  of  the  preliminary  statements. 
Shrum  V.  Baumgarten,  C.  D.  1903,  104  O.  G. 
577. 

1047.  Ex  parte  affidavits  as  to  public  use  can 
in  no  case  furnish  ground  for  dissolving  an 
interference  or  for  rejecting  the  claims  of  an 
application.  The  bar  of  public  use  must  be 
established  by  testimony  taken  in  accordance 
with  the  rules  of  evidence.     Id. 

1048.  Affidavits  may  form  the  basis  for  insti- 
tuting public-use  proceedings  where  the  pro- 
testant  expresses  a  willingness  to  produce  the 
witnesses  for  examination  and  to  bear  the 
expense  of  taking  their  depositions.     Id. 

1049.  Where  it  is  asked  that  times  be  set  for 
taking  testimony  to  be  used  on  a  motion  to 
dissolve,  the  purpose  of  the  testimony  being 


to  show  that  certain  strangers  to  the  record 
made  the  invention.  Held,  that  the  request  will 
be  denied.  Steinmetz  v.  Hewitt,  C.  D.  1903, 
107  O.  G.  1972. 

1050.  As  a  general  rule  motions  to  dissolve 
an  interference  are  not  transmitted  when  the 
reasons  for  bringing  the  motion  arise  out  of 
the  testimony.  (Felbel  v.  Oliver,  C.  D.  1900, 
150,  92  O.  G.  2339.)  Winton  v.  Jeffrey,  C.  D. 
1904,  112  O.  G.  r,oo. 

1051.  Interlocutory  motions  to  dissolve  are 
not  permitted  upon  matters  which  cannot  be 
determined  from  a  consideration  of  the  ap- 
plication and  office  records  and  which  requires 
the  taking  of  proofs.  Cory,  Gebhart,  and 
Martin,  Jr.  v.  Blakey,  C.  D.  1905,  115  O.  G. 
1328. 

1052.  Where  motion  for  dissolution  is  based 
entirely  upon  affidavits  presented  by  an  oppo- 
nent in  the  ex  parte  prosecution  of  his  case, 
which  affidavits  had  been  ordered  sealed,  but 
which  were  not  sealed  until  copies  thereof 
had  been  obtained  by  the  moving  party,  Held, 
that  such  motion  should  not  be  transmitted  to 
the  primary  examiner  for  consideration.  Kins- 
man V.  Kintner,  C.  D.  1905,  118  O.  G.  837. 

1053.  Where  motions  were  brought  before 
the  examiner  of  interferences  and  primary 
examiner  for  permission  to  take  testimony  to 
be  used  before  the  primary  examiner  in  sup- 
port of  a  motion  to  dissolve  on  the  ground 
that  one  of  the  parties  had  no  right  to  make 
the  claims  in  issue,  Held,  that  the  motions 
were  properly  denied.  Pym  v.  Hadaway,  C. 
D.  1906,  125  O.  G.  1702. 

1054.  Where  a  party  desires  to  take  testi- 
mony in  support  of  his  contention  that  his 
opponent  has  no  right  to  make  the  claim  in 
issue.  Held,  that  he  should  proceed  in  accord- 
ance with  Rule  130  and  the  decisions  in  the 
cases  of  Lowry  and  Cowley  v.  Spoon  (ante, 
224,  122  O.  G.  2687)  and  Browne  v.  Stroud 
(ante,  226,  122  O.  G.  2688),  first  prosecuting 
his  motion  to  dissolve  before  the  primary  ex- 
aminer and  subsequently,  if  necessary,  bring- 
ing his  motion  before  the  examiner  of  inter- 
ferences for  leave  to  take  testimony.     Id. 

1055.  Where  a  motion  for  permission  to 
take  testimony  for  the  jjurpose  of  showing 
that  the  opponent's  device  is  inoperative,  pend- 
ing the  determination  of  a  motion  to  dissolve 
the  interference,  was  denied  by  the  examiner 
of  interferences  on  the  ground  that  the  rules 
do  not  provide  for  the  taking  of  testimony  in 
interference  cases  prior  to  the  determination 


252 


INTERFERENCE,  XVII,   (q). 


of  a  motion  to  dissolve,  Held,  tliat  no  appeal 
lies  from  the  decision  of  the  examiner  of  in- 
terferences on  the  question  of  taking  testi- 
mony to  show  inoperativeness  and  that  no  oc- 
casion is  presented  for  the  exercise  of  the 
supervisory  authority  of  the  commissioner. 
Barber  v.  Wood,  C.  D.  1907,  127  O.  G.  1991. 

1056.  A  motion  to  take  testimony  before  the 
primary  examiner  on  the  question  of  inoper- 
ativeness of  an  opponent's  device,  Held,  prop- 
erly refused  transmission,  since  such  testi- 
mony should  be  taken,  if  at  all,  in  accordance 
with  the  practice  outlined  in  Pym  v.  Hada- 
way  (C.  D.  1906,  488,  125  O.  G.  1702)  and 
presented  before  the  examiner  of  interfer- 
ences at  tinal  hearing.  Gibson  v.  Kitsee,  C.  D. 
1909,   145   O.  G.  1249. 

1067.  A  motion  to  dissolve  an  interference 
based  upon  matters  growing  out  of  the  testi- 
mony should  not  be  transmitted  unless  the 
facts  alleged  to  constitute  a  bar  to  the  issue 
are  so  clear  and  apparent  that  the  propriety 
of  the  dissolution  of  the  interference  as  to 
the  specific  counts  cannot  be  seriously  ques- 
tioned. Foster  v.  Bell,  C.  D.  1910,  159  O.  G. 
241. 

(q)  New   GroiDid. 

1058.  In  view  of  a  recent  change  in  the 
practice  in  regard  to  declaring  interferences, 
from  which  it  follows  that  facts  not  before 
pertinent  might  be  considered  upon  a  motion 
for  dissolution,  such  motion,  upon  rehearing, 
was  directed  to  be  transmitted  to  the  primary 
examiner.  Casler  v.  Armat,  C.  D.  1898,  84  O. 
G.  l.'J83. 

1059.  Wherein  an  appeal  to  the  commissioner 
from  the  refusal  of  the  examiner  to  dissolve 
an  interference  new  references  are  cited  and 
it  is  asked  that  the  case  be  remanded  to  the 
examiner  for  reconsideration,  Held,  that  this 
amounts  to  a  new  motion  for  dissolution,  and 
since  motions  should  not  be  made  peacemeal 
the  request  will  be  denied.  Niedermeyer  v. 
Walter,  C.  D.  1902,  98  O.  G.  1707. 

1060.  Where  an  interference  is  suspended 
under  Rule  128  and  a  decision  is  rendered 
dissolving  the  interference  in  view  of  newly- 
discovered  references.  Held,  that  the  parties 
may  appeal  to  the  examiners-in-chief  within 
the  limit  of  appeal  or  may  permit  the  decision 
to  become  final  and  then  amend  the  claims  to 
avoid  the  references.  Davis  v.  Swift,  C.  D. 
1902,  99  O.  G.  1169. 


1061.  Upon  the  discovery  of  new  facts  after 
a  motion  to  transmit  a  motion  for  dissolu- 
tion is  granted  "the  primary  examiner  may 
consider  such  facts,  provided  due  and  timely 
notice  thereof  be  given  to  the  party  opposing 
the  motion  to  dissolve."  (Wells  v.  Packer, 
C.  D.  1900,  35,  90  O.  G.  1947.)  Whitlock  and 
Huson  V.  Scott,  C.  D.  1902,  99  O.  G.  1385. 

1062.  If  notice  of  the  new  facts  be  served 
on  the  opposing  party  at  least  five  days  before 
the  day  set  for  hearing,  such  notice  shall  be 
considered  as  "due  and  timely."     Id. 

1063.  Unless  the  practice  of  giving  "due  and 
timely  notice"  on  the  discovery  of  new  facts 
is  enforced  a  postponement  of  the  time  of 
hearing  becomes  necessary,  and  therefore  a 
delay  of  proceeding  might  be  obtained  by  the 
observance  of  this  practice  by  the  moving 
party.  It  is  therefore  held  that  such  a  delay 
should  not  be  permitted  except  upon  a  show- 
ing of  facts  that  the  new  motion  could  not 
have  been  earlier  presented.  (Citing  Sum- 
mers V.  Hart,  ante,  104,  98  O.  G.  258.';.)     Id. 

1064.  Where  a  second  motion  to  transmit  a 
motion  for  dissolutnon  is  brought  before  the 
examiner  of  interferences  on  the  ground  of 
the  discovery  of  new  references,  Held,  that 
the  consideration  of  unavoidable  delay  should 
be  controlling  with  the  examiner  of  interfer- 
ences, for  the  granting  of  the  second  motion 
for  transmittal  necessarily  results  in  a  second 
hearing  of  the  motion  for  dissolution  by  the 
primary  examiner  and  the  same  end  would 
be  gained  by  a  different  means.     Id. 

1065.  Where  after  a  period  of  three  months 
has  elapsed  from  the  date  of  the  decision  of 
priority  on  the  record  and  it  appears  that  the 
new  references  were  discovered  after  a  very 
short  search  on  the  morning  of  the  day  of 
hearing  among  the  records  of  this  office  in 
places  where  they  might  be  expected  to  have 
been  found,  Held,  that  the  delay  in  discover- 
ing the  new  references  was  not  unavoidable. 
Id. 

1066.  Where  a  second  motion  for  dissolu- 
tion is  brought  on  the  ground  of  newly-dis- 
covered references,  the  party's  right  to  be 
heard  depends  upon  whether  he  has  been  dili- 
gent in  finding  the  references  and  whether  the 
delay  in  presenting  them  was  unavoidable.  Id. 
Wilcomb  V.  Lasher,  C.  D.  1902,  101  O.  G.  666. 

1067.  Where  the  new  references  relied  upon 
on  a  second  motion  to  dissolve  were  found 
in  the  place  where  they  would  naturally  be 
expected  to  be  found  if  careful  search  were 


INTERFERENCE,  XVII,  (r),  (s). 


253 


made.  Held,  that  proper  diligence  was  not  ex- 
ercised on  the  first  motion  and  transmission 
of  the  second  refused.     Id. 

1068.  Where  certain  patents  and  publications 
are  referred  to  on  a  motion  to  dissolve  and 
the  opposing  party  states  on  the  record  that 
he  has  no  objection  to  their  consideration,  al- 
though five  days'  notice  was  not  given  him, 
Held,  that  the  references  should  have  been 
considered  by  the  examiner.  Lake  v.  Cahill, 
C.  D.  1904,  110  O.  G.  22.H.5. 

1069.  Patents  referred  to  by  one  of  the  par- 
ties which  are  not  of  record  and  have  not 
been  served  on  the  other  parties  at  least  five 
days  before  the  hearing  will  not  be  consid- 
ered on  motion  to  dissolve  unless  service  is 
waived  by  the  opposing  parties.  Young  v. 
Hick,  C.  D.  1904,  11.3  O.  G.  .547. 

1070.  Where  new  grounds  for  dissolution  are 
discovered  by  a  party  after  the  motion  there- 
for is  brought  and  notice  thereof  cannot  be 
duly  served  on  the  other  parties,  the  continu- 
ance of  the  hearing  upon  the  motion  may  be 
obtained  upon  request,  accompanied  by  a  state- 
ment of  facts  showing  that  the  new  grounds 
could  not  have  been  earlier  discovered.     Id. 

1071.  The  statement  of  the  attorneys  that 
they  could  not  make  a  search  until  a  few  days 
before  the  hearing  and  expected  that  their 
opponents  would  agree  to  a  postponement 
thereof,  but  were  disappointed,  is  not  such  a 
showing  as  would  have  warranted  a  continu- 
ance of  the  hearing.     Id. 

(r)   Partial. 

1072.  Where  an  interference  between  three 
parties  is  dissolved  as  to  some  of  the  counts 
because  one  of  the  parties  has  no  right  to 
make  the  claims,  Held,  that  the  examiner 
should  at  once  declare  a  new  interference  as 
to  those  counts  between  the  remaining  parties. 
Maxwell  v.  Bryon  v.  Henry,  C.  D.  1902,  98  O. 
G.  1968. 

1073.  An  interference  should  not  continue 
between  two  parties  as  to  some  counts  and 
between  three  parties  as  to  other  counts,  but 
two  interferences  should  be  declared.     Id. 

(s)   l>wl<eratii'cness. 

1074.  When  a  motion  to  dissolve,  alleging 
that  the  device  of  one  of  the  parties  is  in- 
operative, was  denied  by  the  primary  exam- 
iner, no  right  of  appeal  existed  and  the  ex- 
aminers-in-chief properly   dismissed   such   ap- 


peal. Fowler  V.  Dodge,  C.  D.  1899,  86  O.  G. 
1497. 

1075.  A  party  will  not  be  permitted,  after 
the  interference  is  decided,  to  prevent  action 
on  his  opponent's  application  or  the  issue  of 
his  patent  by  merely  filing  an  appeal  when  it 
has  been  decided  that  be  has  no  right  of  ap- 
peal.    Id. 

1076.  Whether  or  not  an  applicant's  device 
will  operate  in  the  manner  set  forth  by  him, 
his  description  of  his  method  and  his  claim 
to  it  must  be  accepted  in  so  far  as  the  ques- 
tion of  interference  in  fact  is  concerned.  A 
claim  cannot  be  construed  to  mean  something 
different  from  that  intended  and  clearly  indi- 
cated by  the  terms  employed.  Saatler  v.  Car- 
michael  v.  Smith,  86  O.  G.  1498. 

1077.  The  objection  of  inoperativeness  is  one 
which  should  not  be  insisted  upon  except  in 
a  clear  case,  particularly  where  the  applica- 
tion is  involved  in  an  interference  in  which 
the  matter  may  be  fully  investigated  and  in 
which  testimony  may  be  produced  throwing 
light  upon  the  subject.  Bowditah  v.  Todd,  C. 
D.   1902,  98  O.  G.  792. 

1078.  Where  in  an  interference  it  is  alleged 
that  it  is  theoretically  impossible  to  make  the 
device  of  one  of  the  parties  operate  and  he 
produces  a  model  which  is  operative,  but 
which  is  not  a  complete  machine.  Held,  that 
there  is  sufficient  doubt  in  the  matter  to  per- 
mit the  interference  to  proceed  to  the  taking 
of  testimony.     Id. 

1079.  Where  on  a  motion  to  dissolve  the 
question  as  to  the  operativeness  of  one  of  the 
inventions  is  raised,  Held,  that  affidavits  sup- 
porting or  traversing  the  allegation  may  be 
received  and  considered.  Dickinson  v.  Thi- 
bodeau  v.  Hildreth,  C.  D.  1902,  99  O.  G. 
2.').->0. 

1080.  The  question  whether  the  device  dis- 
closed in  a  party's  application  is  operative  re- 
lates to  the  question  whether  or  not  the  decla- 
ration of  the  interference  was  proper  and  not 
to  the  question  of  priority  of  invention.  Such 
questions  should  be  raised  by  motion  to  dis- 
solve. Osborn  v.  Hotsapiller,  C.  D.  1903,  102 
O.  G.  1296. 

1081.  The  contention  that  a  party's  disclosure 
in  his  application  is  incomplete  and  that  the 
device  there  shown  is  inoperative  if  sustained 
would  constitute  a  reason  for  dissolving  the 
interference  and  not  a  reason  upon  which  to 
base  a  decision  on  priority.  Osborn  v.  Aus- 
tin, C.  D.  1903,  102  O.  G.  1781. 


354 


INTERFERENCE,  XVII,  (t). 


1082.  Where  the  examiner  held  certain 
claims  to  be  anticipated  by  a  certain  patent 
and  others  not  anticipated,  and  in  his  deci- 
sion questioned  the  operativeness  of  certain 
features  of  the  device  disclosed  in  the  pat- 
ent, but  "rendered  any  doubts  in  favor  of  the 
patent"  in  rejecting  claims,  Held,  that  such 
decision  does  not  conflict  with  itself  to  the 
extent  that  the  patent  shows  an  operative 
structure  for  one  purpose,  which  structure  is 
inoperative  for  another  purpose.  There  is 
no  such  error  in  the  decision  as  to  warrant  a 
review  of  the  same  on  petition.  Rinsche  v. 
Sandherr,  C.  D.  1903,  105  O.  G.  1780. 

1083.  In  presenting  a  motion  to  dissolve 
based  upon  alleged  inoperativeness  there  is 
no  necessity  for  a  showing  on  the  part  of 
the  moving  party  that  his  own  structure  is  not 
inoperative,  since  dissolution  will  be  neces- 
sary whether  one  or  both  of  the  structures  is 
inoperative;  but  such  showing  is  necessary  to 
support  a  motion  before  the  examiner  of  in- 
terferences for  permission  to  take  testimony 
on  the  question  of  operativeness.  Clement  v. 
Browne  v.  Stroud,  C.  D.  1907,  126  O.  G.  2189. 

1084.  Where  affidavits  are  presented  in  sup- 
port of  a  motion  to  take  testimony  on  the 
question  of  the  operativeness  of  the  opposing 
party's  device,  they  will  not  be  transmitted  to 
the  primary  examiner  to  consider  the  suffi- 
ciency thereof,  as  they  are  not  pertinent  to 
the  motion  to  dissolve,  but  only  to  the  motion 
to  take  testimony,  which  is  a  matter  for  the 
consideration  of  the  examiner  of  interfer- 
ences.    Id. 

1085.  Where  after  hearing  a  motion  to  dis- 
solve the  primary  examiner,  acquired  juris- 
diction of  the  interference  for  the  purpose  of 
considering  the  operativeness  of  the  device 
of  one  of  the  parties  and  gave  notice  that  on 
a  certain  day  practical  demonstration  of  this 
matter  might  be  presented  by  cither  or  both 
of  the  parties.  Held,  that  a  petition  that  the 
jurisdiction  of  the  examiner  be  withdrawn 
was  premature.  Wentworth  v.  Sutton,  Steele 
&  Steele,  C.  D.  1910,  154  O.  G.  1107. 

(t)  Review  or  Rehearing. 

1086.  The  construction  placed  by  the  ex- 
aminers-in-chief upon  an  issue  is  not  such 
new  evidence  as  would  justify  a  rehearing  of 
a  motion  to  dissolve  an  interference  granted 
on  the  ground  that  the  issue  is  not  patentable 
as  to  one  count.     It  does  not  furnish  ground 


for    the    allegation    of    surprise.        Casler    v. 
.\Tmzt,  C.  D.  1898.  84  O.  G.  1583. 

1087.  It  is  doubtful  if  an  appeal  lies  from  the 
decision  of  the  examiner  refusing  to  grant  a 
rehearing  in  any  case,  and  his  action  will  cer- 
tainly not  be  reviewed  where  he  fully  con- 
siders the  points  raised  in  his  decision  deny- 
ing a  rehearing.  Holt  v.  IngersoU,  C.  D.  1898, 
84  O.  G.  1873. 

1088.  Where  review  is  requested  by  G.  of 
examiner's  rulings  upon  the  meanings  of 
claims  in  his  decision  granting  G.'s  motion 
for  dissolution,  Held,  that  G.  was  not  entitled 
to  such  review.  \'otey  v.  Gaily,  C.  D.  1905, 
119  O.  G.  .139. 

1089.  Where  review  of  examiner's  action 
under  Rule  128  holding  issues  patentable  over 
new  references  was  sought  by  party  who 
agreed  with  the  conclusion  reached.  Held,  that 
the  party  was  not  entitled  to  such  review 
either  by  appeal  or  petition.  Cazin  v.  Von 
Welsbach,  C.  D.  1905,  119  O.  G.  650. 

1090.  The  primary  examiner  has  no  author- 
ity to  grant  a  motion  for  rehearing  filed  after 
the  limit  of  appeal  from  his  decision  has  ex- 
pired. Becker  and  Patitz  v.  Edwards,  C.  D. 
1906,  123  O.  G.   1990. 

1091.  Where  a  motion  for  dissolution  on  the 
ground  that  F.  had  no  right  to  make  the 
claims  in  his  reissue  application  because  of 
intervening  rights  was  denied  by  the  exam- 
iner on  the  ground  that  the  record  contained 
no  evidence  of  intervening  rights,  but  in  his 
decision  stated  that  if  this  ground  of  the 
motion  could  be  substantiated  he  would  grant 
a  rehearing  on  this  point,  Held,  that  the  tribu- 
nals of  the  patent  office  have  a  power  over 
their  judgments  within  the  limits  of  appeal 
similar  to  that  of  a  court  over  its  judgments, 
that  they  have  the  power  to  request  a  rehear- 
ing on  any  point  upon  which  they  desire  fur- 
ther light,  and  that  the  examiner  acted  within 
his  authority  in  suggesting  a  rehearing.  Don- 
ning v.  Fisher,  C.  D.  1906,  125  O.  G.  2765. 

1092.  The  granting  of  a  rehearing  or  a  re- 
fusal to  grant  the  same  are  matters  within 
the  discretion  of  the  tribunal  having  juris- 
diction of  the  case  at  the  time,  and  it  is  a 
well-settled  principle  that  the  commissioner 
will  not  control  that  discretion  except  to  pre- 
vent irreparable  injury.     Id. 

1093.  It  being  incumbent  upon  a  party  to  a 
motion  to  dissolve  to  cite  such  references  as 
are  necessary  to  inform  the  tribunals  of  the 
state  of  the  art,  Held,  that  he  is  not  in  a  posi- 


INTERFERENCE,  XVIII. 


255 


tion  to  demand  a  rehearing  on  the  ground 
that  the  decision  was  induced  by  lack  of  such 
information.  White  v.  Powell,  C.  D.  1910, 
160  O.  G.  776. 

1094.  Since  it  is  well  settled  that  a  motion 
to  dissolve  on  the  ground  of  non-patentabil- 
ity will  not  be  considered  when  based  upon 
ex  parte  affidavits  (Barratt  v.  Swinglehurst, 
C.  D.  1909,  121,  144  O.  G.  818),  a  request  for 
rehearing  based  upon  such  showing  must  also 
be  refused.     Id. 

1095.  Matter  which  was  not  presented  to  the 
lower  tribunals  when  the  case  was  pending 
before  them  will  not  be  considered  on  appeal 
(Reppeto  V.  Stephens,  C.  D.  1903,  272,  105  O. 
G.  1779;  Ocumpaugh  v.  McElroy,  C.  D.  1905, 
128,  115  O.  G.  1847)  and  therefore  does  not 
constitute  ground  for  granting  a  rehearing. 
Id. 

XVIII.  DmsioNAi,  Applications. 

1096.  .An  application  should  not  be  admitted 
into  an  interference  as  a  division  of  another 
unless  it  corresponds  with  it  in  all  respects 
save  as  to  extent  of  disclosure.  Immaterial 
differences  can  be  omitted  without  injury, 
and  material  differences  are  obviously  im- 
proper. Ex  parte  Barry,  C.  D.  1898,  82  O.  G. 
337. 

1097.  Where  the  examiner  suspended  ac- 
tion on  an  application  until  the  termination  of 
an  interference  in  which  an  earlier  case  is 
involved,  of  which  the  one  under  considera- 
tion is  a  division  and  which  the  examiner 
states  contains  the  same  claims  as  the  earlier 
application,  Held,  that  proceedings  should  not 
be  suspended  and  the  application  indefinitely 
delayed,  but  the  applicant  should  at  the  present 
time  be  permitted  to  contest  the  matter  by 
such  action  as  the  condition  of  the  case  re- 
quires. Ex  parte  Bullier,  C.  D.  1899,  88  O.  G. 
1161. 

1098.  If  the  claims  in  the  present  applica- 
tion are  the  same  as  the  issue  of  the  inter- 
ference or  cover  the  same  invention  as  the 
application  of  the  other  party  to  the  inference, 
it  is  clear  that  the  applicant's  right  to  the 
claims  cannot  be  determined  until  the  deci- 
sion on  the  question  of  priority,  but  the  possi- 
bility that  the  examiner  may  be  mistaken  in 
holding  that  the  claims  in  this  case  are  not 
patentable  over  the  invention  disclosed  by  the 
other  party  to  the  interference  must  be  con- 
templated just  as  the  rules  providing  for  ap- 
peals contemplate  the  possibility  of  mistake  in 


rejecting  claims  on  references,  and  the  appli- 
cant should  be  permitted  to  contest  the  ques- 
tion at  the  present  time  instead  of  waiting 
until  the  interference  is  decided.     Id. 

1099.  The  question  to  be  determined  is  of 
the  same  kind  as  if  the  decision  had  been  ren- 
dered against  the  applicant  in  the  interference, 
and  it  would  be  unjust  to  him  to  cause  him 
the  delay  when  the  matter  can  be  settled  at 
the  present  time.    Id. 

1100.  It  is  contrary  to  the  well-settled  pol- 
icy of  the  office  to  suspend  action  on  an  appli- 
cation unless  such  suspension  is  absolutely 
necessary  to  determine  the  right  of  an  appli- 
cant to  a  patent  on  that  application.  As 
pointed  out  in  ex  parte  Drawbaugh  (C.  D. 
1893,  85.  64  O.  G.  155),  action  on  one  of 
several  divisional  cases  should  not  be  sus- 
pended to  await  the  allowance  of  another  ap- 
plication.    Id. 

1101.  Where  on  an  ex  parte  appeal  the  ex- 
aminers-in-chief held  H.'s  application  was  a 
proper  division  of  a  prior  application  and 
that  amendments  to  the  prior  case  disclosing 
the  subject-matter  of  the  later  did  not  in- 
volve new  matter.  Held,  that  the  examiner 
should  not  consider  such  decision  as  absolute- 
ly binding  upon  him  without  considering  the 
merits  of  the  question  when  raised  inter  partes 
on  a  motion.  Brill  and  Brill  v.  Hunter,  C.  D. 
1901.  96  O.  G.  641. 

1102.  Held,  that  the  question  whether  the 
invention  in  issue  was  disclosed  in  a  prior 
application,  of  which  the  one  in  interference 
is  claimed  to  be  a  division,  raised  by  a  motion 
to  shift  the  burden  of  proof  is  an  interlocu- 
tory matter  which  will  be  considered  upon  di- 
rect appeal.  It  does  not  directly  involve  the 
right  to  make  the  claim,  although  the  conclu- 
sion which  is  reached  may  indirectly  affect  that 
question.    Id. 

1103.  Where  an  application  in  interference 
is  claimed  to  be  a  division  or  continuation  of 
a  previous  application,  but  it  appears  that  the 
subject-matter  of  the  issue  was  not  disclosed 
in  the  original  case  as  filed.  Held,  that  the  ap- 
plicant is  not  entitled  to  the  date  of  the  orig- 
inal case  as  fixing  the  burden  of  proof.    Id. 

1104.  Where  the  issue  is  limited  to  two 
springs  for  each  motor,  one  above  and  the 
other  below,  and  each  bearing  upon  the  free 
end  of  the  motor,  and  the  original  case,  of 
which  this  is  claimed  to  be  a  continuation, 
disclosed  merely  a  single  plate-spring  for  each 
motor  and  said  that  a  coil  or  other  form  of 


256 


INTERFERENCE,  XVIII. 


spring  could  be  substituted  for  it,  Held,  that 
the  original  case  did  not  disclose  the  inven- 
tion in  issue  and  that  the  applicant  is  not  en- 
titled to  its  date.     Id. 

1105.  Where  on  a  motion  to  shift  the  bur- 
den of  proof  K.  contends  that  his  application 
is  a  division  of  a  patent  granted  to  him  and 
it  appears  that  the  construction  claimed  is  not 
clearly  shown  in  the  patent  and  there  is  no 
description  of  it.  Held,  that  he  is  not  entitled 
to  the  date  of  the  application  upon  which  the 
patent  issued.  Krakau  v.  Harding,  C.  D. 
190:i,  103  O.  G.  1531. 

1106.  Where  the  disclosure  in  an  original 
application  is  identical  with  the  disclosure  in 
the  later  divisional  application  involved  in  an 
interference,  the  interference  is  to  be  consid- 
ered the  same  as  though  the  earlier  applica- 
tion had  been  included  in  place  of  the  later 
one.  Hopfelt  v.  Read,  C.  D.  1903,  106  O.  G. 
767. 

1107.  When  it  has  been  finally  decided  that 
the  disclosure  is  sufficient  in  the  divisional 
application  to  support  the  claims  and  the  dis- 
closure in  the  original  application  is  the  same 
as  in  the  divisional,  Held,  that  there  was  no 
irregularity  in  referring  to  the  original  appli- 
cation in  the  declaration  of  interference.     Id. 

1108.  Where  an  application  is  filed  as  a  divi- 
sion or  continuation  of  an  earlier  application 
which  disclosed  the  invention  of  the  later 
case,  but  contained  no  claim  to  it,  Held,  that 
in  an  interference  as  to  the  later  case  the  ap- 
plicant is  entitled  to  the  date  of  the  earlier 
case  for  a  constructive  reduction  to  practice. 
Id. 

1109.  Where  the  claims  of  a  divisional  ap- 
plication could  not  have  been  made  in  the 
original  application  by  reason  of  a  rule  of 
practice  adopted  by  the  office,  Held,  that  the 
applicant  may  nevertheless  avail  himself  of 
the  earlier  application  as  a  constructive  reduc- 
tion to  practice  of  the  invention  claimed  in  the 
later  case.    Id. 

1110.  Where  the  application  of  the  senior 
party  involved  in  an  interference  is  a  division 
of  an  earlier  application  and  the  senior  party 
takes  no  testimony,  Held,  that  the  senior  party 
is  restricted  to  the  date  of  filing  of  the  earlier 
application  for  a  constructive  reduction  to 
practice.  *Robinson  v.  Seelinger,  C.  D.  190.", 
116  O.  G.  1735. 

1111.  An  application  was  filed  on  June  8, 
IflO.i,  covering  an  igniter  and  an  engine.    The 


claims  to  the  engine  were  erroneously  reject- 
ed, were  canceled,  the  application  was  allow- 
ed, and  subsequently  became  forfeited.  On 
July  16,  1898,  the  application  was  renewed, 
and  additional  claims  to  the  engine  were  in- 
cluded. Division  was  required  between  the 
claims  to  the  igniter  and  the  engine.  On 
March  28,  1899,  applicant  canceled  the  claims 
to  the  engine,  and  on  April  25,  1899,  the  office 
acted  on  the  remaining  claims  to  the  igniter. 
Subsequently  applicant  reinstated  the  claims 
to  the  engine,  and  the  office  again  permitted 
him  to  elect  which  of  the  inventions  he  would 
prosecute  in  the  application,  but  afterwards 
informed  him  that  he  was  bound  by  the  pre- 
vious cancellation  of  the  claims  to  the  engine, 
and  applicant  thereupon,  on  October  30,  1900, 
canceled  the  engine  claims,  and  after  several 
communications  between  the  office  and  appli- 
cant the  application  matured  into  a  patent, 
dated  January  12,  1904.  On  April  16,  1903, 
applicant  filed  a  divisional  application  covering 
the  engine.  Held,  that  the  divisional  applica- 
tion is  entitled  to  the  date  of  the  original  ap- 
plication of  June  8,  1895,  as  a  constructive  re- 
duction to  practice.  *Duryea  and  White  v. 
Rice,  Jr.,  C.  D.  1907,  126  O.  G.  1357. 

1112.  A  divisional  application  filed  while  the 
original  application  is  pending  in  the  office 
covering  matter  carved  out  of  the  original 
is  a  continuation  of  the  latter  and  is  entitled 
to  its  date  as  a  constructive  reduction  to  prac- 
tice, even  though  such  divisional  application 
was  filed  more  than  two  years  after  an  action 
by  the  oflfice  on  claims  which  applicant  elected 
to  retain  in  response  to  a  requirement  of  divi- 
sion.    *Id. 

1113.  A  divisional  application  dates  back  to 
the  original  one  and  secures  to  the  applicant 
the  benefit  of  a  constructive  reduction  to  prac- 
tice, whether  the  claims  of  the  divisional  ap- 
plication were  in  the  original  when  filed  or 
not.  *Lotz  V.  Kenny,  C.  D.  1908,  135  O.  G. 
1801. 

1114.  Where  a  divisional  application  is  in- 
volved in  an  interference  and  the  applicant 
desires  to  secure  the  benefit  of  the  date  of  the 
parent  application  without  exposing  the  entire 
case,  he  is  entitled  to  do  so  by  filing  under 
Rule  105  a  certified  copy  of  so  much  of  the 
parent  application  as  relates  to  the  invention 
involved  in  the  interference,  withholding  from 
the  inspection  of  the  opposing  party  the  re- 
maining portion  thereof.  Dilg  and  Fowler  v. 
Shaver,  C.  D.  1909,  144  O.  G.  561. 


INTERFERENCE,  XIX. 


257 


1115.  Where  an  applicant,  in  compliance 
with  the  examiner's  requirement  for  division 
between  process  and  apparatus,  divides  out  the 
process  and  tiles  a  separate  application  there- 
for, the  examiner  should  not  suggest  the  pro- 
cess claims  to  other  applicants  who  disclose 
the  process  but  claim  only  an  apparatus  for 
carrying  out  such  process.  In  re  Werner,  C. 
D.  lOO'J,  l,i9  O.  G.  197. 

1116.  Where  an  application  involved  in  in- 
terference is  a  division  of  an  earlier  applica- 
tion which  had  not  been  abandoned  or  for- 
feited at  the  time  such  divisional  application 
was  filed,  Held,  that  the  applicant  is  entitled 
to  a  constructive  reduction  to  practice  as  of 
the  date  of  the  earlier  application,  even 
though  this  earlier  application  contained  no 
claim  to  the  invention  in  issue  (citing  Mc- 
Berty  v.  Cook,  C.  D.  1900,  248,  90  O.  G.  229.5 ; 
Phillips  v.  Sensenich,  C.  D.  1908,  391,  134  O. 
G.  1806,  and  Lotz  v.  Kenny,  C.  D.  1908,  467, 
13.J  O.  G.  1801.)  Von  Recklinghausen  v. 
Dempster,  C.  D.  1909,  148  O.  G.  277. 

1117.  A  divisional  application  is  entitled  to 
the  date  of  tiling  of  the  original  application 
as  a  date  of  constructive  reduction  to  practice 
whether  the  claims  of  the  divisional  applica- 
tion were  presented  in  the  earlier  application 
or  not.  Saunders  v.  Miller,  C.  D.  1909,  461, 
146  O.  G.  50.5,  33  App.  D.  C.  456,  distinguished. 
*\'on  Recklinghausen  v.  Dempster,  C.  D.  1910, 
1.54  O.  G.  2.52. 

1118.  Where  as  the  result  of  an  adverse  de- 
cision in  an  interference  all  the  claims  of  an 
application  arc  rejected.  Held,  that  a  divi- 
sional application  filed  within  one  year  from 
the  date  of  such  rejection  is  entitled  to  the 
date  of  the  original  application  as  a  date  of 
constructive  reduction  to  practice.     *Id. 

1119.  If  any  application  containing  the  in- 
terfering claims  is  clearly  a  division  or  a  con- 
tinuation of  an  earlier  application,  the  pri- 
mary examiner  should  so  state.  If  there  is 
doubt  upon  this  question,  no  reference  should 
be  made  to  an  earlier  application,  the  matter 
being  left  for  determination  upon  motion  to 
shift  the  burden  of  proof.  Jackson  v.  Patten, 
C.  D.  1910,  150  O.  G.  265. 

XIX.  Effect  of  P.\tent  Office  Decisions 
IN  THE  Courts. 

1120.  The  question  of  patentability  is  not 
ordinarily  regarded  as  open  on  appeal  to  the 
court  of  appeals  of  the  District  of  Columbia 
in  an  interference  case,  but  is  to  be  regarded 

17 


therein  as  conclusively  established  by  the  com- 
missioner of  patents.  The  question  in  such 
cases  is  one  of  priority  and  not  of  patentabil- 
ity. (Hisey  v.  Peters,  C.  D.  1895,  349,  71  O. 
G.  892;  Doyle  v.  McRoberts,  C.  D.  1897,  413. 
79  O.  G.  1029;  Newton  v.  Woodward,  C  D. 

1900,  406,  93  O.  G.  2319.)  *Latham  v.  Armat, 
C.  D.  1901,  95  O.  G.  232. 

1121.  When  the  question  as  to  whom  prior- 
ity should  be  awarded  is  doubtful,  that  doubt 
demands  that  the  decision  of  the  commissioner 
of  patents  should  be  affirmed.     *Id. 

1122.  Upon  an  appeal  on  priority  the  court 
will  accept  the  adjudication  of  the  patent  of- 
fice as  conclusive  of  the  question  whether  the 
invention  specified  in  the  issue  is  disclosed  in 
the  applications  of  the  parties,  and  therefore 
authorized  the  declaration  of  interference. 
♦Ostergsen  et  al.  v.  Tripler,  C.  D.  1901,  95 
O.  G.  837. 

1123.  On  appeal  to  the  court  the  question 
is  as  to  priority  of  invention  and  not  as  to 
patentability,  and  therefore  the  court  will  ac- 
cept the  ruling  of  the  patent  office  that  the 
claims  now  in  issue  were  sufficiently  apparent 
from  the  specifications  and  drawings  in  the 
original  application  and  that  they  constituted 
part  of  the  invention  intended  to  be  covered 
by  the  original  patent.  *Austin  v.  Johnson  et 
al.,  C.  D.  1901,  95  O.  G.  268.5. 

1124.  A  decision  by  the  patent  office  on  the 
question  of  priority  in  an  interference  in 
favor  of  the  junior  party  is  not  conclusive 
when  suit  is  brought  on  the  patent,  but  it 
overcomes  any  presumption  due  to  the  earlier 
filing  date  that  his  opponent  was  the  prior 
inventor,  c  John  R.  Williams  Co.  et  aL  v. 
Miller,  Du  Brul  &  Peters  Mfg.  Co.,  C.  D.  1901, 
97  O.  G.  2.308. 

1125.  Where  the  tribunals  of  the  patent  of- 
fice concur  upon  a  mere  matter  of  fact,  it  is 
necessary  for  the  appellant  to  make  out  a  clear 
case  of  error  in  order  to  obtain  a  reversal. 
♦Howard  v.  Hey,  C.  D.  1901,  95  O.  G.  1647. 

1126.  Where  the  question  of  priority  of  in- 
vention was  decided  in  favor  of  Boch  by  the 
patent  office  and  the  court  of  appeals.  Held, 
that  such  decisions  must  be  accepted  as  con- 
trolling in  the  absence  of  evidence  carrying 
through  conviction  to  the  contrary.  c  R. 
Thomas  &  Sons  Company  v.  Electric  Porce- 
lain and  Manufacturing  Company  et  al.,  C.  D. 

1901.  97  O.  G.   183S. 

1127.  Where  an  appellant  comes  to  the  court 
as   the  junior  applicant   and   with   three  con- 


258 


INTERFERENCE,  XIX. 


current  decisions  of  the  tribunals  of  the  patent 
office  against  him,  Held,  that  the  presumption 
is  strongly  against  his  claim  as  the  prior  in- 
ventor. Swihart  v.  Mauldin,  C.  D.  1902,  540, 
99  O.  G.  2323. 

1128.  The  court  will  not,  except  in  extreme 
cases,  go  behind  the  declaration  of  interfer- 
ence in  order  to  determine  the  question  of 
identity  of  the  inventions  claimed  by  the 
parties.    *Id. 

1129.  The  decisions  of  the  expert  tribunals 
of  the  patent  office  as  to  the  sufficiency  of  the 
dfsclosurc  in  the  original  application  to  sup- 
port the  invention  defined  in  the  counts  of  the 
issue  will  be  accepted  as  conclusive  by  the 
court  in  considering  questions  of  priority  of 
invention.  *Stone  v.  Pupin,  C.  D.  1902,  100 
O.  G.  1113. 

1130.  Where  the  record  shows  that  the 
facts  of  the  case  have  been  fully  and  care- 
fully examined  by  the  tribunals  of  the  patent 
office,  resulting  in  a  concurrence  of  decision 
thereon.  Held,  that  it  is  the  established  rule 
that  the  court  will  not  reverse  that  decision 
unless  it  clearly  appears  that  the  decision  was 
against  the  weight  of  evidence.  It  will  not 
be  reversed  on  a  matter  of  doubt.  *Flora  v. 
Powrie,  C.  D.  1904,  109  O.  G.  2443. 

1131.  Where  a  junior  party  to  an  interfer- 
ence appeals  to  the  court  of  appeals  and  the 
three  tribunals  of  the  patent  office  have  ren- 
dered concurrent  opinions  against  him,  Held, 
that  in  order  to  prevail  in  the  court  of  ap- 
peals he  must  show  a  clear  case  of  error  in 
these  decisions.  *Murphy  v.  Meissner,  C.  D. 
1905,  114  O.  G.  1830. 

1132.  When  the  utmost  that  could  be  said 
in  favor  of  the  appellant  is  that  the  testimony 
is  evenly  balanced  and  the  circumstances  are 
all  against  the  contention  of  the  appellant. 
Held,  that  the  tribunals  of  the  patent  office 
were  fully  warranted  in  awarding  judgment 
of  priority  to  the  appellee.     *Id. 

1133.  Where  the  commissioner  concurs  in 
and  affirms  the  decision  of  the  examiners-in- 
chief  on  matters  of  fact,  the  court  of  ap- 
peals will  not  reverse  that  decision  unless  it 
clearly  appears  that  the  decision  was  against 
the  weight  of  evidence.  Where  matters  of 
law  are  involved,  a  different  principle  applies. 
*Orcutt  v.  McDonald,  Jr.,  and  McDonald,  C. 
D.  1906,  123  O.  G.  1287. 

1134.  Unanimity  in  the  patent  office  tribu- 
nals imposes  upon  the  appellant  here  the  bur- 
den of  showing  very  clearly  that  the  commis- 


sioner erred  in  the  final  decision  appealed 
from.  (See  In  re  Adams,  C.  D.  1905,  602, 
114  O.  G.  2093,  24  App.  D.  C.  277;  Seeberger 
V.  Dodge,  C.  D.  1905,  603,  114  O.  G.  2382,  24 
App.  D.  C.  481.)  *In  re  Clunies,  C.  D.  1906, 
123  O.  G.  2631. 

1135.  Where  a  question  of  interference  in 
fact  or  right  to  make  claims  has  been  fully 
considered  by  the  primary  examiner,  the  ex- 
aminers-in-chief, and  the  commissioner  and 
all  have  concurred  in  finding  that  a  party  to 
an  interference  has  the  right  to  make  a  claim 
which  is  the  same  as  the  count  of  the  issue  of 
an  interference.  Held,  that  these  conclusions 
will  ordinarily  be  considered  by  the  court  as 
conclusive.  Podlesak  &  Podlesak  v.  Mcln- 
nerney,  120  O.  G.  2127. 

1136.  Where  the  three  patent  office  tribunals 
have  been  in  accord  and  consequently  the 
case  falls  within  the  decisions  of  this  court 
that,  except  extraordinary  cases,  it  will  not 
disturb  the  findings  of  fact  of  the  patent  office, 
Held,  that  this  does  not  mean  that  the  court 
is  bound  by  the  conclusions  drawn  from  such 
facts  unless  convinced  that  such  conclusions 
are  correct.  *0'Conncll  v.  Schmidt,  C.  D. 
1906,  122  O.  G.  2065. 

1137.  Where  the  three  separate  tribunals  of 
the  patent  office,  consisting  of  five  experienced 
men  familiar  with  considering  and  weighing 
evidence,  agree  in  their  conclusions,  the  court 
of  appeals  will  not  reverse  their  rulings  ex- 
cept in  a  very  clear  case.  Bourne  v.  Hill,  Jr., 
C.  D.  1906,  123  O.  G.  1284. 

1138.  Unanimity  in  the  decisions  of  the  pat- 
ent office  tribunals  imposes  upon  the  appellant 
the  burden  of  showing  very  clearly  that  the 
commissioner  erred  in  the  final  decision  ap- 
pealed from.  *Parkes  v.  Lewis,  C.  D.  1906, 
123  O.  G.  2313. 

1139.  The  decisions  of  the  expert  tribunals 
of  the  patent  office  on  the  question  of  the  suf- 
ficiency of  the  disclosure  of  a  party  to  an  in- 
terference will  be  accepted  by  the  court  of 
appeals  as  conclusive,  except  in  extreme  cases 
where  palpable  error  has  been  committed. 
(Seeberger  v.  Dodge,  C.  D.  1905,  603,  114  O. 
G.  2382,  24  App.  D.  C.  481 ;  Podlesak  and  Pod- 
lesak v.  Mclnnerney,  C.  D.  1906,  558,  120  O. 
G.  2127,  26  App.  D.  C.  405.)  *Kilbourn  v. 
Hirner,  C.   D.  1907,  128  O.  G.   1689. 

1140.  Whether  or  not  an  application  in- 
volved in  interference  discloses  the  subject- 
matter  in  issue,  and  therefore  whether  or  not 


INTERFERENCE,  XX. 


250 


the  interference  is  properly  declared,  is  a 
question  to  be  ordinarily  determined  by  the 
patent  office  (Ostergren  v.  Tripler,  C.  D.  1901, 
3J0,  93  O.  G.  837,  17  App.  D.  C.  358 ;  Herman 
V.  Pullman,  C.  D.  1904,  623,  109  O.  G.  1888, 
23  App.  D.  C.  264,  263)  ;  but  in  extreme  cases 
where  palpable  error  has  been  committed  the 
court  may  review  the  decision  of  the  patent 
office  on  this  point.  (Podlesak  and  Podlesak 
V.  Mclnnerney,  C.  D.  1906,  338,  120  O.  G. 
2127,  26  App.  D.  C.  399.)  *MacMulkin  v. 
Bollee,  C.  D.  1907,  130  O.  G.  1691. 

1141.  To  justify  the  court  of  appeals  in  re- 
versing the  concurrent  decisions  of  the  pat- 
ent office  tribunals  on  a  conclusion  of  facts, 
plain  error  must  be  shown.  *Ries  v.  Kirke- 
gaard  and  Jebsen,  C.  D.  1908,  132  O.  G.  843. 

1142.  To  justify  the  court  of  appeals  in  re- 
versing the  unanimous  decisions  of  the  patent 
office  tribunals  error  therein  must  be  made  to 
clearly  appear.  *Onderdonk  v.  Parkes,  C.  D. 
1908,  135  O.  G.  663. 

1143.  Unanimity  in  the  decisions  of  the  pat- 
ent office  tribunals  necessarily  imposes  upon 
the  appellant  the  burden  of  making  out  a 
clear  case  of  error  in  the  decision  appealed 
from.  *Id.  Woodbridge  v.  Winship,  145  O. 
G.  1230. 

1144.  Where  in  a  suit  for  infringement  of 
a  patent  which  was  granted  after  an  inter- 
ference proceeding  in  the  patent  office  the 
only  defense  set  up  is  that  the  other  party  to 
the  interference  was  the  prior  inventor,  the 
decision  of  the  patent  office  tribunals  and  the 
court  of  appeals  of  the  District  of  Columbia 
on  the  question  of  the  fact  involved  is  enti- 
tled to  great  weight,  if  it  is  not  absolutely 
controlling,  d  .\utomatic  Weighing  Machine 
Company  v.  Pneumatic  Scale  Corporation, 
Limited,  C.  D.  1909,  139  O.  G.  991. 

1145.  "It  is  the  settled  doctrine  of  this  court 
that  the  allowance  of  a  claim  in  the  patent 
office  is  conclusive  of  the  question  of  patent- 
ability in  an  interference  proceeding,  because 
the  appellate  jurisdiction  in  respect  of  patent- 
ability is  limited  to  cases  where  claims  have 
been  rejected  on  that  ground."  *Gold  v.  Gold, 
C.  D.  1910,  130  O.  G.  570. 

1146.  Where  all  of  the  tribunals  of  the 
patent  office  have  concurred  in  holding,  espe- 
cially in  a  case  involving  somewhat  compli- 
cated mechanical  means,  that  the  invention 
claimed  is  not  disclosed  in  the  description  of 
a    party's    invention,    error    must    be    clearly 


shown  in  their  conclusion  to  justify  a  reversal 
of  the  same.    *Id. 

1147.  Where  the  sole  issue  is  one  of  fact, 
we  are  slow  to  disturb  the  finding  of  the  pat- 
ent office,  especially,  as  in  this  case,  where  the 
evidence  appears  to  fully  sustain  the  conclu- 
sion reached  by  the  commissioner.  *Swartout 
v.  Barnes,  C.  D.  1911,  162  O.  G.  1187. 

XX.  Estoppel. 

1148.  The  question  whether  a  party  is  estop- 
ped by  prior  proceedings  from  asserting  prior- 
ity of  invention  as  against  his  opponent  relates 
to  the  merits  of  the  controversy,  and  the 
evidence  of  estoppel  goes  to  establish  the  ques- 
tion of  priority.  Cammett  v.  Hallett,  C.  D. 
1900,  93  O.  G.  939. 

1149.  Where  a  party  has  made  application 
for  a  patent  on  the  invention  and  contested 
an  interference  in  regard  to  it,  the  contention 
against  his  successful  rival  that  the  invention 
is  not  patentable  does  not  come  with  good 
grace,  c  R.  Thomas  &  Sons  Company  v.  Elec- 
tric Porcelain  and  Manufacturing  Company 
ct  al.,  C.  D.  1901,  97  O.  G.  1838. 

1150.  Held,  that  a  declaration  by  one  of  the 
parties  to  an  interference  made  to  parties  in 
interest  that  his  invention  was  different  from 
the  invention  of  the  other  party  does  not 
necessarily  raise  an  estoppel,  as  the  effect  of 
such  a  declaration  could  be  explained  by 
testimony,  inasmuch  as  there  might  well  be 
differences  of  detail  between  the  two  claims, 
while  they  might  be  the  same  in  substance. 
*Furman  v.  Dean,  C.  D.  1903,  114  O.  G.  1332. 

1151.  Held,  that  a  party  is  not  estopped  from 
subsequently  making  a  claim  to  an  invention 
unless  there  is  a  failure  of  the  specification  to 
disclose  it.  The  absence  of  a  definite  and 
special  claim  for  an  invention  when  the  ap- 
plication w^as  originally  filed  docs  not  act  as 
an  estoppel  to  the  subsequent  making  of  the 
claim.     *Id. 

1152.  Held,  that  the  doctrine  of  estoppel 
announced  in  the  cases  of  Bechman  v.  Wood 
(C.  D.  1899,  459,  89  O.  G.  2462)  and  Miehle 
V.  Read  (C.  D.  1901,  396,  96  O.  G.  426.  18  App. 
D.  C.  128),  was  based  upon  the  failure  of 
the  parties  to  disclose  the  invention.  Those 
cases  refer  to  substantial  differences  between 
the  original  claims  and  specifications  of  an  ap- 
plication and  new  and  enlarged  claims  subse- 
quently introduced  for  the  first  time  after 
rights  of  third  parties  have  intervened.    *Id. 


260 


INTERFERENCE,  XXI,  (a),  (b). 


XXI.   EviDKNCE. 
(a)  Admissability. 

1153.  Wliile  as  a  general  rule  nothing  is  to 
be  considered  as  evidence  in  an  interference 
case  unless  introduced  into  the  record  before 
final  submission,  yet  neither  the  general  pur- 
pose nor  the  efficiency  of  the  rule  is  impaired 
by  the  creation  of  an  exception  thereto  in 
favor  of  the  consideration  of  a  relevant  and 
material  fact  shown  by  a  record  in  the  patent 
office  entered  in  the  regular  course  of  pro- 
ceedings therein.  *Cain  v.  Park,  C.  D.  1899, 
278,  86  O.  O.  797. 

1154.  When  a  party  relics  on  his  own  mem- 
ory, and  fails  to  consult  parties  whom  he 
knows  to  be  equally  familiar  with  the  facts 
in  the  case,  Held,  to  show  a  lack  of  diligence 
on  his  part  in  discovering  the  evidence  which 
those  parties  may  be  able  to  produce.  Jobes 
V.  Roberts  v.  Hauss,  C.  D.  1899,  86  O.  G. 
1805. 

1155.  Held,  that  the  examiner  of  interfer- 
ences should  not  in  his  decision  refer  to  a 
pending  application  not  directly  included  in 
the  interference  and  not  referred  to  in  the 
testimony,  because  such  reference  is  a  viola- 
tion of  the  rule  of  secrecy  and  also  because 
the  application  has  not  been  introduced  in 
such  a  way  as  to  constitute  proper  evidence. 
Robinson  v.  Copeland,  C.  D.  1903,  102  O.  G. 
466. 

1156.  It  is  not  the  practice  for  the  office  to 
supplement  the  proofs  upon  one  side  or  the 
other  in  an  interference  case,  and  it  is  no 
more  permissible  for  it  to  bring  new  evidence 
into  a  case  after  the  proofs  are  closed  when 
the  opposing  party  has  no  opportunity  to 
rebut  it  than  it  is  for  one  of  the  parties  to 
do  so.    Id. 

1157.  It  is  a  fundamental  rule  that  a  party 
should  be  permitted  to  meet  and  explain  any 
evidence  presented  against  him,  and  therefore 
all  facts  to  be  considered  in  the  decision 
should  be  brought  out  in  the  testimony.    Id. 

1158.  Where  exhibits  are  put  in  evidence, 
the  character  of  which  necessitates  a  micro- 
scopic examination  to  determine  what  is  dis- 
closed by  them,  as  no  idea  of  their  structure 
or  the  process  of  making  them  can  be  had 
from  mere  inspection  by  the  naked  eye,  Held, 
that  a  microscopic  examination  is  proper  and 
that  while  it  is  by  no  means  conclusive  it  is 
sufficient  to  raise  a  doubt  in  the  mind  of  the 
observer  that  the  plates  were  made  as  alleged. 


by  the  process  of  the  issue.    Flora  v.  Powric, 

C.  D.  1903,  106  O.  G.  2288. 

1159.  Where  exhibits  are  introduced  in  evi- 
dence and  it  is  not  pretended  that  everything 
on  those  exhibits  is  discernible  to  the  naked 
eye,  Held,  that  an  examination  of  the  exhibits 
by  the  aid  of  a  microscope  is  legally  admissi- 
ble. To  hold  otherwise  would  even  preclude 
a  judge  with  defective  eyesight  the  right  to 
use  his  spectacles.  *Flora  v.  Powrie,  C.  D. 
1904,  109  O.  G.  2443. 

1160.  The  results  of  the  use  of  the  micro- 
scope are  admissible  as  evidence  and  are  pre- 
sumed to  be  correct  until  shown  to  the  con- 
trary, upon  the  same  principle  that  the  results 
of  the  working  of  many  nthcr  scientific  instru- 
ments are  presumed  to  be  correct.     *ld. 

1161.  Where  the  cxamincrs-in-chief  in  pass- 
ing upon  the  patentability  of  the  issue  to  one 
of  the  parties  considered  evidence  presented 
in  an  interference  between  that  party  and  a 
stranger  to  the  present  interference.  Held, 
that  the  examiners-in-chief  were  not  therein 
in  error  under  the  circumstances,  though  this 
evidence  was  not  open  to  the  opposing  party, 
and  had  not  been  considered  by  the  primary 
examiner.  Harrison  v.  Shoemaker,  C.  D. 
190r),  117  O.  G.  1164. 

1162.  A  letter  which  a  party  refused  to  in- 
troduce into  evidence  on  the  ground  that  it 
related  to  a  secret  invention  cannot  be  filed 
in  this  office  merely  for  the  inspection  of  the 
various  tribunals  who  may  consider  the  case. 
If  the  letter  did  not  tend  to  affect  the  final 
judgment,  there  would  be  no  reason  for  con- 
sidering it,  and  if  it  did,  the  opposing  party 
would  have  a  right  to  inspect  and  meet  it  as 
he  might  see  fit.     Lindstrom  v.  Lipschutz,  C. 

D.  1906,   120  O.  G.  904. 

1163.  Constitutional  rights  of  a  corporate 
defendant  in  an  action  for  the  forfeiture  of 
infringing  copies  of  a  painting  protected  by 
copyright  are  not  violated  by  the  admission  in 
evidence  of  the  replevin  proceedings  under 
which  such  infringing  copies  were  seized  over 
the  objection  that  by  such  proceedings  rights 
imder  the  fourth  and  fifth  amendments  to  the 
federal  constitution  were  invaded.  **Amer- 
ican  Tobacco  Company  v.  Werckmeister,  C.  D. 
1908,  133  O.  G.  1433. 

(b)  Admissions. 

1164.  Where  an  admission  is  made  before 
one  of  the  tribunals  of  this  office,  the  party 
making  such  admission  should  not  thereafter 


INTERFERENCE,  XXI,  (c),  (d),  1. 


261 


be  allowed  to  repudiate  it.     Zimmer  v.  Hor- 
ton,  C.  D.   1908,  137  O.  G.  2219. 

1165.  An  admission  made  at  a  hearing  be- 
fore a  tribunal  that  was  to  pass  upon  the 
question  involved  in  the  case  binds  the  party 
making  it.  *Horton  v.  Zimmer,  C.  D.  1908, 
137  O.  G.  2223. 

(c)  Best. 

1166.  While  as  a  general  rule  the  best  evi- 
dence which  the  nature  of  the  case  admits  of 
must  be  adduced,  yet  where  the  non-produc- 
tion of  such  evidence  is  accounted  for  satis- 
factorily and  no  suspicion  attaches  for  not 
producing  it.  Held,  that  under  some  circum- 
stances this  rule  may  be  relaxed.  Shaffer  v. 
Dolan,  C.  D.  1903,  107  O.  G.  .'iSO. 

1167.  Where  the  question  is  not  what  are 
the  contents  of  a  written  instrument,  but  is 
merely  as  to  the  sale  of  a  business.  Held,  that 
the  testimony  of  the  parties  to  such  sale  is 
not  secondary  evidence.  J.  R.  Newberry  Co. 
v.  Jos.  J.  O'Donohue's  Sons,  C.  D.  1904,  111 
O.  G.  299. 

1168.  Where  the  parties  testify  to  a  sale  of 
a  business  without  introducing  in  evidence 
the  inventory  upon  which  the  sale  was  based 
or  the  books  in  which  entries  of  the  sale  were 
entered,  they  rely  upon  weaker  evidence  than 
they  could  produce;  but  their  testimony  as  to 
the  sale  is  not  for  this  reason  secondary  evi- 
dence.   Id. 

1169.  Where  all  of  the  evidence  which  might 
be  construed  to  establish  one  of  the  essential 
parts  of  a  case  is  found  in  testimony  to  con- 
clusions by  a  witness  where  facts  upon  which 
these  conclusions  were  based  should  have 
been  given  and  this  testimony  was  duly  ob- 
jected to,  Held,  that  the  objections  will  be 
sustained  and  the  testimony  rejected.  Peck- 
ham  v.  Price,  C.  D.  190.5,  118  O.  G.  1934. 

1170.  Where  witness  testified  to  duties  of 
employee  to  employer  in  details  beyond  the 
provisions  of  the  express  contract  of  employ- 
ment. Held,  that  he  should  have  set  forth  the 
conversations  and  acts  of  the  parties  upon 
which  his  belief  and  opinion  as  to  such  duties 
were  founded.     Id. 

1171.  An  affidavit  of  a  physician  attached 
to  a  deposition,  setting  forth  the  physical  con- 
dition of  a  witness  who  has  left  the  stand 
during  cross-examination  because  of  inability 
to  stand  the  strain  of  cross-examination,  forms 
no  part  of  such  deposition.    The  affiant  should 


have   been   called   and   sworn   to   testify   as   a 
witness.     *Id. 

(d)  Documentary. 
1.  In  General. 

1172.  Where  it  appeared  that  in  an  inter- 
ference proceeding  one  of  the  parties  offered 
in  evidence  copies  of  certain  letters  contained 
in  certain  letter-books  and  on  objection  by 
counsel  for  the  other  party  the  letter-books 
were  themselves  put  in  evidence  with  the  un- 
derstanding that  they  should  remain  in  pos- 
session of  the  party  offering  them,  subject  to 
production  upon  notice,  and  where  it  further 
appeared  that  upon  failure  of  such  party  to 
produce  these  books  on  a  motion  the  exam- 
iner of  interferences  required  him  to  produce 
these  books,  but  permitted  him  to  seal  up  cer- 
tain portions  foreign  to  the  case  before  pro- 
ducing them  for  the  inspection  of  counsel  for 
the  opposing  party.  Held,  that  the  letter-books 
having  been  introduced  into  the  case  as  evi- 
dence were  in  evidence  in  so  far  as  anything 
contained  in  them  is  relative  to  the  case  for 
all  purposes  and  must  be  open  to  the  inspec- 
tion of  the  opposing  counsel  without  restric- 
tion. The  relevancy  of  matter  contained  in 
said  books  cannot  be  left  to  the  determination 
of  the  party  introducing  them.  Boch  v.  Locke, 

C.  D.  1898,  85  O.  G.  1226. 

1173.  Where  every  document  of  importance 
introduced  in  the  case  to  fix  the  date  of  dis- 
closure by  A.  before  September  24  is  open 
to  suspicion  and  needs  explanations,  which 
are  not  furnished  by  the  testimony,  Held,  that 
the  evidence  is  at  least  inherently  weak  and 
not   convincing.     Blackman   v.   Alexander,   C. 

D.  1904,  113  O.  G.  1703. 

1174.  Where  a  party  testifies  that  letters 
offered  in  evidence  were  received  by  him 
through  the  mail  in  answer  to  letters  written 
by  himself,  Held,  that  the  letters  offered  were 
sufficiently  proved  for  admission  and  consid- 
eration as  part  of  the  evidence.  Briggs  v. 
Lillie  V.  Cook  v.  Jones  and  Taylor,  C.  D.  1905, 
116  O.  G.  871. 

1175.  Where  certain  letters,  checks,  and 
testimony  were  offered  to  prove  activity  in 
connection  with  the  invention  at  a  certain  time, 
Held,  that  though  these  taken  separately 
would  afford  but  slight  support  to  the  case, 
when  taken  collectively  and  in  the  absence  of 
anything  to  the  contrary  this  evidence  must 
be  accepted  as  convincing.     Id. 


262 


INTERFERENCE,  XXI.  (d),  2. 


1176.  Where  ohjcction  had  been  made  to 
the  introduction  of  letters  on  the  ground  that 
their  execution  had  not  been  sufficiently 
proved,  Held,  that  the  objection  was  not  ten- 
able, as  the  letters  were  introduced  merely  as 
collateral  evidence  relating  to  the  conduct  of 
the  party,  and  the  fact  that  they  were  re- 
ceived in  due  course  of  mail  and  acted  upon 
by  the  writer  and  the  addressee  was  sufficient 
proof  of  genuineness.  *Jones  &  Taylor  v. 
Cooke,  C.  D.  1905,  117  O.  G.  1493. 

1177.  Where  objections  had  been  made  to 
the  introduction  of  letters  and  checks  on  the 
ground  that  it  was  not  shown  that  they  re- 
lated to  the  invention  in  issue.  Held,  that 
though  the  correspondence  does  not  set  out 
the  invention  and  might  have  related  to  some 
other  improvement  in  typewriters,  there  is  no 
reasonable  doubt  in  view  of  the  testimony  and 
surrounding  circumstances  that  the  corre- 
spondence and  checks  do  relate  to  the  pres- 
ent invention.    ♦Id. 

1178.  The  statements  in  a  memorandum  of 
a  note-book  produced  by  French,  one  of  the 
interfering  parties,  and  alleged  to  disclose  the 
invention  in  issue,  Held,  insufficient  to  prove 
conception  where  it  appears  that  the  entry 
was  seen  by  no  one  and  there  is  no  corrobora- 
tive evidence  on  the  point  except  a  statement 
of  another  witness  that  French  produced  such 
a  book  at  a  given  date.  *French  v.  Halcomb, 
C.  D.   1906,  120  O.  G.  1824. 

1179.  An  inventor  after  having  testified  in 
regard  to  his  conception  and  the  work  done 
thereon  produced  a  shorthand  diary  and  read 
a  number  of  entries  from  the  diary  showing 
dates  and  memoranda  of  work  done.  Of  this 
evidence  the  court  said :  "Burson  is  a  man 
over  seventy  years  of  age  and  appears  to 
have  kept  a  diary  for  fifty  years  in  which  he 
made  a  daily  record  of  events.  There  is 
nothing  in  the  appearance  of  this  diary  to  ex- 
cite suspicion.  The  dates  follow  consecutive- 
ly. It  is  true  that  the  record  is  in  shorthand 
after  the  Pittman  system ;  but  it  appears  that 
interpretation  thereof  could  be  made  with 
sufficient  certainty  by  one  skilled  in  that  meth- 
od. *  *  *  We  see  no  substantial  difference 
between  this  and  the  ordinary  use  of  mem- 
oranda by  a  witness  to  refresh  his  memory." 
♦Burson  v.  Vogel,  C.  D.  1907,  131  O.  G.  942. 

2.  Business  Entries. 

1180.  Where  a  certified  copy  of  an  applica- 
tion was  introduced  in  evidence,  but  no  proof 


was  made  as  to  the  application  having  been 
allowed,  field,  that  as  the  commissioner  had 
examined  the  files  of  his  office  and  found  that 
the  said  application  had  been  formally  allowed 
and  had  considered  the  fact  in  making  his 
decision  it  was  sufficient  proof  that  the  appli- 
cation had  been  allowed.  *Cain  v.  Park,  C. 
D.  1899,  86  O.  G.  797. 

1181.  Where  the  junior  party  to  establish 
a  material  date  called  witnesses  who  testified 
from  recollection  that  their  company  moved 
from  a  store  on  New  Year's  of  1888  and  the 
senior  party  introduces  record  evidence  show- 
ing that  they  paid  rent  for  this  store  until 
October,  1890,  Held,  that  the  rebuttal  testi- 
mony of  a  clerk  in  the  employ  of  the  junior 
party  that  he  was  sent  to  collect  rent  from  a 
tenant  who  had  sublet  this  store  is  not  suffi- 
cient to  rebut  the  presumption  from  the  rec- 
ord evidence  that  they  occupied  the  store  at 
that  time,  particularly  as  neither  the  alleged 
tenant  nor  the  member  of  the  firm  from  whom 
she  is  alleged  to  have  sublet  were  called  or 
their  absence  satisfactorily  accounted  for. 
.\uerbach  &  Sons  v.  Hall  &  Hayward  Com- 
pany, C.  D.  1904,  111  O.  G.  806. 

1182.  Entries  made  by  a  bookkeeper  in  the 
shop-books  in  his  regular  course  of  business 
are  entitled  to  more  weight  than  mere  "notes" 
made  by  an  employee  in  a  pocket  note-book. 
Blackman  v.  Alexander,  C.  D.  1904,  113  O.  G. 
1703. 

1183.  Where  a  ledger  is  introduced  in  evi- 
dence to  fix  a  date  by  an  entry  therein,  but 
the  person  who  made  the  entry  and  who  is 
presumed  to  have  had  personal  knowledge  of 
the  facts  was  not  called  to  corroborate  it, 
Held,  that  neither  the  ledger  nor  the  entry 
are  proved.     Id. 

1184.  A  rent-book  kept  by  a  private  party 
in  the  ordinary  course  of  his  business  stands 
upon  the  same  footing  as  the  books  of  the 
trader  or  merchant.  For  entries  in  such  books 
to  be  admissible  it  is  not  merely  necessary 
that  they  be  made  contemporaneous  with  the 
facts  to  which  they  relate,  but  it  is  necessary 
that  the  entries  be  made  by  parties  having 
personal  knowledge  of  the  facts  and  be  cor- 
roborated by  their  testimony  if  living  and  ac- 
cessible or  by  proof  of  their  handwriting  if 
dead  or  insane  or  beyond  the  reach  of  the 
process  of  commission  of  the  court.  Auer- 
bach  &  Sons  v.  Hall  &  Hayward  Co.,  C.  D. 
1904,  111  O.  G.  806. 

1185.  Such  a  rent-book  is  not  evidence  per 
se;  but  with  the  testimony  of  the  person  who 


INTERFERENCE,  XXI,  (d),  3. 


263 


made  the  entries  all  objection  was  removed 
and  the  book  was  properly  admitted  in  evi- 
dence.    Id. 

1186.  Where  R.  testified  that  certain  letters 
of  K.  introduced  in  evidence  were  received 
by  him  in  the  ordinary  course  of  business, 
that  he  is  familiar  with  the  handwriting  of  K. 
and  that  these  letters  are  in  the  handwriting 
of  K.  and  the  signatures  are  K.'s,  Held,  that 
the  letters  are  sufficiently  proved  and  are  prop- 
erly introduced  in  evidence.  Royce  v.  Kemp- 
shall,  C.  D.  1906,  125  O.  G.  1347. 

1187.  Where  neither  the  original  letters  nor 
the  letter-press  book  are  introduced  in  evi- 
dence, but  certain  alleged  copies  of  letters  of 
R.  to  K.  have  been  introduced  as  exhibits,  but 
no  one  has  testified  or  certified  that  the  al- 
leged copies  are  true  copies  of  the  original 
letters  or  of  the  letter-press  copies.  Held,  that 
they  are  entitled  to  no  consideration.     Id. 

1188.  Where  K.  was  called  on  to  produce 
the  original  letters  of  R.  to  K.,  but  failed  to 
do  so,  whereupon  R.  in  his  deposition  quoted 
said  letters  from  a  letter-press  book  and  testi- 
fied that  he  wrote  the  letters  and  that  all  the 
statements  contained  in  them  are  true,  but  the 
letter-press  book  was  not  introduced  in  evi- 
dence, although  produced  at  the  examination, 
and  counsel  for  K.  was  given  the  privilege  of 
e.xamining  the  portions  of  said  book  contain- 
ing copies  of  the  letters,  but  was  denied  ac- 
cess to  the  entire  book.  Held,  that  R.  had  the 
right  to  use  the  letters  in  his  letter-press  book 
as  a  means  of  refreshing  his  memory,  and 
the  fact  that  he  did  not  introduce  his  letter- 
press book  in  evidence  does  not  warrant  the 
suppression  of  his  testimony  concerning  said 
letters.     Id. 

1189.  Books  produced  at  the  examination 
of  a  witness  for  the  purpose  of  refreshing  his 
memory  need  not  be  offered  in  evidence. 
(Laas  and  Sponenburg  v.  Scott,  C.  D.  1906, 
621,  122  O.  G.  352;  McCormick  v.  Cleal,  C.  D. 
1898,  492,  83  O.  G.  1514.)  Bay  State  Belting 
Co.  v.  Kelton-Bruce  Mfg.  Co.,  C.  D.  1907,  127 
O.  G.  1580. 

1190.  Where  certain  books  were  referred 
to  by  a  witness  for  the  purpose  of  refreshing 
his  recollection,  and  opposing  counsel,  who 
was  given  an  opportunity  to  examine  them, 
did  not  interpose  any  objection  to  the  books 
or  cross-examine  the  witness  relative  to  the 
entries.  Held,  that  a  subsequent  refusal  to  pro- 
duce the  books  for  inspection  or  to  offer  them 
in  evidence  does  not  warrant  the  suppression 


of  any  part  of  the  deposition  of  the  witness 
who  referred  to  said  books.     Id. 

1191.  Where  a  party  to  an  interference  who 
is  in  possession  of  original  copies  of  letters 
written  in  the  regular  course  of  business  is 
asked  to  produce  them,  so  that  they  may  be 
used  as  evidence,  but  fails  to  do  so,  although 
he  has  ample  time  therefor,  letter-press  copies 
produced  by  the  proper  custodian  of  the  same 
may  be  admitted  with  the  same  force  and  ef- 
fect as  the  originals  without  throwing  open 
the  entire  letter-press  book  to  the  inspection 
of  the  opposing  party.  *Kempshall  v.  Royce, 
C.   D.  1907,  129  O.  G.  3162. 

1192.  Where  witnesses  have  an  independent 
recollection  of  events  and  the  dates  of  their 
occurrence,  the  records  of  which  are  accessi- 
ble to  opposing  counsel,  it  is  unnecessary  that 
documentary  evidence  be  produced  as  a  means 
of  refreshing  their  recollection.  Ebersole  v. 
Durkin,  C.  D.  1908,  132  O.  G.  842. 

1193.  Where  a  party  attempts  to  fix  a  cer- 
tain date,  as  to  which  he  has  no  independent 
recollection,  by  reference  to  the  dates  in  a 
cash-book  showing  when  another  party  was 
absent,  and  the  cash-book  also  shows  that  such 
party  was  absent,  at  other  times  not  remote. 
Held,  that  the  evidence  is  not  sufficient  to  fix 
the  earlier  date  rather  than  the  later.  ♦How- 
ard V.  Bowes,  C.  D.  1908,  137  O.  G.  733. 

1194.  The  production  of  a  book  purporting 
to  show  the  date  of  a  sale  to  which  a  witness 
has  testified  adds  nothing  by  way  of  corro- 
boration of  a  witness's  oral  testimony  where 
the  person  who  kept  the  book  is  not  called 
to  identify  it.  Actiengesellschaft  Paulaner- 
brau  Salvatorbrauerei  v.  Conrad  Seipp  Brew- 
ing Co.,  C.  D.  1908,  135  O.  G.  1121. 

1195.  Entries  in  an  account  book  more  than 
thirty  years  old,  which  was  found  in  proper 
custody  and  was  free  from  all  grounds  of  sus- 
picion. Held,  properly  received  in  evidence. 
*H.  C.  Cole  &  Company  v.  The  William  Lea 
&  Sons  Company,  C.  D.  1910,  156  O.  G.  259. 

3.  Drawings,  Etc. 

1196.  Where  an  inventor  testifies  to  a  dis- 
closure of  his  invention  by  means  of  a  cer- 
tain sketch  and  the  sketch  is  not  produced  and 
it  is  held  that  the  oral  testimony  given  is  in- 
sufficient to  establish  the  fact  of  disclosure. 
Held,  that  the  sketch  itself,  if  produced,  is 
material  to  the  case.  Robinson  v.  Townsend 
V.  Copeland,  C.  D.  1903,  107  O.  G.  1376. 

1197.  Where  a  drawing  was  accidentally 
discovered  under  a  scrap-heap  in   the  corner 


S64 


INTERFERENCE,  XXI,  (c). 


of  an  office  in  a  manufacturing  establisliment 
and  it  was  only  found  in  cleaning  out  the  of- 
fice preparatory  to  finishing  the  interior  of 
the  office  in  hardwood,  Held,  that  the  draw- 
ing was  lost  and  only  found  by  accident  and 
it  constitutes  newly-discovered  evidence.     Id. 

1198.  Where  a  drawing  is  introduced  in 
evidence  which  is  claimed  to  have  been  made 
before  September  24  by  a  witness  who  was 
not  called,  but  who  was  in  the  habit  of  dating 
his  drawings,  Held,  that  it  is  significant  that 
the  paper  has  been  cut  down  to  the  irregular 
shape  of  the  figure,  removing  that  portion 
upon  which  the  date  would  ordinarily  appear. 
Blackman  v.  Alexander,  C.  D.  1904.  113  O.  G. 
5703. 

1199.  Where  W.'s  drawings  of  the  invention 
were  numbered  42  and  43  and  it  was  testified 
that  these  drawings  had  been  kept  in  a  drawer 
with  many  others  to  which  C.  had  access  and 
C.  admits  that  he  started  to  make  blue-prints 
of  the  drawings  in  that  drawer  and  numbered 
the  drawings  as  he  did  so,  and  drawings  from 
that  drawer  are  afterwards  produced  by  C. 
numbered  40,  41,  44,  45,  and  46,  Held,  that 
W.'s  contention  that  C.  derived  the  invention 
from  W.  is  strongly  corroborated  by  this  evi- 
dence. Wilkin  V.  Cleveland,  C.  D.  1905,  US 
O.  G.  2533. 

1200.  Where  drawings  bearing  certain  dates 
and  showing  all  the  features  of  the  issue  are 
offered  in  evidence  and  the  witnesses  to  the 
drawings  testify  that  their  names  were  placed 
on  the  drawings  on  the  dates  given,  but  it 
does  not  appear  that  any  of  these  witnesses 
understood  the  invention  in  issue  except  in 
a  general  way  and  there  is  no  testimony  what- 
ever to  show  the  condition  of  the  drawings 
at  the  time  they  were  witnessed,  Held,  that 
it  is  doubtful  if  these  drawings  can  be  con- 
sidered a  disclosure  of  the  invention  in  issue 
at  the  dates  they  bear.  Kirkegaard  and  Job- 
sen,  C.  D.  1906,  125  O.  G.  1700. 

1201.  Where  sketches  claimed  to  have  been 
made  by  the  inventor  were  not  produced,  but 
the  inventor  testified  that  the  sketches  were 
not  made  for  preservation  and  were,  in  fact, 
not  preserved.  Held,  that  no  unfavorable  in- 
ference should  be  drawn  from  their  non-pro- 
duction. Turnbull  v.  Curtis,  C.  D.  1906,  120 
O.  G.  2442. 

1202.  Where  objection  was  made  at  the 
hearing  to  certain  alleged  working  drawings 
introduced  in  evidence  on  the  ground  that 
they  are  blue-prints,  and  therefore  secondary 
evidence,    but    no    specific    objection    on    this 


ground  was  made  at  the  time,  but  merely  the 
one  general  objection  at  the  close  of  the  de- 
position of  the  witness  during  whose  testi- 
mony they  were  introduced,  to  the  effect  that 
the  deposition  of  the  witness  is  objected  to  as 
being  irrelevant  and  incompetent,  and  that 
this  objection  also  includes  the  exhibits,  Held, 
that  this  objection  was  insufficient  to  entitle 
it  to  consideration.  Emmett  v.  FuUagar,  C. 
D.   1906,  124  O.  G.  2178. 

1203.  The  testimony  of  a  witness  that  pho- 
tographic copies  of  application  drawings  are 
"practically  the  same  thing"  as  a  prior  con- 
struction is  very  materially  weakened  by  the 
admission  under  cross-examination  that  he 
did  not  understand  such  drawings  because  he 
did  not  understand  mechanical  drafting. 
Actiengesellschaft  Paulanerbrau  Salvatorbrau- 
erei  v.  Conrad  Seipp  Brewing  Co.,  C.  D.  1908, 
135  O.  G.  1121. 

1204.  Testimony  as  to  the  making  of  draw- 
ings. Held,  insufficient  to  establish  that  they 
were  made  at  the  dates  claimed,  since  it  did 
not  appear  that  they  had  remained  in  the  pos- 
session of  the  witnesses  since  the  time  they 
were  said  to  have  been  shown  to  them  and 
since  the  witnesses  were  unable  to  absolutely 
identify  the  drawings  as  being  in  the  same 
condition  as  at  that  time.  Miller  v.  Black- 
burn, C.  D.  1911,  172  O.  G.  549. 

(e)  Exhibits. 

1205.  Cards  attached  to  exhibits  and  bear- 
ing signatures  subsequently  identified  by  the 
signers  and  stated  by  them  to  have  been  made 
at  dates  specified  upon  the  cards  are  not,  in 
the  absence  of  identification  by  the  signers 
of  the  exhibits  themselves,  sufficient  proof  of 
the  existence  of  the  exhibits  themselves  at 
the  dates  mentioned.  Guilbert  v.  Killinger, 
C.  D.  1898,  82  O.  G.  1561. 

1206.  The  rules  of  the  patent  office  do  not 
require  that  paper  exhibits  should  be  repro- 
duced, so  that  copies  may  be  furnished  for  the 
convenience  of  the  various  tribunals  of  the 
office  and  for  the  counsel  for  the  adverse  par- 
ties. In  the  absence  of  such  rule  it  is  not 
within  the  discretion  of  the  commissioner  of 
patents  to  make  such  requirement.  Freeman 
v.  Bernstein  et  al.,  C.  D.  1898,  83  O.  G.  155. 

1207.  Held,  further,  that  no  authority  is 
vested  in  the  examiner  to  remove  affidavits 
and  accompanying  exhibits  from  the  files  of 
the  case,  that  power,  so  far  as  the  office  is 
concerned,  being  vested  in  the  commissioner. 


INTERFERENCE,  XXI,  (f),  i,  2. 


265 


McKenzie  v.  Gillespie  v.  Ellis  v.  McElroy  v. 
Ocumpaugh  v.  Norton,  C.  D.  1900,  93  O.  G. 
2103. 

1208.  A  motion  that  an  investigation  be 
made  as  to  the  alleged  loss  of  a  part  of  an 
exhibit  in  the  case  in  the  patent  office  denied, 
since  that  is  a  matter  which  should  have  been 
settled  in  the  patent  office  before  taking  an 
appeal  to  the  court.  *I31ackford  v.  Wilder, 
C.  D.  1903,  104  O.  G.  580. 

1209.  Affidavits  would  be  permitted  to  show 
or  explain  material  changes  that  may  have 
occurred  by  accident  or  otherwise  in  an  ex- 
hibit after  its  transmission  to  the  court,  but 
they  will  not  be  received  by  the  court  in  con- 
tradiction or  correction  of  the  record  of  the 
proceedings  in  the  patent  office.     *Id. 

1210.  The  question  whether  a  certain  ex- 
hibit was  a  reduction  to  practice  depends  upon 
its  condition  at  the  time  it  is  claimed  to  have 
been  reduced  to  practice  and  not  at  the  time 
that  it  was  introduced  in  evidence,  and  this  can 
be  shown  only  by  testimony.     *Id. 

1211.  Where  the  testimony  fails  to  show 
that  the  device  when  made  embodied  a  cer- 
tain element  included  in  the  issue.  Held,  that 
the  allegation  that  such  element  was  in  the 
device  when  introduced  in  evidence  and  was 
subsequently   lost  is   immaterial.     *Id. 

1212.  Where  the  inventor  Flora  testifies  that 
he  made  certain  screens  in  evidence  by  the 
process  of  the  issue,  but  the  screens  them- 
selves do  not  show  how  they  were  made,  and 
the  only  corroborating  witnesses  testify  that 
the  screens  were  made,  but  do  not  know  how 
they  were  made,  Held,  that  Flora  has  not  es- 
tablished the  fact  that  he  performed  the  pro- 
cess of  the  issue.  *Flora  v.  Powrie,  C.  D.  1904, 
109  O.  G.  2443. 

1213.  Where  certain  screens  in  evidence  are 
said  by  the  inventor  to  have  been  made  by  the 
process  of  the  issue,  but  an  examination  of 
those  screens  with  a  microscope  by  the  tribu- 
nals of  the  patent  office  indicates  that  they 
were  not  made  by  that  process,  Held,  suffi- 
cient to  determine  the  matter  against  him  in 
view  of  the  onus  upon  him  of  proving  his  case. 
*Id. 

1214.  To  guard  against  accidental  changes 
in  exhibits  resulting  from  frequent  handling, 
it  would  be  prudent  for  the  party  offering 
them  to  have  them  particularly  described  in 
respect  of  appearance,  construction  and  oper- 
ation at  the  time  that  he  offers  them  in  evi- 
dence. Greenwood  v.  Dover,  C.  D.  1904,  109 
O.  G.  2172. 


1215.  An  allegation  that  an  exhibit  has  been 
tampered  with  after  the  grant  of  the  con- 
testant's patent  should  be  based  upon  the  tes- 
timony in  the  record  or  convincing  surround- 
ing circumstances  which  would  tend  to  support 
such  a  charge.  Spaulding  v.  Norden,  C.  D. 
1904,   113  O.  G.  2091. 

1216.  The  failure  of  a  party  to  an  interfer- 
ence to  produce  the  first  device  alleged  to 
have  been  made  by  him  embodying  the  inven- 
tion, Held,  to  be  immaterial  where  a  later  de- 
vice made  by  him  is  produced  which  the  testi- 
mony shows  was  a  reproduction  of  the  form- 
er. *Saunders  v.  Miller,  C.  D.  1909,  146  O.  G. 
.'50.5. 

(f)  Presumptions, 
i.  In  General. 

1217.  The  decision  of  the  commissioner  of 
patents  awarding  priority  to  Finkenbiner  re- 
versed, since  the  evidence  is  not  sufficient  to 
overcome  the  presumption  in  favor  of  Beals 
arising  from  his  having  been  the  first  to  file 
his  application.  *Beals  v.  Finkenbiner,  C.  D. 
1898,  82  O.  G.  593. 

1218.  Where  it  is  alleged  in  a  preliminary 
statement  that  the  invention  was  disclosed  to 
a  certain  person,  Held,  that  the  fact  that  this 
person  was  not  called  to  testify  when  he  could 
have  been  called  raises  a  presumption  that  his 
testimony  had  it  been  given  would  not  tend 
to  support  the  allegation  in  the  preliminary 
statement.  Flora  v.  Powrie,  C.  D.  1903,  106  O. 
G.  2288. 

1219.  Where  a  machine  was  made  and  used 
by  F.'s  company,  Held,  that  it  is  to  be  pre- 
sumed that  F.  was  the  inventor  even  if  there 
is  no  testimony  to  that  effect.  The  suggestion 
that  some  stranger  to  the  record  is  the  in- 
ventor is  not  pertinent.  Herman  v.  FuUman, 
C.  D.  1903,  107  O.  G.  1094. 

2.  From  Conduct. 

1220.  Where  a  party  makes  application  for 
a  patent  upon  one  invention  and  claims  to 
have  had  at  that  time  a  superior  invention  of 
the  same  precise  nature  and  does  not  file  an 
application  for  that  other  invention  until  long 
afterward,  Held,  that  his  claim  is  not  to  be 
credited  unless  sustained  by  very  clear  and 
convincing  testimony.  *Sachs  v.  Hundhausen, 
C.   D.   1903,  105  O.   G.    1534. 

1221.  Where  S.  claims  to  have  made  the 
invention  in  1897  and  was  thereafter  employed 


266 


INTERFERENCE,  XXII. 


by  H.'s  company  which  he  knew  was  in  pur- 
suit of  some  such  device  and  he  failed  to  dis- 
close the  invention  to  the  officers  of  the  com- 
pany, although  he  did  suggest  other  improve- 
ments, Held,  that  his  conduct  indicates  that 
he  did  not  have  the  invention  as  alleged. 
♦Slaughter  v.  Halle,  C.  D.  1903,  102  O.  G.  409. 

1222.  Where  the  circumstances  are  such 
that  it  would  have  been  most  natural  for  S. 
to  have  disclosed  the  invention  to  a  company 
engaged  in  making  such  devices  and  he  fails 
to  do  so  until  stimulated  to  activity  by  a 
knowledge  of  what  his  opponent  was  doing. 
Held,  that  the  presumption  that  he  did  not 
have  the  invention  is  stronger  than  the  testi- 
mony of  witnesses.    *Id. 

1223.  Where  .\.  testified  that  he  disclosed  the 
invention  to  B.  on  September  24  by  means  of 
a  "Sketch  Block"  which  had  plainly  written  on 
it  in  two  places  "Sep.  12,"  it  is  inconceivable 
how  B.,  if  the  facts  were  as  stated,  would  go 
into  an  interference  with  A.,  alleging  in  his 
preliminary  statement  no  date  earlier  than 
September  24.  Blackman  v.  Alexander,  C.  D. 
1904,  113  O.  G.   1703. 

1224.  Where  two  inventors  are  in  the  em- 
ploy of  the  same  company  and  one  admits 
that  he  knew  that  the  other  had  conceived  an 
invention  and  made  a  disclosure  of  the  same 
by  means  of  drawings  and  a  model  and  also 
admits  that  in  view  of  that  knowledge  he  said 
nothing  at  that  time  to  any  one  connected  with 
the  company  about  his  alleged  prior  concep- 
tion of  the  same  generic  invention,  when  it 
is  shown  by  the  record  that  it  was  his  duty 
to  speak.  Held,  that  the  fact  that  he  remained 
silent  raises  a  strong  presumption  that  he  did 
not  at  that  time  have  a  conception  of  the 
invention.  Barrett  v.  Harter,  C.  D.  1904,  112 
O.  G.  729. 

1225.  Where  an  inventor  did  not  protest 
when  he  knew  that  another  inventor  was  pre- 
paring drawings  and  a  model  disclosing  the 
invention,  when  the  facts  show  that  he  was 
bound  by  all  conscience  and  equity  to  disclose 
the  invention  to  his  employer,  nor  did  he  im- 
mediately file  an  application  for  a  patent,  but 
waited  for  more  than  a  year  to  do  so.  Held, 
that  such  actions  are  not  in  accordance  with 
the  laws  of  ordinary  human  conduct  and  raise 
a  presumption  that  he  is  not  the  first  inventor. 
Id. 

1226.  Where  H.'s  testimony  is  in  direct  con- 
flict with  the  testimony  of  several  witnesses 
who  testify  in  behalf  of  B.,  and  grave  pre- 
sumptions are  raised  against  H.'s  claim  by  his 


policy  of  silence  whe'n  it  was  his  duty  to  speak 
and  when  H.'s  actions  are  directly  contrary 
to  the  ordinary  course  of  human  conduct, 
Held,  that  these  considerations  are  sufficient 
to  overcome  the  mere  oral  testimony  of  such 
interested  witnesses  as  a  wife  and  a  father- 
in-law,  which  testimony  rests  solely  on  their 
ability  to  remember,  unaided  by  any  docu- 
ments, occurrences  which  are  alleged  to  have 
taken  place  some  four  years  prior  to  the  time 
that  the  testimony  of  their  witnesses  was 
taken.    Id. 

1227.  When  it  appears  that  a  patent  was 
previously  issued  to  one  of  the  parties  em- 
bodying the  general  features  and  performing 
the  same  functions  as  that  performed  by  the 
invention  of  the  issue,  which  later  invention 
differs  from  the  patented  device  in  the  omis- 
sion of  one  element  and  the  modification  of 
the  remaining  elements  to  make  them  perform 
the  functions  hitherto  performed  by  all,  and 
the  inventor  claims  to  have  invented  both  de- 
vices at  about  the  same  time,  Held,  that  the 
fact  that  when  he  disclosed  the  first  invention 
to  his  attorney  he  failed  to  speak  about  omit- 
ting one  of  the  parts  raises  the  presumption 
that  he  had  no  intention  at  the  early  date  of 
using  the  combination  with  the  part  omitted 
or  that  such  a  construction  could  be  used 
practically,  but  that  it  was  an  afterthought, 
brought  about  by  subsequent  events.  Pierce 
V.  Hallett,  C.  D.  1905,  117  O.  G.  265. 

1228.  Where  it  is  claimed  that  a  party  made 
an  invention  at  a  certain  time,  but  he  continued 
thereafter  to  experiment  upon  other  inventions 
for  securing  the  same  ultimate  results,  and 
full  records  and  reports  made  at  the  time  do 
not  mention  the  invention  in  issue,  and  pat- 
ents were  taken  out  upon  the  other  inventions, 
but  no  application  was  then  filed  upon  the  in- 
vention in  issue,  Held,  that  the  conduct  of  the 
inventor  at  the  time  is  stronger  evidence 
against  his  claim  to  invention  than  is  the  tes- 
timony of  himself  and  witnesses  in  favor  of 
the  same.  Sherwood  v.  Drewsen,  C.  D.  1906, 
124  O.  G.  1203. 

XXII.  Ex  Parte  Proceedings. 

1229.  Where  a  party  makes  claims  made 
by  another  applicant  and  contends  that  they 
are  anticipated  not  only  by  the  references  cited 
by  the  examiner,  but  by  others  sufficiently  old 
to  anticipate  the  other  applicant,  and  takes 
an  appeal  to  obtain  a  ruling  upon  that  ques- 
tion. Held,  that  action  upon  the  other  applica- 


INTERFERENCE,  XXIII. 


267 


tion  should  not  be  suspended  to  await  the 
decision  upon  the  appeal.  E.x  parte  Coleman, 
C.  U.  1903,  107  O.  G.  1662. 

1230.  An  applicant  has  no  right  to  argue  ex 
parte  the  question  whether  certain  claims  shall 
be  allowed  to  another  applicant.     Id. 

1231.  Where  an  applicant  is  notified  of  a 
probable  interference  and  files  a  protest 
against  its  declaration  on  the  ground  that  the 
supposed  interfering  applicant  has  no  right 
to  make  the  claim  because  of  a  prior  inter- 
ference. Held,  that  the  protest  will  be  dis- 
missed without  considering  the  merits  of  the 
question.  In  re  Sarfert,  C.  D.  1903,  102  O. 
G.  1049. 

1232.  The  question  whether  an  interference 
is  proper  should  be  raised  after  the  declara- 
tion by  a  motion  to  dissolve  under  Rule  122. 
Id. 

1233.  Where  all  of  the  evidence  is  before 
the  ofiice  upon  which  to  base  a  final  determina- 
tion upon  priority,  such  final  determination 
should  in  general  be  reached  before  consid- 
eration of  ex  parte  rights  is  undertaken.  Dun- 
bar V.  Schellinger,  C.  D.  1906,  121  O.  G.  G87. 

XXIII.  Interference  in  Fact. 

1234.  An  interference  does  not  exist  mere- 
ly because  the  parties  have  claims  in  identical 
words,  since  to  interfere  those  words  must 
mean  and  refer  to  the  same  thing.  Newton  v. 
Woodward,  C.  D.  1898,  84  O.  G.  2020. 

1235.  Terms  of  reference  copied  by  a  party 
from  an  opponent's  application  after  it  is 
open  to  his  inspection  cannot  change  the  in- 
vention and  must  be  considered  as  meaning 
the  same  things  as  those  originally  employed. 
If  there  was  no  interference  as  to  the  inven- 
tion originally  disclosed  a  mere  change  in  the 
words  of  reference  will  not  produce  it.     Id. 

1236.  An  issue  which  is  not  a  claim  made  by 
either  party  is  not  a  proper  issue.  (Hammond 
v.  Hart,  ante,  .'■)2,  83  O.  G.  743.)     Id. 

1237.  When  the  claim  of  one  party  includes 
a  step  in  the  process  not  included  in  the  issue 
or  the  claim  of  the  other  party,  there  is  no 
interference  in  fact.  Bullier  v.  Willson,  C.  D. 
1S99,  87  O.  G.   180. 

1238.  Mere  similarity  in  the  wording  of 
claims  does  not  show  that  there  is  an  interfer- 
ence in  fact  unless  those  words  construed  in 
the  light  of  the  disclosures  made  by  the  par- 
ties mean  the  same  thing.  Edgecombe  v.  East- 
man v.  Houston,  C.  D.  1899,  89  O.  G.  707. 

1239.  Where  the  claim  of  one  party,  when 
read    in   connection    with    his    disclosure   and 


the  terms  employed  are  given  their  ordinary 
and  intended  meaning,  covers  features  not 
disclosed  by  the  other  party.  Held,  that  there 
is  no  interference  in  fact.    Id. 

1240.  It  is  competent  for  parties  to  an  in- 
terference case  to  show  in  the  development 
of  their  testimony  that  their  devices  are  differ- 
ent, and  thereby  preclude  any  adjudication  of 
priority  that  would  prevent  either  one  from 
being  protected  in  the  possession  of  his  own 
device.  The  prima  facie  and  ex  parte  adjudi- 
cation of  identity  which  was  the  necessary 
prerequisite  to  the  declaration  of  interference 
might  be  shown  upon  judicial  investigation 
to  have  been  erroneous,  and  the  interests  of 
justice  would  seem  to  demand  that  it  should 
be  open  to  the  parties  to  make  such  showing, 
and  when  such  showing  is  made  as  part  of 
the  cause  and  in  the  ordinary  course  of  the 
litigation  upon  the  merits  it  enters  into  the 
substance  of  the  cause  and  is  proper  to  be 
considered  by  the  court  of  appeals  on  appeal 
from  the  final  decision  of  the  commissioner. 
*Bechman  v.  Wood,  C.  D.  1899,  89  O.  G.  24.-)9. 

1241.  In  an  interference  if  the  counts 
though  identical  in  language  cover  mechanisms 
which  differ  very  materially  in  construction 
and  in  operation  there  is  no  interference  in 
fact.  It  is  well  settled  that  interferences  are 
declared  between  things  and  not  between 
words.    Goss  v.  Scott,  C.  D.  1901,  96  O.  G.  842. 

1242.  Where  an  applicant  discloses  a  novel 
means  for  changing  the  gearing  and  thereby 
the  speed  of  a  bicycle  by  back  pressure  upon 
the  pedals  and  claims  it  in  combination  with  a 
sprocket-wheel  and  another  applicant  claims 
the  same  means  in  combination  with  a  bevel- 
gear  and  the  examiner  regards  the  sprocket- 
wheel  and  bevel-gear  an  equivalent  in  the 
combination,  Held,  that  both  cases  cannot 
properly  be  allowed.  Ex  parte  Thompson,  C. 
D.  1902,  98  O.  G.  227. 

1243.  Where  two  parties  claim  the  same 
combination  and  real  invention  and  the  claims 
differ  merely  in  the  statement  of  the  specific 
form  of  one  of  the  elements  of  the  combina- 
tion and  the  two  forms  are  mechanical  equiva- 
lents of  each  other.  Held,  that  each  device 
would  infringe  the  other  party's  claim  and 
that  there  is  a  conflict  between  the  claims.    Id. 

1244.  Where  two  devices  are  structurally 
the  same  and  are  capable  of  performing  the 
same  function  there  is  an  interference  in  fact 
between  them  even  though  they  are  not  used 
for  the  same  purpose.  Blue  v.  Power  v. 
Owens,  C.  D.  1902,  101  O.  G.  2076. 


«6S 


INTERFERENCE,  XXIII. 


1245.  Where  two  applications  disclose  and 
claim  the  same  process,  there  is  an  interfer- 
ence in  fact,  notwithstanding  one  of  the  ap- 
plications may  disclose  other  steps  preliminary 
to  those  forming  the  process  of  the  issue, 
which  preliminary  steps,  though  preferably 
employed,  are  not  essential  to  a  practice  of 
the  process  in  issue.  Power  v.  Proeger,  C. 
D.  1902,  101  O.  G.  3108. 

1246.  Where  two  processes  as  described  and 
claimed  are  the  same  except  that  the  applica- 
tion on  which  one  of  them  is  based  describes 
as  a  preferable  though  not  an  essential  mode 
of  procedure  the  employment  of  an  additional 
step  intermediate  of  the  steps  forming  the 
process  of  the  issue,  there  is  an  interference 
in  fact  on  the  processes  as  claimed.    Id. 

1247.  The  question  of  interference  in  fact 
and  the  question  of  patentability  of  the  issue 
must  be  presumed  to  have  been  finally  deter- 
mined in  the  patent  office.  They  will  not  be 
inquired  into  by  the  court,  except  perhaps  in 
very  rare  and  exceptional  cases.  *Luger  v. 
Browning,  C.  D.  1903,  104  O.  G.  1123. 

1248.  Where  the  issue  of  an  interference  is 
in  the  words  of  a  claim  allowed  in  a  patent, 
and  the  interfering  applicant  testifies  that  the 
language  used  in  the  claim  to  define  the  in- 
vention is  not  in  his  opinion  strictly  correct. 
Held,  that  this  testimony  is  not  sufficient  of 
itself  to  warrant  the  conclusion  that  the  in- 
ventions at  issue  are  not  the  same.  Mac- 
donald  v.  Edison,  C.  D.  1903,  10.5  O.  G.  973. 

1249.  Where  each  party's  claims  include 
elements  not  found  in  the  claims  of  the  other 
party,  Held,  that  there  is  no  interference  in 
fact.  Wheildon  v.  Tench,  C.  D.  1903,  lOG  O. 
G.  7G3. 

1250.  Where  the  claims  are  for  an  article 
of  manufacture  and  they  mean  the  same  thing 
in  each  of  the  applications  involved  in  an  in- 
terference. Held,  that  there  is  an  interference 
in  fact  notwithstanding  the  fact  that  one  of 
the  applications  discloses  specifically  a  method 
of  manufacture  while  the  other  application  is 
silent  as  to  the  method  by  which  the  article 
is  produced.  Hopfelt  v.  Read,  C.  D.  1903,  106 
O.  G.  767. 

1251.  Where  the  issue  is  broad,  covering 
only  common  features  of  construction.  Held. 
that  there  is  an  interference  in  fact  notwith- 
standing differences  in  details  of  construction 
not  claimed.  Auerbach  and  Guting  v.  Wis- 
well,  C.  D.  1904,  108  O.  G.  289. 

1252.  When  the  claims  in  issue  are  made 
by  each  of  the  parties,  the  only  question   to 


be  considered  in  determining  the  existence  or 
non-e-xistence  of  interference  in  fact  is  wheth- 
er the  terms  of  the  claims  have  the  same  or 
different  meanings  in  the  applications  of  the 
respective  parties.  Greer  v.  Christy,  C.  D. 
190.-),  116  O.  G.  297. 

1253.  When  the  devices  of  the  parties  are 
identical  in  substance  so  far  as  they  are  de- 
fined by  the  claims  in  issue,  though  such  de- 
vices differ  in  specific  characteristics  to  which 
said  claims  are  not  limited.  Held,  that  there  is 
interference  in  fact  as  to  such  claims.     Id. 

1254.  It  is  fundamental  that  the  patent  office 
should  not  allow  identical  claims  to  two  differ- 
ent parties  for  invention  in  the  same  art.  Such 
claims  either  interfere  or  one  of  them  does 
not  correctly  describe  the  device  upon  which 
it  is  supposed  to  be  based.  Elspass  v.  Taylor, 
C.  D.  1905,  117  O.  G.  1798. 

1255.  Where  the  counts  in  question  are 
claims  made  identically  by  both  parties,  the 
only  question  raised  by  the  contention  of  non- 
interference in  fact  is  whether  the  terms  of 
the  counts  have  the  same  meaning  when  ap- 
plied to  the  inventions  of  the  respective  par- 
ties. Pfingst  v.  Anderson,  C.  D.  1905,  118 
O.  G.  1067. 

1256.  In  determining  the  question  of  inter- 
ference in  fact  specific  differences  in  the  de- 
vices of  the  parties  to  which  the  issues  are 
not  limited  must  not  be  mistaken  for  differ- 
ences in  the  essential  character  of  the  inven- 
tions or  elements  to  which  the  same  terms 
have  been  applied  by  the  different  parties.    Id. 

1257.  Where  the  terms  of  an  issue  are 
generic,  there  may  be  an  interference  in  fact, 
although  the  devices  of  the  parties  may  differ 
in  specific  details.  Sanders  v.  Melvin,  C.  D. 
1905,  119  O.  G.   1921. 

1258.  Where  different  parties  have  the  same 
claims  and  each  has  proper  foundation  for 
them  in  his  application,  Held,  that  either  the 
inventions  which  these  claims  represent  in  the 
different  cases  are  the  same  or  each  party  has 
failed  to  distinguish  his  invention  from  that 
of  the  other  party  and  that  in  the  latter  event 
the  claim  is  indefinite  and  ambiguous  in  each 
case  and  should  be  rejected.  Ex  parte  Cutler, 
C.  D.  1906,  123  O.  G.  665. 

1259.  Since  the  statutes  require  that  par- 
ties shall  distinguish  their  inventions  from  the 
inventions  of  others  and  that  they  shall  par- 
ticularly point  out  and  distinctly  claim  their 
inventions.  Held,  that  the  definition  of  the  in- 
vention  and   the   distinctions   between   it   and 


INTERFERENCE,  XXIII. 


289 


the  inventions  of  others  should  be  carried  into 
the  claims.     Id. 

1260.  Where  the  claims  of  interfering  par- 
tics  are  in  identical  language  and  each  party 
has  a  construction  responding  in  function  to 
the  broad  terms  thereof,  there  is  an  interfer- 
ence in  fact,  although  the  constructions  are 
specifically  different.  Gordon  v.  Wentworth, 
C.  D.  1906,  120  O.  G.  1163. 

1261.  General  terms  may  be  used  which  ap- 
ply equally  to  two  structures  which  are  not 
the  same,  as  may  be  shown  when  those  terms 
are  read  and  construed  in  the  light  of  the 
specifications  behind  them;  but  in  most  cases 
where  two  structures  are  not  specifically  the 
same  and  the  art  does  not  warrant  a  generic 
claim  the  language  of  the  claims  can  be  made 
precise  and  to  fittingly  describe  each  struc- 
ture so  that  the  use  of  identical  language  be 
avoided.  Podlesak  and  Podlesak  v.  Mcln- 
ncrney,  C.  D.  1906,  120  O.  G.  2127. 

1262.  Where  the  claim  read  in  the  light 
of  the  specification  of  one  party  means  one 
thing  and  the  same  claim  read  in  the  light  of 
the  specification  of  another  party  means  an- 
other thing.  Held,  that  the  same  phraseology 
should  not  be  employed.     *Id. 

1263.  Where  the  issue  if  broadly  construed 
read  upon  the  devices  of  both  parties,  but 
consisted  of  a  claim  which  had  been  allowed 
over  a  reference  only  upon  a  narrow  construc- 
tion inapplicable  to  the  devices  of  one  party, 
and  it  appeared  that  such  construction  of  the 
claims  was  necessary  in  order  to  sustain  the 
same,  Held,  that,  in  the  opinion  of  the  court, 
an  error  had  been  committed  and  that  the 
case  should  be  remanded  undecided  to  the 
patent  office  for  further  consideration  as  to 
identity  of  invention.     *Id. 

1264.  Held,  that  apparently  neither  party  is 
entitled  to  a  claim  for  the  feature  in  contro- 
versy which  should  dominate  the  other  and 
that  apparently  the  claims  presented  by  both 
and  made  the  issue  should  be  so  re-formed 
that  each  should  have  a  specific  claim,  pro- 
vided each  could  draw  one  to  avoid  the  ref- 
erence.   *Id. 

1265.  There  may  be  an  interference  in  fact 
on  a  generic  issue  based  on  two  devices  which 
are  specifically  different.  Kolb  v.  Heming- 
way V.  Curtis,  C.  D.  1906,  120  O.  G.  244.5. 

1266.  Where  the  .same  language  is  used  by 
different  parties  to  define  different  inventions, 
it  is  an  unavoidable  conclusion  that  they  have 
not  distinguished  their  inventions  from  each 
other.     In  such  cases  if  the  inventions  are  in 


fact  different  and  each  party  has  a  right  to 
make  the  claim,  the  language  of  the  claim 
must  be  ambiguous  or  indefinite  and  should 
be  amended  to  clearly  distinguish  the  inven- 
tions before  the  issue  of  patents  thereon. 
Howell  V.  Hess,  C.  D.  1906,  122  O.  G.  2393. 

1267.  Where  the  petitioner  was  allowed 
claims  found  in  a  patent  granted  to  another 
party  upon  an  application  filed  during  the 
pendency  of  the  petitioner's  application,  but 
the  examiner  refused  to  declare  an  interfer- 
ence on  the  ground  that  the  terms  of  the 
claims  mean  different  things  in  the  different 
cases  and  that  there  is  no  interference  in 
fact.  Held,  that  the  examiner  has  improperly 
construed  the  plain  broad  terms  of  the  com- 
mon claims  in  view  of  different  specific  struc- 
tures shown  by  the  parties  and  in  view  of  dif- 
ferent specific  purposes  dwelt  upon  in  the 
specifications  and  has  thereby  imposed  upon 
the  claims  specific  meanings  not  required  by 
the  language  of  the  claims  themselves,  that 
the  claims  when  properly  read  are  undoubted- 
ly generic  to  the  two  disclosures,  and  that  in- 
terference should  be  declared.  Ex  parte  Cut- 
ler, C.  D.  1906,  123  O.  G.  655. 

1268.  Where  each  of  two  applicants  for  pat- 
ent has  made  a  claim  in  identical  language 
and  the  claim  reads  without  violence  to  the 
proper  natural  meaning  of  its  terms  upon  the 
devices  disclosed  by  each  party,  but  the  pat- 
entable invention  which  this  claim  is  sup- 
posed to  represent  is  found  only  in  the  device 
of  one  of  the  parties.  Held,  that  the  claim  fails 
to  define  the  invention.  Podlesak  and  Podle- 
sak V.  Mclnnerney,  C.  D.  1906,  123  O.  G.  1989. 

1269.  Where,  so  far  as  the  invention  in  issue 
is  concerned,  the  same  results  arc  accomplish- 
ed by  substantially  the  same  or  equivalent 
means  in  the  device  of  each  party  and  the 
terms  of  the  issue  have  the  same  meaning  in 
each  case.  Held,  that  there  is  interference  in 
fact.  Heintzelman  and  Camp  v.  Vraalstad  and 
Doyle,  C.  D.  1906,   120  O.  G.  906. 

1270.  Where  the  claims  of  the  issue  cover 
only  such  elements  of  the  structures  as  are 
common  to  the  two  cases  and  the  specific  dif- 
ferences in  the  structure  shown  are  not  such 
as  to  make  the  terms  have  different  meanings 
in  the  two  cases,  Held,  that  there  is  an  inter- 
ference  in    fact.     Noble    v.    Sessions,    C   D. 

1906,  121  O.  G.  1348. 

1271.  The  issue  as  interpreted  in  the  light 
of  the  specification  of  the  party  first  making 
the  same  is  limited  to  an  improved  means  for 
protecting  the  necessary  joints  in  conductors 


270 


INTERFERENCE.  XXIV,  (a),  (b). 


for  high-tension  currents  of  electricity.  The 
invention  of  the  other  party  is  an  improvement 
in  insulating-conductors,  his  plan  of  insula- 
tion at  the  joints  being  the  same  as  along  the 
entire  length  of  the  conductor.  Held,  that  the 
latter  has  no  right  to  make  the  claim,  the 
resemblance  of  the  two  devices  being  acci- 
dental rather  than  real.    *Vielc  v.  Cummings, 

C.  D.  1908,  134  O.  G.  777. 

1272.  Where  the  interference  involves  a 
structure  creating  a  "main"  and  a  "leakage" 
flux,  it  is  immaterial  for  the  purposes  of  the 
interference  that  the  flux  described  as  the 
"main  flux"  by  one  party  is  called  the  "leakage 
flux"  by  the  other,  and  vice  versa,  in  their 
respective  specifications.  Pratt  v.  de  Fer- 
ranli  and  Hamilton,  C.  D.  19nn,  148  O.  G.  369. 

1273.  A  decision  dissolving  an  interference 
on  the  ground  that  there  is  no  interference  in 
fact  involving  two  design  applications  is,  in 
effect,  a  ruling  that  each  design  is  patentable 
notwithstanding  the  other.  Ex  parte  Litle, 
Jr.,  C.  D.  1910,  160  O.  G.  1272. 

XXIV.  Issue. 
(a)  In  General. 

1274.  One  claim  cannot  properly  be  included 
under  two  separate  issues,  since  it  must  neces- 
sarily be  broader  or  narrower  than  one  of 
those  issues.  (Hammond  v.  Hart,  ante,  52, 
83  O.  G.  743.)     Kane  v.  Brill  and  Adams,  C. 

D.  1898,  84   O.   G.  1142. 

1275.  It  is  not  proper  to  include  several 
claims  in  one  application  under  one  issue  since 
they  cannot  all  mean  the  same  thing,  and 
therefore  confusion  as  to  the  meaning  of  the 
issue  would  be  likely  to  result  in  taking  testi- 
mony. (Wolfenden  v.  Price,  C.  D.  1898,  87, 
83  O.  G.  1801.)  Sadtler  v.  Carmichael  v. 
Smith,  C.  D.  1899,  86  O.  G.  1498. 

1276.  It  is  proper  to  include  two  applications 
of  the  same  party  under  one  issue  when  the 
invention  in  controversy  is  disclosed  and 
claimed  in  both  cases.     Id. 

1277.  Where  there  is  but  a  single  issue  in 
the  interference,  but  the  interference  letter 
states  that  said  issue  constitutes  claim  2  of 
Houston's  original  application  and  also  em- 
braces the  substance  of  claims  1  and  4,  re- 
spectively, of  two  divisional  applications.  Held. 
that  under  the  present  practice  Houston 
should  be  notified  that  these  claims  will  be 
held  to  await  the  result  of  the  interference 
and  will  be  rejected  at  the  termination  of  the 
interference  if  priority  is  awarded  to  his  op- 


ponent. If,  however,  they  are  not  substan- 
tially the  same  claims  and  such  claims  are 
made  by  his  opponent,  then  said  claims  should 
be  placed  in  one  or  more  ditTercnt  interfer- 
ences. In  any  event  the  divisional  applications 
are  not  properly  involved  in  this  interference. 
Eastman  v.  Houston,  C.  D.  1899,  87  O.  G. 
1781. 

1278.  Where  both  parties  arc  applicants,  an 
issue  should  not  be  formulated  which  includes 
features  not  disclosed  by  one  of  the  parties 
merely  because  in  the  examiner's  opinion  the 
devices  are  not  patentably  different;  but  if 
there  is  a  common  patentable  invention,  that 
invention  alone  should  be  made  the  issue  if 
the  parties  desire  to  and  do  in  fact  make 
claims  to  it.  Edgecombe  v.  Eastman  v.  Hous- 
ton, C.  D.  1899,  89  O.  G.  707. 

1279.  It  is  necessary  to  orderly  procedure 
that  the  issue  remain  fixed  throughout  the 
interference  proceeding.  To  permit  a  party 
to  change  the  issue  at  will,  to  add  to  it  so  as 
to  include  matter  not  covered  by  its  original- 
ly, would  lead  to  the  greatest  confusion. 
Brill  &  Adams  v.  Uebelacker,  C.  D.  1902,  99 
O.  G.  296G. 

1280.  A  limitation  that  the  fuse  is  "within 
the  casing"  is  broad  enough  to  included  the 
fuse  anywhere  within  the  outer  surface  of 
the  casing.  It  need  not  be  within  the  cavity 
of  the  casing,  but  may  be  embedded  in  the 
walls.  *Sachs  v.  Hundhausen,  C.  D.  1903, 
lOo  O.  G.  1534. 

(b)   Patenlability  of. 

1281.  Where  Y.  presented  for  consideration 
the  question  of  the  non-patentability  of  the 
issue  of  the  interference  in  view  of  prior  pat- 
ents. Held,  that  this  is  a  question  which  will 
not  be  passed  upon  at  final  hearing  on  prior- 
ity by  the  commissioner ;  but  the  primary  ex- 
aminer is  directed  to  consider  it  after  the  in- 
terference has  been  finally  determined.  Young 
V.  Donnelly,  C.  D.  1898,  82  O.  G.  1417. 

1282.  The  facts  disclosed  by  this  case  do 
not  make  it  clear  that  the  issue  of  the  inter- 
ference is  not  patentable.  It  is  one  of  those 
cases  where  there  can  be  an  honest  difference 
of  opinion,  and  it  therefore  does  not  come 
within  the  exception  referred  to  in  Hopkinson 
V.  Hunter  (C.  D.  1896,  1,  74  O.  G.  653),  Ben- 
der V.  Hoffmann  (C.  D.  1898,  262,  85  O.  G. 
1737),  and  Breul  v.  Smith  (ante,  44,  86  O. 
G.  1635).  Anderson  and  Dyer  v.  Lowry,  C 
D.  1899,  89  O.  G.  1861. 


INTERFERENCE,  XXIV,  (c),  (d),  1,  2. 


271 


1283.  Where  a  motion  is  made  to  remand 
the  case  to  the  patent  office  to  consider  the  pat- 
tentability  of  the  issue  in  view  of  certain  pat- 
ents cited  and  it  appears  that  the  patent  of- 
fice has  not  reserved  the  question  of  pat- 
entability for  future  consideration,  Held,  that 
the  motion  must  be  denied.  *L,uger  v.  Brown- 
ing, C.  D.  1903,  104  O.  G.  1123. 

1284.  In  formulating  the  issue  of  an  inter- 
ference the  question  as  to  the  patentability  of 
ihe  claims  cannot  be  reserved  for  subsequent 
ex  t'arte  consideration,  since  an  interference 
as  to  an  unpatentable  claim  would  involve  a 
moot  question.  O'Connor  v.  Vanderbilt,  C.  D. 
l'J03,  102  O.  G.  1782. 

1285.  Where  the  inclusion  of  a  multiplicity 
of  counts  in  the  issue  was  complained  of. 
Held,  that  if  the  counts  were  separately  pat- 
entable there  was  no  irregularity  in  including 
all  of  them  in  the  interference.  Normand  v. 
Krimmelbein,  C.  D.  1905,  118  O.  G.  2251. 

1286.  Where  an  appeal  was  taken  on  ground 
of  irregularity  in  declaration  from  refusal  to 
dissolve  because  of  multiplicity  of  counts  in 
the  issue.  Held,  that  the  propriety  of  the  in- 
clusion of  all  the  counts  depended  upon  their 
separate  patentability  and  was  therefore  a 
question  of  merits  not  to  be  considered  upon 
direct  appeal  to  the  commissioner.     Id. 

1287.  Where  in  their  decision  on  priority 
one  examiner-in-chief  found  the  issue  to  be 
patentable  and  another  found  it  unpatentable 
and  the  third  was  absent.  Held,  that  the  case 
is  not  distinguished  in  substance  from  one 
where  all  three  found  the  issue  unpatentable, 
since  by  their  divided  opinion  they  affirm  the 
conclusion  of  the  primary  examiner  that  the 
issue  is  patentable.  Potter  v.  Mcintosh,  C.  D. 
1906,  120  O.  G.  1823. 

(c)   Bar  to  Other  Applications. 

1288.  Where  it  appears  that  the  claims  in  an 
application  do  not  involve  invention  over  the 
issue  of  an  interference  of  which  the  appli- 
cant was  held  not  to  be  the  first  inventor. 
Held,  that  the  interference  record  constitutes 
a  bar  to  the  grant  of  the  claims.  Ex  parte 
Carpenter,  C.  D.  1904,  110  O.  G.  2233. 

1289.  Where  it  appears  that  the  process 
claimed  by  C.  was  invented  by  M.  at  the  time 
M.  invented  the  article  produced  by  that  pro- 
cess, of  which  article  M.  has  been  held  in  an 
interference  proceeding  to  be  the  prior  in- 
ventor, Held,  that  M.  is  also  the  prior  inventor 
of  the  process  and  C.  is  not  entitled  to  claims 
for  the  same.     Id. 


1290.  Where  claims  in  an  application  do 
not  involve  invention  over  the  issue  of  an 
mterference  of  which  the  applicant  was  held 
not  to  be  the  first  inventor.  Held,  that  the  in- 
terference record  constitutes  a  bar  to  the 
grant  of  the  claims.  Ex  parte  Voley,  C.  D. 
1905,    114  O.   G.  2.59. 

1291.  Where  the  unsuccessful  party  in  the 
interference  has  two  applications  pending  at 
the  same  time,  some  of  the  claims  in  the  ap- 
plication not  directly  involved  in  the  interfer- 
ence being  held  not  to  involve  invention  over 
the  issue  of  the  interference,  Held,  that  they 
were  properly  rejected  upon  the  record  of  the 
interference.     Id. 

1292.  Where  a  decision  of  priority  of  in- 
vention has  been  awarded  against  one  of  the 
contestants  and  certain  claims  in  another  ap- 
plication of  his  have  been  rejected  upon  the 
interference  record,  Held,  that  an  affidavit 
filed  in  the  second  application  under  the  pro- 
visions of  Rule  75  is  merely  an  attempt  to  es- 
cape the  effect  of  a  judgment  entered  after 
an  inter  partes  proceeding  and  that  such  affi- 
davit was  properly  ignored.     Id. 

(d)  Counts  of. 
1.  In  General. 

1293.  In  declaring  an  interference  each 
count  of  the  issue  should  be  patentably  dis- 
tinct from  all  the  others.  There  is  no  neces- 
sity of  making  several  counts  unless  they  dif- 
fer materially  from  each  other,  for  to  do  so 
would  merely  lead  to  confusion  in  taking 
testimony.  Votey  v,  Wuest,  Jr.  v.  Doman,  C. 
D.  1904,  111  O.  G.  1627. 

1294.  If  several  claims  made  by  all  the 
parties  to  an  interference  are  patentably  dis- 
tinct, they  should  be  made  separate  counts  of 
the  issue.  Where,  however,  the  claims  are 
not  patentably  distinct,  an  issue  consisting 
of  a  single  count  will  be  sufficient  to  deter- 
mine the  question  of  priority,  and  the  parties 
should  be  notified  that  if  priority  of  invention 
is  awarded  against  them  their  claims  which 
do  not  contain  patentable  subject-matter  over 
the  issue  will  be  rejected.     Id. 

2.  Interpretation. 

1295.  The  mere  fact  that  two  witnesses  may 
disagree  as  to  the  construction  of  the  issue 
or  as  to  what  devices  come  within  its  terms 
is  no  good  ground  for  a  dissolution  oi  the 
interference  or  a  definition  by  the  primary 
examiner   of   the   meaning   of   the   issue,   and 


273 


INTERFERENCE,  XXIV,  (d),  2. 


therefore  proceedings  should  not  be  suspended 
for  a  consideration  of  the  matter.  Pupin  v. 
Hutin  and  Lcblanc  v.  Stone,  C.  D.  1898,  82 
O.  G.  1418. 

1296.  In  introducing  their  testimony  in  any 
case  the  parties  must  put  their  own  construc- 
tion upon  the  issue,  and  to  suspend  proceed- 
ings at  every  time  during  the  taking  of  testi- 
mony that  there  is  uncertainty  or  dispute  as 
to  whether  a  particular  exhiliit  comes  within 
its  terms  would  lead  to  endless  contests  and 
is  not  proper  practice.    Id. 

1297.  For  the  speedy  and  orderly  conduct  of 
interference  proceedings,  it  is  desirable  that 
there  should  be  the  least  possible  room  for 
dispute  as  to  the  meaning  of  the  interference 
issue.  Fitzgerald  v.  Guillement,  C.  D.  1898, 
84  O.  G.  2017. 

1298.  Where  the  meaning  of  the  interfer- 
ence issue  was  not  clear  and  not  free  from 
ambiguity,  the  interference  was  dissolved  and 
remanded  to  the  primary  examiner  for  re- 
declaration should  the  parties  make  inter- 
fering claims.  (Hammond  v.  Hart,  ante,  52, 
83  O.  G.  743,  cited.)     Id. 

1299.  In  the  consideration  of  an  interference 
the  office  is  no  more  competent  than  the  courts 
to  say  that  an  element  which  an  applicant  has 
placed  in  his  claims  is  an  immaterial  one,  es- 
pecially when  in  framing  the  issue  the  office 
had  made  the  element  a  part  thereof.  (Ham- 
mond V.  Hart,  C.  D.  1898.  52,  83  O.  G.  743,  and 
Wolfenden  v.  Price,  C.  D.  1898,  87,  83  O.  G. 
1801,  cited.)  Streat  v.  Freckleton,  C.  D.  1899, 
87  O.  G.  60.i, 

1300.  Where  one  of  the  parties  to  an  inter- 
ference who  is  an  applicant  had  before  him 
when  he  prepared  his  application  the  patent 
of  his  opponent  and  adopted  the  claims  of 
said  opponent  for  the  apparent  purpose  of  an 
interference.  Held,  that  the  applicant  is  not 
entitled  to  demand  a  construction  of  the  claim 
of  the  patentee  which  would  render  it  invalid 
by  reason  of  that  which  he  himself  had  accom- 
plished if  it  can  be  upheld  by  any  other  rea- 
sonable interpretation  not  necessarily  incon- 
sistent with  the  statement  of  the  patentee. 
*Ruete  V.  Elwell,  C.  D.  1899,  87  O.  G.  2119. 

1301.  Where  a  claim  is  held  allowable  on 
appeal  on  the  ground  that  it  contains  a  certain 
limitation  as  distinguishing  it  from  the  prior 
art.  Held,  that  the  issue  in  an  interference 
subsequently  based  upon  that  claim  cannot 
be  construed  as  not  including  that  limitation. 
Edgecombe  v.  Eastman  v.  Houston,  C.  D. 
1899,  89  O.  G.   707. 


1302.  Where  the  record  of  the  cases,  taken 
in  connection  with  the  prior  art,  shows  that 
the  parties  started  from  different  positions  in 
the  art,  were  working  on  different  lines,  and 
the  features  of  novelty  in  the  devices  produced 
are  different,  there  can  be  no  interference  in 
fact  between  the  two  inventions.  Valiquet  v. 
Johnson,  C.  D.  1900,  92  O.  G.  1795. 

1303.  Where  J.'s  whole  idea  was  to  so  sup- 
p<jrt  his  diaphragm  that  it  could  vibrate  sub- 
stantially equally  throughout  its  area,  and  this 
he  accomplished  by  supporting  the  diaphragm 
from  the  middle  and  leaving  it  practically  free 
at  the  periphery  from  a  gasket  on  either  side, 
and  where  V.'s  invention  contemplates  only 
a  structure  wherein  the  periphery  of  the  dia- 
phragm is  held  against  a  gasket  by  the  stylus- 
bar,  and  consequently  the  diaphragm  does  not 
vibrate  equally  throughout  its  entire  area, 
Held,  that  there  is  no  interference  in  fact 
between  the  inventions.     Id. 

1304.  Where  J.'s  construction  differs  from 
that  of  Patent  No.  450,740  only  in  supporting 
the  diaphragm  from  its  center  on  the  stylus- 
bar,  and  he  expressly  disclaims  any  attempt 
to  cover  the  construction  of  Patent  No.  394,- 
10.",,  whereas  V.'s  construction  is  built  square- 
ly upon  and  differs  from  Patent  No.  394,105 
merely  in  adding  a  loos  gasket.  Held,  that 
there  is  no  interference  in  fact.    Id. 

1305.  Where  the  issue  covers  the  method  of 
tanning  which  consists  in  subjecting  the  skins 
to  the  action  of  a  certain  bath  and  one  party 
discloses  a  one-bath  process  using  that  bath 
and  also  a  two-bath  process  which  is  distinct 
from  the  one-bath  process,  using  it  as  the 
second  bath,  and  his  opponent  discloses  only 
a  one-bath  process,  Held,  that  the  issue  is 
limited  to  a  one-bath  process.  *Rosell  v. 
Allen,  C.  D.  1900,  92  O.  G.  1036. 

1306.  The  second  count,  which  covers  "a 
tanning-bath,"  Held,  to  be  broad  enough  to 
cover  either  that  used  in  a  one-bath  process 
where  it  performs  the  sole  function  of  tan- 
ning or  the  second  bath  of  a  two-bath  process 
where  it  acts  first  as  a  reducing  agent  and 
then  as  a  supplementary  tanning  agent.    *Id. 

1307.  Where  it  is  conceded  that  R.  was  the 
first  inventor  of  and  the  first  to  use  the  par- 
ticular bath,  but  always  as  the  second  bath  of 
a  two-bath  process  and  as  a  reducing  and  not 
a  tanning  bath.  Held,  that  he  is  not  the  first 
inventor  of  the  process  of  the  first  count  of 
the  issue,  which  is  construed  as  limited  to  a 
one-bath  process  of  tanning.     *Id. 


INTERFERENCE,  XXIV,  (d),  3. 


273 


1308.  Where  R.  used  the  bath  only  as  the 
second  bath  of  a  two-bath  process,  but  dis- 
covered that  it  acted  first  as  a  reducing  agent 
and  then  as  a  supplementary  tanning  agent. 
Held,  that  there  is  no  analogy  between  this 
certain  and  direct  result  of  the  invention  of 
the  bath  in  issue  and  those  accidental  results 
of  inventions  which  are  not  understood  or  ap- 
preciated by  the  inventors  and  which  are  held 
by  the  courts  to  be  immaterial.     *Id. 

1309.  The  language  of  the  issues,  "means 
applied  upon  the  flexing  connection  interme- 
diate its  ends  for  flexing  it,"  will  not  be  in- 
terpreted to  signify  flexing  means  intersecting 
the  straight  line  between  the  ends  of  the  flex- 
ing connection  when  not  actually  so  limited. 
Paul  V.  Hess,  C.  D.  1904,  113  O.  G.  847. 

1310.  Where  it  appears  that  the  primary 
examiner,  the  examiner  of  interferences,  and 
the  examincrs-in-chief  have  construed  an  issue 
broadly  and  the  commissioner  held  that  a  lim- 
ited construction  must  be  placed  upon  the 
issue  in  the  light  of  the  art.  Held,  that  the 
question  as  to  whether  the  primary  examiner 
erred  in  allowing  the  broad  claims  will  not 
be  considered  by  the  court  of  appeals,  though 
it  might  have  been  considered  by  the  com- 
missioner, and  as  the  interference  was  not 
dissolved  by  the  commissioner  a  machine 
which  comes  within  the  broad  terms  of  the 
issue  is  a  reduction  to  practice  of  that  issue. 
*Hillard  v.  Brooks,  C.  D.  1904,  111  O.  G.  302. 

1311.  Where  in  support  of  the  contention 
of  non-interference  in  fact  it  is  urged  that  a 
statement  in  the  issue  should  be  given  a  lim- 
ited construction,  and  it  appears  that  when  so 
construed  this  statement  imports  an  opera- 
tion which  does  not  necessarily  pertain  to 
the  elements  as  defined  in  the  count,  but  which 
depends  on  specific  characteristics  of  said  ele- 
ments to  which  the  count  is  not  limited,  Held. 
that  such  limited  construction  of  the  issue 
should  not  be  adopted.  Greer  v.  Christy,  C. 
D.  1905,  116  O.  G.  297. 

1312.  Held,  that  the  practice  in  the  patent 
office  of  imposing,  by  mere  interpretation  or 
construction,  specific,  or  definite  meanings 
upon  generic  or  indefinite  claims  of  applica- 
tions cannot  be  too  severely  criticised  and 
that  claims  should  be  construed  to  mean  ex- 
actly what  they  state  and  nothing  more. 
Briggs  V.  Lillie  v.  Cook,  v.  Jones  and  Taylor, 
C.  D.  190"),  116  O.  G.  871. 

1313.  Held,  that  claims  should  be  amended, 
not  construed,  to  avoid  references,  and  the 
same  course  should  be  followed  in   all  other 

18 


cases    when    the    meaning    of    claims    is    not 
clearly  expressed  by  their  language.    Id. 

1314.  Where  the  invention  was  given  to  the 
attorney  in  February  to  prepare  the  applica- 
tion for  patent  and  the  patent  office  drawings 
were  made  in  July  and  the  specification  pre- 
pared in  October,  Held,  that  the  party  was  not 
diligent.     Id. 

1315.  Where  there  were  several  months  of 
delay  in  filing  the  application  upon  which  the 
party  relied  for  constructive  reduction  to  prac- 
tice. Held,  that  the  delay  was  not  excused 
by  sickness  of  the  attorney  for  six  weeks  of 
this  time  or  by  excessive  pressure  of  work  in 
the  attorney's  office  and  that  the  party  was 
not  diligent.    Id. 

1316.  Where  the  issue  does  not  state  that 
two  parts  arc  integral  and  it  appears  that  in 
the  structure  of  one  of  the  parties  the  parts 
are  not  integral.  Held,  that  the  limitation  will 
not  be  read  into  the  issue  to  patentably  dis- 
tinguish it  from  a  reference  cited.  Seeley  v. 
Baldwin,  C.  D.  1905,  117  O.  G.  2633. 

1317.  The  meaning  given  to  the  counts  of 
an  interference  must  be  that  intended  by  the 
party  to  the  interference  first  making  the 
claim.  (Tracy  v.  Leslie,  C.  D.  1899,  306,  87 
O.  G.  891,  14  App.  D.  C.  126 ;  Ruete  v.  Elwcll, 
C.  D.  1899,  379,  87  O.  G.  2119,  15  App.  D.  C. 
21.)     Podlesak  and  Podlesak  v.  Mclnnerney, 

C.  D.  1906,  120  O.  G.  2127. 

1318.  Where  the  counts  of  the  issue  are 
claims  made  by  both  parties  and  allowed  by 
the  primary  examiner  and  they  are  clear  as 
to  scope,  they  will  not  be  limited  by  construc- 
tion beyond  the  plain  import  of  their  terms. 
Eschinger   v.    Drummond   &   Lieberknecht,   C. 

D.  1906,  121  O.  G.  1348. 

1319.  Where  the  claims  of  a  patentee  are 
copied  by  an  applicant  for  the  purpose  of 
provoking  an  interference,  an  issue  made  on 
such  claims  is  to  be  construed  in  the  light  of 
the  specification  of  the  patent.  •Bourne  v. 
Hill,  Jr.,  C.  D.  1906,  123  O.  G.  1284. 

1320.  Where  the  issue  includes  elements 
designated  "side  wings  and  the  central  portion 
of  the  belt"  and  neither  party  uses  this  ex- 
pression in  his  specification,  but  one  of  the 
parties  uses  the  word  "wings"  to  define  the 
support  of  the  outer  edge  of  the  belt,  while 
the  examiner  holds  that  the  words  "side 
wings"  have  reference  to  the  side  portions 
of  the  belt.  Held,  that  the  term  is  vague  and 
indefinite  and  that  the  interference  should  be 
dissolved  as  to  this  count  on  the  ground  of 
irregularity    in    the   declaration    and    that,    as 


274 


INTERFERENCE,  XXIV,  (d),  2. 


the  examiner  thinks  that  the  claim  is  patent- 
able as  understood  by  him,  the  interference 
should  be  suspended  and  the  parties  permitted 
to  substitute  for  the  present  claim  one  con- 
taining in  place  of  the  limitation  above  quoted 
the  words  "side  portions  and  the  central  por- 
tion of  the  belt."  Anderson  v.  Vrooman,  C. 
D.  1006,  123  O.  G.  2975. 

1321.  Held,  that  in  interpreting  claims  their 
terms  should  be  given  the  natural  meaning 
that  would  be  conveyed  to  a  person  skilled 
in  the  art  and  that  in  determining  the  ques- 
tion of  interference  in  fact  the  issue  should 
not  be  construed  to  have  a  more  limited  mean- 
ing than  necessitated  by  its  terms.  (Town- 
send  V.  Copeland  v.  Robinson,  C.  D.  1905,  559, 
119  O.  G.  2523.)  Locke  v.  Crebbin,  C.  D. 
1906,  124  O.  G.  317. 

1322.  In  construing  the  issue  the  language 
used  should  not  be  given  a  forced  meaning, 
nor  should  it  be  given  a  meaning  founded  upon 
specific  differences  in  the  devices  of  the  par- 
ties which  are  not  set  forth  in  the  issue.  Lcmp 
V.  Randall  and  Bates,  C.  D.  1906,  123  O.  G. 
319. 

1323.  A  claim  should  be  given  the  broadest 
interpretation  which  it  will  support,  and  limi- 
tations should  not  be  imported  into  the  claim 
from  the  specification  to  meet  the  exigencies 
of  the  particular  situation  in  which  the  claim 
may  stand  at  a  given  time.  *Miel  v.  Young, 
C.  D.  1907,  128  O.  G.  2532. 

1324.  Where  in  a  stone-saw  construction 
the  claim  calls  for  "removable  means  for  re- 
inforcing the  lower  ends  of  the  blades  during 
the  initial  part  of  a  cutting  operation"  and  it 
appears  that  the  device  of  Miel,  a  patentee, 
was  designed  to  prevent  the  blades  from  "chat- 
tering or  wabbling"  laterally,  while  Young's 
structure  is  for  the  purpose  of  enabling  the 
blades  of  the  saw  "to  stand  the  strain  for  their 
w'ork"  and  to  support  the  saw  longitudinally, 
Held,  that  there  is  no  limitation  in  the  claim, 
which  refers  broadly  to  reinforcing  means, 
which  necessitates  the  reading  into  the  claim 
of  structural  features  found  only  in  the  spe- 
cification of  the  patent.    *Id. 

1325.  A  claim  made  by  a  patentee  involved 
in  interference  with  an  applicant  which  refers 
broadly  to  reinforcing  means  should  not  be 
limited  by  construction  to  reinforcing  means 
operating  in  a  specified  way  where  there  is 
nothing  in  the  record  to  show  that  such  a 
limitation  is  necessary  to  render  the  claim 
patentable  over  the  prior  art  and  where  it  is 
n:)t  clear  that  the  reinforcing  means  disclosed 


by  the  applicant  does  not  operate  in  the  same 
way  as  that  disclosed  by  the  patentee.  Miel  v. 
Young,  C.  D.  1907,  126  O.  G.  2591. 

1326.  The  fact  that  one  of  the  parties  to 
an  interference  has  obtained  a  patent  should 
have  no  bearing  on  the  interpretation  of  a 
claim  in  issue  in  determining  the  right  of  an 
applicant  to  make  such  claim.  If  the  terms 
of  the  claim  do  not  in  their  ordinary  meaning 
define  the  invention  of  the  patentee  as  he 
wishes  to  have  it  defined,  he  may,  as  inti- 
mated in  Andrews  v.  Nilson  (C.  D.  1906,  717, 
123  O.  G.  1667),  apply  for  a  reissue.     Id. 

1327.  Since  the  claims  of  an  interference 
issue  are  to  be  construed  in  the  light  of  the 
application  of  the  party  first  making  them,  it 
would  be  manifestly  improper  for  the  com- 
missioner of  patents  to  read  into  them  for 
any  purpose  limitations  not  disclosed  in  the 
application  of  such  party.  *Sobey  v.  Hols- 
claw.  C.   D.  1907,  126  O.  G.  3041. 

1328.  Where  the  claim  in  issue  calls  for 
a  "plurality  of  blast  nozzles,"  a  device  which 
has  an  "oscillating  blast  nozzle"  cannot  be 
considered  as  a  reduction  to  practice  on  the 
ground  that  it  is  an  equivalent.  In  the  con- 
sideration of  an  interference  the  patent  office 
is  no  more  competent  than  the  courts  to  say 
that  an  element  which  an  applicant  has  placed 
in  his  claims  is  an  immaterial  one.  (Streat 
V.  Freckleton,  C.  D.  1899,  85,  87  O.  G.  695.) 
Collom  V.  Thurman,  C.  D.  1907,  131  O.  G.  359. 

1329.  While  applications  are  pending  in  this 
office  the  claims  thereof  will  be  construed  as 
broadly  as  the  ordinary  meaning  of  the  lan- 
guage employed  will  permit.  Junge  v.  Har- 
rington, C.  D.  1907,  131  O.  G.  091. 

1330.  The  party  who  first  presents  claims 
should  not  later  be  heard  to  urge  limitations 
upon  the  terms  thereof  which  might  readily 
have  been  expressed  therein  had  it  been  in- 
tended that  they  should  be  so  restricted.    Id. 

1331.  The  terms  of  an  interference  issue 
will  not  be  given  a  strained  or  unnatural 
meaning  or  be  construed  to  refer  to  something 
not  disclosed  by  either  party  in  order  to  in- 
clude within  the  issue  an  early  device  made 
by  one  of  the  parties.  Phillips  v.  Sensenich, 
C.  D.  1908,  132  O.  G.  677. 

1332.  The  claims  in  issue  which  were  first 
made  by  N.  were  not  in  his  specification  as 
originally  filed,  but  were  made  after  it  had 
been  amended.  Held,  that  the  meaning  of  the 
claims  must  be  determined  by  the  specifica- 
tion as  so  amended.  *Neuberth  v.  Lizotte,  C 
C.  1909,  141  O.  G.  1162. 


INTERFERENCE,  XXIV,   (e). 


27S 


1333.  Where  the  issue  of  an  interference  is 
in  clear  and  unambiguous  language  and  is 
capable  of  but  one  construction,  the  court 
will  not  read  into  it  a  limitation  not  expressed 
therein.  *Geltz  and  Hosack  v.  Crozier,  C.  D. 
11)09,  140  O.  G.  757. 

1334.  Where  a  party  copies  a  claim  of  a 
patent  for  the  purpose  of  interference,  it  must 
be  construed  in  the  light  of  the  disclosure  of 
the  patent;  but  this  rule  is  subject  to  the  lim- 
itation that  the  proceedings  in  the  patent  of- 
fice leading  to  the  grant  of  the  patent  must 
be  taken  into  consideration  in  determining 
the  scope  of  the  claim.  *Engel  v.  Sinclair, 
C.  D.  1910,  132  O.  G.  489. 

1335.  "A  limitation  in  a  claim  that  is  merely 
arbitrary  and  without  function  ought  not  to 
be  permitted  to  deprive  the  first  inventor  of 
reward  simply  because  the  one  first  to  file  an 
application  has  inserted  it."  *Arbetter  v. 
Lewis,  l.-)4  O.  G.  516. 

1336.  Where  in  an  interference  involving 
a  sewed  seam  the  sole  reason  assigned  for  the 
limitation  in  the  claim  "under  the  edge"  is 
concealment  of  one  of  the  threads  and  neither 
seam  accomplishes  that  result.  Held,  that  "the 
one  in  which  such  result  is  more  nearly  ac- 
complished ought  not  to  he  put  aside  for  the 
other."     *Id. 

1337.  The  question  of  the  scope  of  the  issue 
is  one  to  be  determined  by  the  tribunals  of  the 
office  under  the  well-settled  practice  of  giving 
claims  in  issue  the  broadest  construction  they 
will  support,  and  testimony  upon  this  question 
will  not  be  permitted.  Von  Keller  v.  Hayden 
v.  Kruh  V.  Jackson,  C.  D.  1911,  173  O.  G.  285. 

1338.  Where  the  claims  corresponding  to  the 
issue  were  taken  from  the  patent  to  L.  Held, 
that  if  their  meaning  is  at  all  uncertain  they 
must  be  construed  in  the  light  of  the  specifica- 
tion of  that  patent  and  the  proceedings  leading 
to  the  grant  of  such  claims.  Curtis  v.  De 
Ferranti  v.  Lindmark,  C.  D.  1911,  171  O.  G. 
215. 

1339.  Where  the  claims  in  issue  specify 
means  for  progressively  augmenting  the  tem- 
perature of  the  working  fluid  in  an  elastic- 
fluid  turbine,  which,  in  the  light  of  the  speci- 
fication from  which  they  are  taken,  means  that 
the  rise  of  temperature  in  each  successive 
superheater  is  greater  than  that  in  the  pre- 
ceding superheater,  Held,  that  this  invention  is 
not  disclosed  in  an  application  which  does 
not  explicitly  disclose  the  successive  augmen- 
tation of  temperature,  although  an  expert 
might  by  picking  out  certain  statements  there- 


in and  designing  a  turbine  to  operate  in  ac- 
cordance therewith  produce  a  small  augmen- 
tation of  temperature  in  the  successive  super- 
heaters.   Id. 

(e)  Questionable  Disclosure. 

1340.  Where  priority  was  awarded  to  the 
senior  party  to  an  interference  by  the  ex- 
aminer of  interferences  and  the  junior  party 
took  an  appeal  on  the  ground  that  the  appli- 
cation of  the  senior  party  did  not  disclose 
the  invention  of  the  issue.  Held,  that  the  se- 
nior party's  original  application  did  not  dis- 
close the  invention  of  the  issue  and  that  he 
is  not  entitled  to  an  award  of  priority  based 
upon  that  application,  which  is  the  only  evi- 
dence of  his  claimed  invention,  and  the  deci- 
sion of  the  e.xaminers-in-chief  in  awarding 
priority  to  such  party  affirmed.  Grinnell  v. 
Bucll,  C.  D.  1899,  89  O.  G.  1863. 

1341.  Where  it  is  argued  that  the  junior 
party  against  whom  the  decision  on  priority 
is  rendered  did  not  disclose  the  invention  in 
issue  in  his  original  appJication,  Held,  that  the 
consideration  of  this  question  is  not  only  un- 
necessary, but  is  precluded  by  the  previous 
declaration  of  interference.  *Ostergren  et  al. 
V.  Tripler,  C.  D.  1901,  95  O.  G.  837. 

1342.  Where  the  issue  covers  a  burner  hav- 
ing a  particular  form  of  wick  and  the  evidence 
shows  that  some  form  of  wick  was  used  in  the 
device,  but  does  not  indicate  its  construction. 
Held,  that  the  fact  that  the  particular  form 
is  the  one  that  would  naturally  be  used  does 
not  warrant  the  conclusion  that  it  was  used. 
Blackford  v.  Wilder,  C.  D.  1903,  104  O.  G. 
578. 

1343.  Where  T.  filed  his  application  si.x 
months  after  M.'s  patent  was  granted  and 
copied  that  patent,  although  he  claims  to  have 
conceived  the  invention  twelve  years  before. 
Held,  that  the  burden  is  upon  him  to  prove 
his  case  beyond  a  reasonable  doubt.  Talbott 
v.  Monell,  C.  D.  1903,  107  O.  G.  1093. 

1344.  Where  T.  claims  to  have  conceived 
the  process  in  issue  in  1888  and  to  have  re- 
duced it  to  practice  upon  several  occasions 
thereafter  before  he  filed  his  application  in 
1900,  but  the  processes  practiced  by  him  dif- 
fered from  each  other  and  from  that  disclosed 
in  his  application  which  was  copied  from  M.'s 
patent.  Held,  that  the  presumption  is  strong 
that  the  processes  practiced  by  him  did  not 
include  the  present  invention.     Id. 


276 


INTERFERENCE,  XXIV,  (e). 


1345.  Where  T.  claims  to  have  been  in 
possession  of  ihe  invention  for  ten  years,  but 
made  no  effort  to  patent  it,  although  he  did 
obtain  patents  upon  other  processes,  and 
where  he  ridiculed  M.'s  description  of  the  in- 
vention as  impractical,  but  after  seeing  it  in 
operation  filed  his  application  copying  M.'s 
patent.  Held,  that  his  claim  to  the  invention 
is  an  afterthought  and  is  not  sustained.     Id. 

1346.  Where  one  of  the  main  features  of 
the  invention  is  the  removal  of  the  slag,  so 
that  the  pig-and-ore  process  can  be  practical 
in  an  open-hearth  furnace  as  rapidly  as  the 
pig-and-scrap  process.  Held,  that  T.'s  opera- 
tions where  scrap  was  used  do  not  come  with- 
in the  issue.     Id. 

1347.  The  contention  that  a  party's  applica- 
tion did  not  disclose  the  invention  until  a 
certain  amendment  was  filed  is  in  effect  a 
contention  that  he  has  no  right  to  make  the 
claim,  and  should  be  presented  on  a  motion 
to  dissolve,  not  on  a  motion  to  shift  the  bur- 
den of  proof.  Tripp  v.  Wolff  v.  Jones,  C.  D. 
1903,  103  O.  G.  2171. 

1348.  Where  the  application  as  filed  con- 
tained no  reference  to  roasting  with  free  ac- 
cess of  air  and  was  later  amended  to  state  that 
sufficient  air  could  be  supplied  if  necessary, 
and  was  still  later  amended  to  claim  roasting 
with  free  access  of  air.  Held,  that  it  is  clear 
that  this  matter  was  not  originally  admitted, 
as  obvious  and  self-apparent,  and  that  it  con- 
stitutes an  unwarranted  addition  to  the  orig- 
inal disclosure.  Pohle  v.  McKnight,  C.  D. 
ino.5,  119  O.  G.  2.519. 

1349.  Where  the  invention  in  issue  is  dis- 
closed by  the  patent  in  interference,  but  was 
not  disclosed  in  the  original  application  for 
the  patent.  Held,  that  the  patent  cannot  be 
accepted  as  proof  of  invention  at  the  date  of 
the  application.    Id. 

1350.  Where  the  invention  in  issue  was 
caused  to  appear  in  a  party's  patent  by  an 
amendment  to  the  application  improperly  ex- 
tending the  original  disclosure,  Held,  that  the 
patent  is  not  evidence  of  invention  by  the  pat- 
entee at  any  time,  as  the  matter  in  question  is 
not  supported  by  oath  stating  that  it  was  in- 
vented by  him.     Id. 

1351.  Where  the  application  date  of  a  party 
is  such  as  would  entitle  him  to  prevail  upon 
priority,  but  it  is  found  that  the  invention  was 
not  included  in  his  application  when  filed  and 
that  therefore  his  application  and  the  patent 
thereon  afforded  no  proper  basis  for  refusal 
of  a   patent  to  his  opponent,  Held,  that   the 


question  decided  seems  to  be  one  of  priority 
of  invention  and  that  the  decision  should  be 
such  as  to  give  the  unsuccessful  party  oppor- 
tunity to  take  an  appeal  in  the  interference 
to  the  court  of  appeals  and  not  one  dissolving 
the  interference.    Id. 

1352.  Where  M.,  a  patentee,  who  is  junior 
party  in  an  interference,  did  not  take  testi- 
mony, but  relied  upon  the  insufficiency  of  the 
disclosure  of  B.'s  application,  which  was  pend- 
ing at  the  time  M.'s  application  was  filed,  and 
his  patent  issued,  and  it  subsequently  appears 
that  B.'s  original  application  did,  in  fact,  dis- 
close the  invention  in  issue.  Held,  that  priority 
of  invention  should  be  awarded  to  B.,  the 
senior  party.  MacMulkin  v.  BoUee,  C.  D. 
1907,  12f>  O.  G.  1356. 

1353.  Where  in  his  original  drawing  B. 
showed  a  valve  controlling  communication  be- 
tween several  chambers  and  a  passage  leading 
to  the  cylinder  of  an  engine  and  in  his  speci- 
fication referred  to  the  chambers  as  "carbure- 
ters" supplying  sprayers  with  mixtures  vary- 
ing in  proportion  of  hydrocarbon  contained  in 
the  several  chambers,  Held,  that  the  use  of  the 
word  "carbureter"  was  a  sufficient  disclosure 
of  the  idea  of  providing  "hydrocarbon  inlets" 
in  which  air  and  hydrocarbon  were  to  be  sup- 
plied separately  to  each  of  the  passages  con- 
trolled by  the  valve,  as  called  for  by  the  issue. 
Id. 

1354.  Where  the  examiner  stated  in  a  letter 
to  B.  suggesting  the  claims  in  interference 
that  the  interference  was  not  declared  during 
the  pendency  of  M.'s  application  for  the  rea- 
son that  B.'s  original  specification  so  ob- 
scurely presented  his  invention  that  it  could 
not  be  understood  at  that  time,  Held,  that  the 
examiner's  action  in  admitting  a  substitute 
specification  and  drawing  was,  in  effect,  a  rul- 
ing on  his  part  that  the  substitute  specification 
and  drawing  did  not  contain  new  matter.     Id. 

1355.  Evidence  considered  and  held  to  show 
that  the  application  on  which  the  patent  in- 
volved in  interference  was  granted  did  not 
as  originally  filed  disclose  the  invention  in 
issue,  and  priority  therefore  awarded  to  the 
junior  party.  *McKnight  v.  Pohle,  C.  D. 
1907,   130  O.  G.  2069. 

135G.  Assignments  of  error  by  the  commis- 
sioner of  patents  raising  the  question  of  the 
sufliciency  of  disclosure  in  appellee's  applica- 
tions will  be  given  but  passing  notice  by  the 
court  of  appeals  where  such  question  was  not 
raised  before  the  tribunals  of  the  patent  of- 
fice.      It    was    incumbent    upon    appellant    to 


INTERFERENCE,  XXV. 


277 


"raise  this  question  before  the  primary  ex- 
aminer, whose  skill  in  the  particular  art  pecu- 
liarly qualilied  him  to  consider  it."  *Cutler 
V.  Leonard,  C.  D.  1908,  136  O.  G.  438. 

XXV.  Joint  and  Sole. 

1357.  No  presumption  arises  against  a  sole 
applicant  by  reason  of  his  having  previously 
made  application  as  joint  inventor  with  an- 
other for  the  same  invention,  the  joint  appli- 
cation having  been  abandoned  and  the  sole 
application  filed  promptly  upon  ascertaining 
that  the  invention  was  in  fact  sole.  Stupak- 
off  v.  Johnson,  C.  D.  1898,  84  O.  G.  982. 

1358.  The  allegation  that  the  testimony 
shows  that  joint  applicants  who  are  parties  to 
the  interference  are  not  joint  inventors  is  not 
a  proper  ground  for  a  motion  to  dissolve  or 
for  a  suspension  of  the  interference.  Shiels 
v.  Laurence  et  al.,  C.  D.  1899,  87  O.  G.  180. 

1359.  To  pass  on  the  question  of  joint  in- 
vention would  require  as  full  consideration  of 
the  testimony  as  would  the  question  of  orig- 
inality, and  therefore  both  questions  should 
be  decided  at  one  time.     Id. 

1360.  The  question  as  to  whether  L.  and  K. 
are  original  inventors  is  just  as  important  as 
is  the  question  whether  they  are  joint  inven- 
tors, and  therefore  the  question  of  joint  in- 
vention will  not  be  given  the  preference  at  the 
mere  option  of  their  opponent.    Id. 

13G1.  When  an  interference  is  declared  be- 
tween a  joint  application  and  a  sole  application 
of  one  of  the  joint  applicants,  the  question 
of  priority  necessarily  resolves  itself  into  a 
determination  as  to  whether  the  entity  com- 
posed of  the  joint  applicants  ever  made  the 
invention  at  all.  A  motion  to  dissolve,  there- 
fore, which  sets  up  as  a  reason  for  dissolution 
that  the  records  shows  that  the  joint  appli- 
cants never  made  the  invention  is  irregular, 
since  it  seeks  to  obtain  a  decision  on  the  very 
question  which  is  to  be  decided  at  final  hear- 
ing. Frederick  v.  Frederick  and  Frederick, 
C.  D.  1902,  99  O.  G.  186.-). 

1362.  Where  one  of  several  joint  applicants 
files  a  sole  application  for  the  same  invention 
and  after  being  placed  in  interference  argues 
that  the  joint  application  is  abandoned  through 
a  lack  of  proper  prosecution.  Held,  that  all 
doubts  should  be  resolved  in  favor  of  the 
joint  applicants,  so  that  the  rights  of  the  par- 
ties may  be  fully  investigated  in  the  interfer- 
ence. Giroud  v.  Abbott,  Giroud,  and  McGirr, 
C.  D.  1903,  103  O.  G.  662. 


1363.  Where  Quist's  application  was  filed 
after  Oslrom's  patent  issued,  but  it  appears 
that  at  the  time  of  the  issue  there  was  a  joint 
application  by  Hogan  and  Quist  pending.  Held, 
that  Quist  can  derive  no  benefit  in  so  far  as 
the  burden  of  proof  is  concerned  from  the 
joint  application.  *Quist  v.  Ostrom,  C  D. 
1904,  108  O.  G.  2147. 

1364.  Where  two  parties  file  an  application 
as  joint  inventors  and  upon  discovering  that 
it  was  a  mistake  one  of  them  files  an  applica- 
tion as  sole  inventor  and  is  placed  in  inter- 
ference with  a  third  party.  Held,  that  the  sole 
applicant  can  derive  no  benefit  from  the  ear- 
lier joint  application  in  determining  the  bur- 
den of  proof  in  the  interference.  Arnold  v. 
Vaughen  and  Cabot  v.  Arnold  and  Fisher,  C. 
D.  1904,  109  O.  G.  80o. 

1365.  The  burden  of  proof  in  any  proceed- 
mg  rests  on  the  party  against  whom  judgment 
would  be  rendered  if  no  evidence  were  ad- 
duced on  either  side.  A  party  cannot  be  ad- 
judged the  first  and  sole  inventor  merely  be- 
vause  he  filed  a  prior  application  as  joint  in- 
ventor with  another   party.     Id. 

136G.  Where  a  junior  party  to  an  interfer- 
ence asks  that  he  be  made  the  senior  party  by 
reason  of  a  prior  application  filed  by  him  as 
joint  inventor  with  another  party.  Held,  that 
his  request  will  be  denied,  since  a  joint  appli- 
cation and  a  sole  applicant  cannot  constitute 
parts  of  one  proceeding.  Haskell  v.  Miner  v. 
Ball,  C.  D.  1904,  109  O.  G.  2170. 

1367.  A  joint  application  is  no  proof  that 
one  of  the  parties  is  a  sole  inventor  and  can- 
not be  used  as  the  basis  for  a  judgment  in 
his  favor  in  an  interference,  and  therefore  it 
cannot  affect  the  burden  of  proof.     Id. 

1368.  A  joint  application  cannot  be  accept- 
ed as  constructive  reduction  to  practice  by  a 
sole  inventor  who  subsequently  files  a  sole 
application,  since  to  constitute  constructive 
reduction  to  practice  the  application  must  be 
allowable.     Id. 

13G9.  The  allegation  that  the  testimony 
shows  that  joint  applicants  who  are  parties 
to  the  interference  are  not  joint  inventors  is 
not  a  proper  ground  to  suspend  the  interfer- 
ence. Robin  v.  Muller  and  Bonnet,  C.  D. 
1904,  110  O.  G.  1429. 

1370.  To  pass  on  the  question  of  joint  in- 
vention would  require  as  full  consideration  of 
the  testimony  as  would  the  question  of  prior- 
ity, and  therefore  both  questions  should  be 
considered  at  the  same  time.    Id. 


278 


INTERFERENCE.  XXVI. 


1371.  It  is  not  proper  to  institute  a  separate 
iiKiuiry  in  an  interference  proceeding  to  in- 
vestigate the  question  of  joint  inventorship,  as 
this  relates  to  a  statutory  bar.    Id. 

1372.  The  question  as  to  whether  a  sole  ap- 
plicant, or  joint  applicants,  one  of  which  is 
the  sole  applicant,  is  entitled  to  a  patent  re- 
lates to  the  question  of  priority  of  invention 
and  cannot  properly  be  determined  by  the  pri- 
mary examiner  on  a  motion  for  dissolution. 
Jarvis  v.  Quincy  v.  Jarvis  &  Blakeslee  v. 
Baron  v.  Briggs  and  Shephard,  C.  D.  1904, 
113  O.  G.  550. 

1373.  Where  an  interference  is  dissolved 
for  the  reason  that  one  of  the  contestants  has 
no  right  to  make  the  claims,  Held,  that  the 
question  of  joint  inventorship  of  the  other 
contestant  becomes  an  ex  l>arlc  matter.  Robin 
V.  Muller  and  Bonnet,  C.  D.  1904,  IK!  O.  G. 
2500. 

1374.  Where  three  joint  applicants  executed 
an  application  which  was  subsequently  placed 
in  interference  with  another  joint  application 
filed  by  two  of  the  three  joint  applicants.  Held, 
that  a  power  of  attorney  filed  by  the  two  ap- 
plicants will  not  be  accepted  in  the  first  ap- 
plication, for  such  action  would  permit  the 
two  applicants  to  conduct  both  sides  of  the 
controversy,  to  the  exclusion  of  the  third  joint 
applicant.  Ex  parte  Hinkson,  Hey,  and  Mc- 
Conahy,  C.  D.  1904,  111  O.  G.  2220. 

1375.  The  question  of  the  joint  inventor- 
ship of  one  of  the  parties  to  an  interference 
is  not  one  that  can  be  considered  in  an  inter- 
ference proceeding  and  a  motion  to  take  tes- 
timony on  the  question  will  not  be  granted. 
Pickard  v.  Ashton  and  Curtis,  C.  D.  1908,  137 
O.  G.  733. 

1376.  Where  a  joint  application  is  involved 
in  an  interference,  the  question  whether  the 
joint  applicants  were  in  fact  joint  inventors 
is  pertinent  to  the  question  of  priority,  since 
if  they  were  not  in  fact  joint  inventors  they 
were  not  entitled  to  make  the  application  in 
interference  and  are  without  standing  therein. 
*Lemp  V.  Randall  and  Bates,  C.  D.  1909,  146 
O.  G.  255. 

1377.  It  is  not  necessary  that  the  testimony 
of  the  joint  applicants  be  corroborated  in 
order  to  establish  that  they  were  in  fact  joint 
inventors,  and  unless  there  is  a  preponderance 
of  evidence  to  the  contrary  their  testimony 
should  be  sufficient  on  that  question.     *Id. 

1378.  G.  and  L.  filed  a  joint  application  for 
patent,   and   L.   assigned   his    interest   therein. 


Subsequently  G.  filed  a  sole  application  for  the 
same  inventiun,  and  an  interference  was  de- 
clared. Held,  that  L.s  assignee  is  entitled  to 
control  the  prosecution  of  the  interference  on 
behalf  of  G.  and  L.  Gilbert  v.  Gilbert  and 
Lindley,  C.  D.  1910,  160  O.  G.  775. 

XXVI.  Judgment  on  the  Record. 

1379.  The  commissioner  has  authority  under 
the  statute  to  institute  interference  proceed- 
ings to  determine  the  question  of  priority  of 
invention ;  but  he  has  no  authority,  when  that 
question  is  determined,  to  continue  the  pro- 
ceedings for  any  other  purpose.  The  com- 
missioner would  not  be  justified  in  arbitrarily 
putting  a  party  who  in  his  judgment  is  enti- 
tled to  priority  to  the  trouble  and  expense  of 
taking  testimony  on  the  mere  possibility  that 
some  other  tribunal  might  disagree  with  him 
and  thus  render  the  taking  of  testimony  nec- 
essary. It  is  not  to  be  presumed  that  the  com- 
missioner's decision  will  he  overruled  on  ap- 
peal. McGuire  v.  Hill,  C.  D.  1898,  84  O.  G. 
983. 

1380.  Appeal  from  the  decision  of  the  ex- 
aminer of  interferences  granting  a  motion  for 
judgment  on  the  record  dismissed  for  the  rea- 
son that  such  decision  was  an  adjudication  on 
the  merits  of  the  controversy  and  appeal  lies 
to  the  examiners-in-chief  and  not  to  the  com- 
missioner. Otherwise  there  would  be  no  right 
of  appeal  to  the  court  of  appeals  under  West- 
inghouse  v.  Duncan  (C.  D.  1894,  170,  66  O.  G. 
1009.)      Id. 

1381.  Judgment  cannot  be  rendered  on  the 
record  against  a  party  whose  alleged  date  of 
conception  is  prior  to  the  record  date  of  his 
opponent  merely  because  his  reduction  to  prac- 
tice is  subsequent  thereto.  Kane  v.  Brill  and 
Adams,  C.  D.  1898,  84  O.  G.  1142. 

1382.  Following  the  decision  of  the  supreme 
court  in  Columbia  v.  Alcorn  (C.  D.  1893,  672, 
65  O.  G.  1916,  1.50  U.  S.  460),  that  a  word  in 
common  use  as  designating  a  locality  or  sec- 
tion of  county  cannot  be  appropriated  by  any 
one  as  his  exclusive  trade-mark,  Held,  that 
the  appellees'  claim  or  right  to  the  exclusive 
use  of  the  word  "Columbia"  as  a  designation 
of  tissue  or  toilet  paper  cannot  be  maintained. 
d  Morgan  Envelope  Co.  v.  Walton  et  al.,  C 
D.   1S98,  84  O.  G.  811. 

1383.  After  judgment  on  the  record  the 
losing  party  may  bring  any  motions  permitted 
by  the  rules,  provided  he  does  so  within  the 
time   limit   therefor   and   has  not   waived  his 


INTERFERENCE,  XXVI. 


279 


right  of  appeal.    Rittcr  v.  Krakau,  C.  D.  1902, 
98  O.  G.  1708. 

1384.  Such  a  judgment  does  not  prevent  a 
consideration  of  facts  which  may  show,  if 
proved,  that  the  issue  is  not  patentable  or  that 
it  is  not  patentable  to  one  of  the  parties.  If 
a  mistake  has  been  made  in  the  declaration  of 
the  interference,  it  is  essential  to  the  ends  of 
justice  that  opportunity  for  the  correction  of 
this  mistake  be  given  and  the  judgment  va- 
cated.    Id. 

1385.  Where  an  order  is  regularly  issued 
against  a  junior  party  to  an  interference  to 
show  cause  why  judgment  should  not  be  ren- 
dered against  him  there  is  no  appeal  from 
such  order.  McHarg  v.  Schmidt  and  May- 
land,  C.  D.  1903,  106  O.  G.  1780. 

1386.  Where  proceedings  were  suspended 
before  the  examiner  of  interferences  on  April 
23,  pending  the  final  determination  of  the  ques- 
tion of  the  right  of  one  of  the  parties  to 
amend  his  preliminary  statement,  and  pro- 
ceedings were  resumed  on  June  15,  and  the 
order  to  show  cause  was  issued  on  June  17, 
Held,  that  as  the  case  was  within  the  jurisdic- 
tion of  the  examiner  of  interferences  the  order 
was  regularly  issued,  and  no  appeal  lies  from 
his  order.     Id. 

1387.  If  there  were  good  reasons  why  judg- 
ment should  not  be  rendered,  they  should  be 
brought  forward  in  answer  to  the  order  to 
show  cause.  Appeal  lies  to  the  examiners-in- 
chief  from  the  decision  of  the  examiner  of 
interferences  entering  judgment  against  the 
party  cited  to  show  cause  and  not  to  the  com- 
missioner.   Id. 

1388.  Where  S.  filed  his  application  Novem- 
lier  IG,  and  W.  alleges  in  his  preliminary  state- 
ment conception  in  November,  Held,  that  W. 
may  prove  conception  before  November  16 
and  that  therefore  judgment  cannot  be  enter- 
ed against  W.  on  the  record.  Winsor  v.  Stru- 
ble,  C.  D.  1904,  110  O.  G.  600. 

1389.  Where  the  junior  party  fails  to  take 
any  testimony  and  judgment  is  given  against 
him  upon  the  record.  Held,  that  the  effect 
of  such  record  judgment  is  just  as  binding 
as  though  it  had  been  given  after  full  proofs. 
Ex  parte  Votey,  C.  D.  1905,  114  O.  G.  259. 

1390.  Where  party  petitions  that  examiner 
of  interferences  be  directed  to  render  judg- 
ment on  record  against  his  opponent  because 
the  latter  has  not  printed  his  testimony,  Held. 
that  the  examiner  must  decide  that  matter  for 
himself  and  that  his  judgment  will  not  be 
controlled    bv    an    order    made    in    advance. 


Mark   v.   Grecnawalt,    C.   D.    1905,   118   O.   G. 
1068. 

1391.  Since  well-established  policy,  express- 
ed in  Rule  124,  denies  the  right  of  appeal  from 
the  decisions  affirming  the  patentability  of 
claims,  it  would  seem  that  the  opportunity 
of  a  party  whose  preliminary  statement  failed 
to  overcome  the  record  date  of  his  opponent 
to  contest  his  opponent's  right  to  a  patent 
was  at  an  end  when  the  primary  examiner 
held  on  motion  for  dissolution  that  the  issue 
was  patentable.  Sobey  v.  Holsclaw,  C.  D. 
1905,    119  O.   G.   1922. 

1392.  Where  junior  party  failed  to  file  pre- 
liminary statement  alleging  dates  prior  to  the 
record  date  of  the  senior  party,  Held,  regard- 
ing consideration  of  patentability  on  appeal  on 
priority  that  the  junior  party  was  relegated  by 
his  preliminary  statement  to  a  position  com- 
parable to  one  of  the  general  public;  that  he 
was  no  longer  in  the  position  of  a  party  seek- 
ing a  patent ;  that  the  question  of  patentability 
as  now  presented  by  him  would  not  be  con- 
sidered, and  that  the  conclusion  that  the  issues 
are  patentable  is  no  longer  to  be  considered  as 
directed  against  his  private  interests.     Id. 

1393.  Where  the  preliminary  statement  of 
the  junior  party  failed  to  overcome  the  record 
date  of  the  senior  party  and  judgment  on  the 
record  was  rendered  and  the  examiners-in- 
chief  upon  appeal  upon  priority  considered 
the  question  of  patentability  and  refused  to 
make  any  statement  against  the  patentability 
of  the  issue,  but  affirmed  the  decision  on 
priority,  Held,  that  upon  appeal  to  the  com- 
missioner the  question  of  priority  alone  is 
raised  and  that  the  question  of  patentability 
will  not  be  considered.     Id. 

1394.  Where  consideration  of  patentability 
was  urged  on  appeal  on  priority  in  case  where 
judgment  had  been  rendered  on  the  record  and 
it  was  contended  that  no  proper  decision  on 
priority  could  be  rendered  until  the  issue  had 
been  determined  to  be  patentable.  Held,  in 
view  of  action  of  primary  examiner  holding 
ex  parte  and  also  inter  fortes  on  motion  for 
dissolution  the  issue  to  be  patentable  and  in 
view  of  refusal  of  examiners-in-chief  to  state 
that  the  claims  were  not  patentable,  that  the 
issue  had  been  regularly  determined  to  be  pat- 
entable and  that  the  determination  was  a  final 
one  and  a  sufficient  basis  for  the  determina- 
tion of  priority.     Id. 

1395.  Where  one  of  the  parties  to  an  inter- 
ference fails  to  file  a  preliminary  statement 
and  his  filing  date  is  later  than  that  of  one 


280 


INTERFERENCE,  XXVI. 


of  his  opponents,  judgment  of  priority  may 
be  properly  entered  against  him  after  his  fail- 
ure to  respond  to  an  order  to  show  cause  why 
judgment  should  not  be  so  entered.  Such  a 
judgment  is  a  ruling  that  he  was  not  the  first 
inventor  and  is  not  a  ruling  that  he  was  the 
last  of  all  the  parties  to  make  the  invention. 
Dutcher  v.  Matthew  v.  Dutcher  and  Peter  v. 
Jackson,  C.  D.  1905,  118  O.  G.  2538. 

1396.  Held,  that  decisions  of  the  examiner 
of  interferences  denying  motions  for  judg- 
ment on  the  record  should  not  be  subject  to 
review  on  appeal,  as  such  decisions  are  not 
final  determinations  that  judgment  will  not 
be  rendered  in  favor  of  the  moving  parties. 
Lemp  V.  Randall  and  Bates  v.  Thompson,  C. 
D.  1906,  120  O.  G.  905. 

1397.  Denial  of  an  appeal  from  decisions 
of  the  examiner  of  interferences  refusing  to 
render  judgment  on  the  record  deprives  the 
parties  of  no  substantial  right,  while  to  per- 
mit appeals  in  such  cases  results  in  unneces- 
sary delay,  labor,  and  expense.     Id. 

1398.  Held,  that  Rule  114  does  not  clearly 
and  unmistakably  require  the  examiner  of  in- 
terferences to  render  judgment  against  a  party 
who  has  been  called  upon  to  show  cause  under 
that  rule  and  who  fails  to  take  any  action  in 
response.    Id. 

1399.  Where  the  preliminary  statement  of 
N.  and  T.  failed  to  overcome  the  record  date 
of  O.'s  application  and  motion  by  N.  and  T. 
to  amend  their  preliminary  statement  had 
been  denied  and  the  denial  affirmed  on  appeal. 
Held,  that  O.  is  entitled  to  an  award  of  prior- 
ity of  invention.  Neth  and  Tamplin  v.  Ohmer, 
C.   D.  1906,  120  O.  G.  323. 

1400.  Where  the  patent  office  awarded  prior- 
ity in  favor  of  the  senior  party  on  the  record. 
Held,  that  under  the  case  as  presented  by  the 
preliminary  statement,  which  may  be  called 
the  pleadings  of  the  party,  there  was  nothing 
to  do  but  render  a  decision  in  favor  of  the 
senior  party,  whose  application  for  the  patent 
was  a  constructive  reduction  to  practice  of 
the  invention  several  months  earlier  than  the 
alleged  conception  of  the  same  by  his  oppo- 
nent. *Neth  and  Tamplin  v.  Ohmer,  C.  D. 
190G,  123  O.  G.  998. 

1401.  Where  a  judgment  on  the  record  is 
rendered  and  a  limit  of  appeal  set,  the  running 
thereof  is  not  stayed  by  filing  a  petition  to 
set  the  case  down  for  hearing  under  Rule 
130.  Pym  V.  Hadaway,  C.  D.  1907,  129  O.  G. 
2073. 


1402.  Where  in  response  to  an  order  to  the 
junior  party  to  show  cause  why  judgment  of 
priority  could  not  be  rendered  against  him 
because  his  alleged  date  of  conception  was 
subsequent  to  the  filing  date  of  the  senior 
party  the  junior  party  files  a  statement  alleg- 
ing that  certain  of  the  counts  are  specific  to 
his  structure  and  that  the  subject-matter  cov- 
ered thereby  was  not  shown  or  described  by 
the  senior  party.  Held,  to  be  insufficient,  as 
the  question  sought  to  be  raised  was  one  which 
should  have  been  raised  by  a  motion  to  dis- 
solve rather  than  by  the  mere  filing  of  a  state- 
ment. Felbel  v.  Fox,  C.  D.  1907,  130  O.  G. 
2375. 

1403.  A  motion  to  dissolve  on  the  ground 
of  non-patentability  of  the  issue  is  a  proper 
answer  to  an  order  under  Rule  114  to  show 
cause  why  judgment  of  priority  should  not 
be  rendered  on  the  record.  Field  v.  Colman, 
C.  D.  1907,  131  O.  G.  168G. 

1404.  No  appeal  will  be  entertained  from  a 
decision  of  the  examiner  of  interferences  set- 
ting aside  a  record  judgment  and  fixing  a 
time  for  final  hearing.  O'Brien  v.  Gale  v. 
Zimmer  v.  Calderwood,  C.  D.  1908,  133  O.  G. 
514. 

1405.  Where  a  junior  party  to  an  interfer- 
ence alleges  in  his  preliminary  statement  a 
date  of  conception  of  the  invention  in  issue 
prior  to  the  senior  party's  filing  date,  but  the 
other  dates  alleged  are  subsequent  thereto, 
Held,  that  an  order  to  show  cause  why  judg- 
ment be  not  rendered  on  the  record  should 
not  be  issued  as,  conceivably,  conception  might 
be  proved  as  alleged.  *Peters  v.  Hopkins  and 
Dement,  C.  D.  1910,  150  O.  G.  1044. 

140G.  A  motion  for  judgment  on  the  rec- 
ord in  an  interference  does  not  present  the 
case  for  final  hearing  on  the  merits,  but  raises 
only  the  question  of  the  sufficiency  of  the 
allegations  of  the  preliminary  statements  of 
the  opposing  parties,  admitting  their  truth  for 
the  purposes  of  such  motion  only.  *Lindmark 
V.  De  Ferranti,  C.  D.  1910,  153  O.  G.  1082. 

1407.  A  decision  of  the  court  of  appeals  of 
the  District  of  Columbia,  reversing  a  decision 
of  the  commissioner  of  patents  granting  a  mo- 
tion for  judgment  on  the  record  can  go  no 
further  than  a  similar  decision  by  the  tribunal 
of  original  jurisdiction  n»glit  have  gone,  and 
does  not,  therefore,  amount  to  an  award  of 
priority  in  favor  of  the  appellant  or  deprive 
the  appellee  of  his  right  to  bring  a  motion  to 
set  times  for  taking  testimony.     *Id. 


INTERFERENCE,  XXVII. 


281 


XXVII.  Jurisdiction. 

1408.  The  transmission  of  a  motion  pro- 
vided for  by  the  rules  by  the  examiner  of 
interferences  to  the  primary  examiner  for  his 
decision  does  not  give  the  primary  examiner 
jurisdiction  for  all  purposes,  but  only  for  con- 
sideration of  the  motion  transmitted.  Juris- 
diction as  to  all  other  matters  respecting  the 
interference  clearly  remains  with  the  examiner 
of  interferences  and  he  has  authority  to  en- 
tertain motions  to  dissolve  or  any  other  mo- 
tions which  may  under  the  rules  be  made. 
(Hutt  and  Phillips  v.  Foglesong,  C.  D.  1892, 
190,  GO  O.  G.  1477,  and  Jenne  and  Brown  v. 
Booth,  45  MS.  Dec.  88,  cited.)  Crocker  v. 
Allderdice,  C.  D.  1898,  84  O.  G.  1434. 

1409.  After  the  examiner  of  interferences 
has  made  a  decision  on  priority  and  the  limit 
of  appeal  has  expired  he  has  lost  jurisdiction 
to  further  consider  the  case,  and  before  he 
can  consider  a  motion  to  transmit  a  motion 
to  dissolve  the  interference  application  must 
be  made  to  the  commissioner  in  person  to  re- 
store jurisdiction  to  the  examiner  of  inter- 
ferences. Benger  v.  Burson,  C.  D.  1900,  93 
O.  G.  1917. 

1410.  It  is  not  understood  that  by  the  deci- 
sion of  Trevette  v.  Dexter  (C.  D.  1898,  160, 
84  O.  G.  1283)  it  was  intended  to  change  the 
practice  outline  in  Garrison  v.  Hubner  (C.  D. 
1891,   59,    54   O.   G.    1889.)      Id. 

1411.  The  practice  is  well  settled  that  after 
an  interference  has  been  declared  the  primary 
examiner  will  take  jurisdiction  of  the  case 
only  for  the  consideration  of  the  motions 
transmitted  by  the  examiner  of  interferences. 
Smith  V.  Carmichael,  C.  D.  1900,  93  O.  G.  1123. 

1412.  After  an  interference  has  been  de- 
clared the  primary  examiner  will  take  juris- 
diction of  the  case  solely  for  the  considera- 
tion of  matters  relating  to  the  interference 
when  the  same  is  transmitted  to  him  by  the 
examiner  of  interferences.  Ex  parte  Hildreth, 
C.  D.  1901,  97  O.  G.  1374. 

1413.  The  jurisdiction  of  the  primary  ex- 
aminer is  then  not  for  all  purposes,  but  is 
limited  to  the  consideration  of  the  questions 
specifically  presented  for  determination  either 
in  the  motion  duly  made  or  in  the  examiner's 
request  that  the  interference  be  transmitted. 
Id. 

1414.  The  examiner  of  interferences  has 
authority  under  the  rules  to  transmit  the  in- 
terference after  a  consideration  of  motions 
duly  made  or  upon  the  request  of  the  exam- 


iner in  order  that  questions  may  be  considered 
by  the  examiner  which  relate  to  matters  affect- 
ing the  interference.  In  all  other  cases  where 
jurisdiction  is  desired  by  the  examiner  it  can 
only  be  obtained  by  order  of  the  commissioner. 
Id. 

1415.  The  proper  practice  to  follow  in  the 
event  that  the  examiner  wishes  jurisdiction  of 
an  application  involved  in  an  interference  for 
the  consideration  of  matters  not  relating  to 
the  interference  is  for  the  examiner  to  file  a 
request  with  the  commissioner  that  jurisdic- 
tion of  the  case  involved  be  restored  to  him 
for  the  purpose  of  making  such  action.     Id. 

1416.  Where  a  motion  is  brought  to  restore 
jurisdiction  to  the  examiner  of  interferences 
after  the  limit  of  appeal  has  expired  in  order 
that  he  may  consider  a  motion  to  transmit  a 
motion  for  dissolution  and  the  motion  is 
granted  for  that  sole  purpose,  Held,  that  the 
jurisdiction  of  the  examiner  of  interferences 
was  not  restored  for  all  purposes.  Benger  v. 
Burson,  C.  D.  1902,  99  O.  G.  1384. 

1417.  The  record  evidence  as  to  the  date 
to  which  a  party  is  entitled  relates  to  proof  of 
priority  of  invention,  and  therefore  it  should 
be  passed  upon  by  the  examiner  of  interfer- 
ences rather  than  the  primary  examiner. 
Raulet  and  Nicholson  v.  Adams,  C.  D.  1905, 
114  O.  G.  827. 

1418.  Held,  that  rules  of  practice  in  inter- 
ference cases  are  necessary  and  should  not 
be  disregarded  and  that  the  court  does  not 
sit  to  review  the  rulings  of  the  commissioner 
of  patents  in  discretionary  matters  or  to  re- 
view decisions  made  by  the  examiner  of  inter- 
ferences not  lawfully  appealed  from.  *Jones 
V.  Starr,  C.  D.  1905,  117  O.  G.  1495. 

1419.  Where  an  interference  is  transmitted 
to  the  primary  examiner  for  the  purpose  of 
determining  the  right  of  one  of  the  parties  to 
make  a  claim  and  the  examiner  also  decides 
the  question  of  interference  in  fact,  Held,  that 
the  examiner  exceeded  his  jurisdiction  in  de- 
termining the  question  of  interference  in  fact. 
Podlesak  and  Podlesak  v.  Mclnnerney,  C.  D. 
1005,    118   O.    G.    83.5. 

1420.  Where  an  interference  is  transmitted 
to  the  primary  examiner  for  the  considera- 
tion of  one  question,  he  is  without  jurisdic- 
tion to  consider  an  entirely  independent  ques- 
tion. Moore  v.  Curtis,  C.  D.  190G,  121  O.  G. 
2325. 

1421.  Where  petition  is  made  to  restore  the 
jurisdiction  of  the  examiner  of  interferences 
to  consider  certain  motions.  Held,  that  copies 


282 


INTERFERENCE,  XXVIII,  (a),  (b). 


of  the  motions  which  the  petitioner  desires  the 
examiner  of  interferences  to  consider  and  de- 
cide should  accompany  the  petition,  and  serv- 
ice of  the  papers  should  be  made  upon  the  op- 
posite party  to  the  interference.  Ex  parte 
Adams-Randall,  C.  D.  1906,  125  O.  G.  1700. 

1422.  Where  petition  is  made  to  restore  the 
jurisdiction  of  the  examiner  of  interferences 
to  consider  certain  motions,  the  form  merely 
and  not  the  merits  of  said  motions  will  be  con- 
sidered in  determining  the  petition,  since  the 
merits  of  the  motions  should  be  decided  in  the 
first  instance  by  the  examiner  of  interferences. 
Id. 

1423.  The  examiner  of  interferences  has  no 
jurisdiction  of  an  application  in  interference 
to  require  the  filing  of  a  new  oath  therein. 
Dukesmith  v.  Corrington  v.  Turner,  C.  D. 
1906.  125  O.  G.  669. 

XXVIII.  Motions. 
(a)  In  General. 

1424.  Where  a  motion  for  dissolution  filed 
by  one  party  and  a  motion  to  amend  under 
Rule  109  filed  by  the  other  party  are  trans- 
mitted to  the  primary  examiner,  he  should  de- 
cide both  motions  and  not  suspend  action  on 
the  motion  to  amend  until  the  decision  on  the 
other  motion  becomes  final.  Uebelacker  v. 
Brill.  C.  D.  1899,  87  O.  G.  1783. 

1425.  In  accordance  with  the  general  spirit 
of  the  practice  all  questions  which  can  be 
fairly  considered  at  the  same  time  should  be 
so  considered.  The  object  of  this  practice  is 
to  diminish  the  number  of  appeals  and  expe- 
dite the  final  determination  of  cases.     Id. 

1426.  Upon  an  appeal  by  H.  et  al.  from  the 
decision  of  the  examiner  refusing  to  transmit 
the  case  to  the  examiner  of  interferences  for 
the  consideration  of  a  motion  that  they  be 
assigned  a  reasonable  time  within  which  to  file 
an  amended  preliminary  statement.  Held,  that 
the  examiner's  decision  refusing  to  suspend 
the  proceedings  and  transmit  the  motion  to 
the  examiner  of  interferences  was  proper. 
The  case  was  before  him  merely  for  the  de- 
termination of  the  motion  to  dissolve,  and  the 
pendency  of  that  motion  did  not  prevent  the 
parties  from  bringing  any  other  proper  motion 
before  the  examiner  of  interferences.  Mech- 
lin V.  Horn,  Colclazer  &  Mungen,  C.  D.  1900, 
92  O.  G.  2507. 

1427.  Where  the  issues  are  the  claims  of 
both  parties  and  have  been  held  patentable  by 
the  exarainers-in-chief  upon  appeal  on  motion 


to  dissolve  and  it  appears  from  B.'s  prelim- 
inary statement  that  he  cannot  prevail  over 
L.'s  record  date.  Held,  that  the  examiner  of 
interferences  properly  denied  B.'s  motion  to 
return  the  case  to  primary  examiner  for  the 
consideration  of  interference  in  fact  and  re- 
formation of  the  issues  in  connection  with 
the  decision  of  the  examiners-in-chief.  Brown 
v.  Lindmark,  C.  D.  1904,  109  O.  G.  1071. 

1428.  Where  L.  moved  for  judgment  on  the 
record  and  B.  moved  that  L.'s  motion  be  dis- 
missed. Held,  that  the  examiner  of  interfer- 
ences properly  denied  B.'s  motion  as  L.  had 
the  right  of  appeal  from  the  decision  on  his 
motion  for  judgment.     Id. 

1429.  The  contention  that  the  motion  to 
amend  contains  new  matter  relates  to  the 
merits  and  is  a  matter  for  the  consideration 
of  the  primary  examiner  and  not  the  examiner 
of  interferences.  The  motion  was  therefore 
properly  transmitted.  Brown  v.  Inwood  and 
Lavenberg.  C.  D.  1907,  130  O.  G.  978. 

1430.  A  motion  will  not  be  considered  on 
appeal  which  has  been  dismissed  by  the  ex- 
aminer of  interferences,  having  original  juris- 
diction thereof,  although  the  reason  for  which 
it  was  dismissed  no  longer  exists.  Keith, 
Erickson,  and  Erickson  v.  Limdquist  v.  Lori- 
mer  and  Lorimer,  C.  D.  1910,  158  O.  G.  701. 

(b)  Delay   in   Bringing. 

1431.  Where  at  the  hearing  on  a  motion  a 
supplemental  affidavit  is  filed  attempting  to 
explain  the  delay  in  bringing  the  motion, 
Held,  that  it  should  not  be  received  and  con- 
sidered. Reasonable  notice  of  all  motions 
and  affidavits  must  be  served  upon  the  op- 
posing parties  before  the  hearing.  Id.  Lipe 
V.  Miller,  C.  D.  1903,  105  O.  G.  1263. 

1432.  Where  a  motion  to  shift  the  burden 
of  proof  is  brought  four  months  after  the 
expiration  of  the  twenty  days  allowed  for 
motions  and  the  only  excuse  is  that  a  motion 
for  dissolution  was  pending.  Held,  that  the 
examiner  of  interferences  properly  refused  to 
transmit  the  motion  to  the  primary  examiner. 
Harvey  v.  Lubbers  v.  Raspillaire,  C.  D.  1904, 
112  O.  G.  1215. 

1433.  All  motions  should  be  brought  within 
the  twenty  days  allowed  by  the  rule,  and  the 
pendency  of  one  motion  is  no  reason  for  delay 
in  bringing  another.     Id. 

1434.  Where  the  excuse  for  the  delay  of 
more  than  twenty  days  in  bringing  a  motion 
is   that    it   was    supposed    that    an   agreement 


INTERFERENCE,  XXVIII,  (c),  (d). 


283 


would  be  reached  between  the  parties  and  it 
appears  that  the  motion  was  finally  brought 
more  for  delay  than  to  test  the  questions 
raised,  Held,  that  the  motion  will  not  be  trans- 
mitted to  the  examiner.  Dickinson  v.  Norris, 
C.  D.  1905,  116  O.  G.  593. 

1435.  A  mere  unverified  statement  accom- 
panying a  motion  filed  one  day  late  stating 
that  the  motion  should  not  be  brought  sooner 
on  account  of  other  work  is  insufficient.  A 
showing  in  e.xcuse  for  delay  should  be  under 
oath,  and  it  should  state  facts  from  which  the 
office  may  judge  whether  or  not  the  delay  was 
excusable.  Felbel  v.  Fox,  C.  D.  1907,  130  O. 
G.  2375. 

1436.  While  it  is  not  the  desire  of  the  of- 
fice to  be  too  technical,  it  is  better  to  insist 
upon  a  reasonable  and  just  compliance  with 
the  rules  of  the  office,  though  it  may  work  a 
hardship  in  an  individual  case,  than  to  adopt 
a  course  that  would  result  practically  in  ab- 
rogating the  rules,  with  consequent  confusion. 
(Keller  v.  Wethey  v.  Roberts,  C.  D.  1897,  157, 
81  O.  G.  331 ;  Estes  v.  Cause,  C.  D.  1899,  164, 
88  O.  G.  1336.)     Id. 

1437.  Where  a  motion  was  filed  by  N.  on  the 
last  day  of  the  limit  of  appeal  and  on  the 
same  day  notice  by  registered  letter  was  mail- 
ed to  C.'s  attorney  and  C.  makes  no  conten- 
tion that  said  notice  was  not  received  in  ample 
time  to  prepare  for  the  hearing.  Held,  that  N. 
is  entitled  to  the  date  of  the  receipt  of  his 
motion  in  this  office  as  its  date  of  filing. 
Naulty  V.  Cutler,  C.  D.  1907,  126  O.  G.  389. 

1438.  Where  a  sufficient  excuse  is  offered 
for  the  delay  in  bringing  a  motion  to  amend 
as  to  certain  claims  thereof.  Held,  that  the  en- 
tire motion  should  be  transmitted,  as  no  ad- 
ditional delay  will  be  occasioned.  Id.  Bastian 
V.  Champ,  C.  D.  1907,  128  O.  G.  2837. 

1439.  Where  the  reasons  which  are  alleged 
to  excuse  delay  in  bringing  a  motion  appear 
clearly  from  the  record  it  is  only  necessary 
for  the  moving  party  to  call  attention  thereto. 
Cutler  V.  CarichoflF,  C.  D.  1907,  130  O.  G.  656. 

(c)  Notice   of. 

1440.  Where  appeal  is  taken  from  action  of 
examiner  of  interferences  transmitting  motion 
for  dissolution  to  the  primary  examiner  on  the 
ground  of  insufficient  notice,  Held,  that  if  the 
notice  was  insufficient  to  enable  counsel  to 
appear  and  oppose  the  motion  he  should  have 
asked  for  a  postponement  of  the  hearing  and 
that   the  motion  should  not  be  dismissed  on 


this  ground.     Taylor  v.   Kinsman  v.   Kintner 
v.  Potter,  C.  D.  1905,  118  O.  G.  838. 

1441.  VVhere  it  appears  that  a  notice  of  a 
motion  was  delivered  by  private  messenger 
on  a  Saturday  afternoon  and  received  by  a 
clerk  in  the  office  of  counsel  and  counsel  him- 
self actually  received  the  notice  on  Monday 
afternoon,  which  was  ample  time  to  prepare 
for  the  hearing  on  motion.  Held,  that  the  no- 
tice was  good  and  that  the  motion  should  be 
entertained.     Id. 

1442.  Where  a  protest  was  filed  by  one  of 
the  parties  against  consideration  upon  rehear- 
ing on  the  ground  that  due  notice  of  the 
filing  of  the  motion  for  rehearing  and  a  copy 
thereof  were  not  served  upon  him.  Held,  that 
the  practice  does  not  require  notice  of  the 
filing  of  the  motion  and  that  a  notice  by  the 
office  of  the  time  and  place  of  rehearing  and 
of  the  matter  to  be  reconsidered  is  sufficient. 
Townsend  v.  Copeland  v.  Robinson,  C.  D. 
1906,  124  O.  G.  1845. 

1443.  Where  the  transmission  of  a  motion 
to  dissolve  is  opposed  on  the  ground  that  no 
proper  notice  was  given  of  the  bringing  of  the 
motion,  the  notice  of  the  motion  having  been 
signed  by  only  two  of  the  three  independently- 
appointed  attorneys,  Held,  that  the  objection 
is  not  well  taken  and  that  the  signature  to  a 
notice  is  sufficient  if  the  party  notified  under- 
stands from  the  signature  from  whom  or  in 
whose  interest  the  notice  is  given.  Heyne  v. 
Hayward  and  McCarthy  v.  De  Vilbiss,  C.  D. 
1900,  125  O.  G.  669. 

1444.  Rule  153  provides  that  reasonable  no- 
tice of  all  motions  must  be  given  and  that  a 
motion  will  not  be  entertained  in  the  absence 
of  proof  of  service  of  such  notice.  The 
same  reason  exists  for  requiring  notice  of 
the  renewal  of  a  motion  as  of  the  motion  it- 
self, and  the  mere  request  at  the  final  hearing 
and  in  a  brief  filed  at  final  hearing  is  not  such 
notice.  Dyson  v.  Land  v.  Dunbar  v.  Browne, 
C.  D.  1908,  133  O.  G.  1679. 

(d)  Piecemeal. 


1445.  Defects  in  the  ev 
be  corrected  at  all,  should 
patent  office  by  making  a 
tion  for  leave  to  do  so, 
should  not  be  subject  to 
pense  attending  an  appeal 
appellant  upon  a  defective 
*Nielson  v.  Bradshaw,  C. 
644. 


idence,   if   they  can 

be  corrected  in  the 

seasonable  applica- 

since   the   appellee 

the  trouble  and  ex- 

to  this  court  by  the 

state  of  the  record. 

D.   1900,  91  O.  G. 


384 


INTERFERENCE,  XXIX. 


1446.  The  piecemeal  disposition  of  motions 
to  dissolve  is  not  a  method  to  be  commended, 
and  it  is  regarded  as  for  the  interests  of  all 
parties  that  motions  be  transmitted  and  decid- 
ed only  after  each  party  is  in  full  possession 
of  the  facts  which  may  have  a  bearing  upon 
the  matter.  A  knowledge  of  the  application 
without  a  knowledge  of  the  actions  which  have 
been  taken  is  not  such  full  information.  Whip- 
ple V.  Sharp,  C.   D.  1901,  96  O.  G.  2229. 

1447.  The  practice  of  the  office  does  not 
permit  a  party  to  bring  a  motion  to  dissolve 
upon  one  ground  and  if  it  is  denied  to  bring 
another  motion  setting  up  different  grounds, 
since  this  would  result  in  unwarrantable  delay 
of  the  proceedings  and  in  trouble  and  expense 
to  the  opposing  party.  Finch  v.  Singleton,  C. 
D.  1902,  98  O.  G.  1709. 

1448.  Motions  to  dissolve  should  not  be 
made  piecemeal ;  but  the  whole  case  should 
be  presented  at  one  time.  Richards  v.  Kletz- 
ker  and  Goesel,  C.  D.  1902,  98  O.  G.  1709. 

1449.  Held,  that  it  is  against  the  policy  of 
this  office  to  permit  piecemeal  motions  in  in- 
terference cases.  Egly  v.  Schulze,  C.  D.  1905, 
117  O.  G.  276. 

1450.  It  is  well  settled  that  piecemeal  action 
cannot  be  permitted ;  but  where  a  party  acting 
in  good  faith  tiles  a  motion  which  is  held  to 
be  indefinite  and  an  amended  motion  curing 
the  informalities  is  promptly  filed  within  the 
limit  of  appeal  set  from  the  previous  decision 
the  amended  motion  should  be  transmitted. 
Gold  V.  Gold,  C.  D.  1907,  1.31  O.  G.  1442. 

1451.  The  piecemeal  prosecution  of  motions 
places  an  unnecessary  burden  upon  the  office 
and  upon  the  parties,  and  the  practice  is 
strongly  condemned.  Crescent  Oil  Co.  v.  W. 
C.  Robinson  &  Son  Co.,  C.  D.  1909,  142  O.  G. 
1113. 

XXIX.  Practice  on  Fin."il  Hearing  and 
After  Judgment. 

1452.  Where  the  court  of  appeals  in  decid- 
ing priority  based  its  decision  on  D.'s  appli- 
cation as  a  constructive  reduction  to  practice 
at  the  date  of  tiling,  but  refused  to  decide 
whether  that  application  disclosed  an  operative 
device.  Held,  that  the  question  of  operative- 
ness  is  still  open  for  consideration  by  this 
office  and  may  properly  be  made  the  ground 
of  a  motion  to  dissolve.  Fowler  v.  Dodge. 
C.  D.  1898,  82  O.  G.  1687. 

1453.  Where  the  question  of  operativeness 
and  the  sufficiency  of  the  disclosure  of  a  party 


to  entitle  him  to  an  award  of  priority  were, 
under  the  practice  in  force  at  the  time,  open 
for  consideration  at  final  hearing.  Held,  that 
the  failure  to  make  a  motion  to  dissolve  was 
not  a  waiver  of  the  right  to  be  heard  on  this 
question.  A  party  cannot  be  deprived  of  his 
rights  by  a  mere  change  in  the  method  of 
procedure  in  this  office.     Id. 

1454.  After  decision  on  priority  the  defeat- 
ed party  ordinarily  has  no  right  to  be  heard 
on  the  question  as  to  the  right  of  the  success- 
ful party  to  a  patent ;  but  this  rule  does  not 
apply  to  a  case  where  a  decision  is  necessary 
to  finally  settle  the  very  question  raised  by 
the  inter  partes  proceedings.     Id. 

1455.  An  inoperative  device  is  not  such 
proof  of  prior  invention  as  to  defeat  a  sub- 
sequent application  of  a  patent,  and  it  is  im- 
material whether  the  proof  of  that  inopera- 
tive device  consists  of  testimony  as  to  an 
actual  machine  or  of  a  defective  application. 
(Stevens  et  ?.I.  v.  Seher,  C.  D.  1897,  761,  81 
O.  G.  1932.)     Id. 

1456.  Where,  according  to  the  court's  deci- 
sion, D.'s  application  is  the  only  thing  in  bar 
of  F.'s  right  to  a  patent,  and  that  only  assum- 
ing it  to  be  an  allowable  application.  Held, 
that  if  it  is  found  not  to  be  a  valid  and  al- 
lowable application  the  patent  must  be  grant- 
ed to  F.    Id. 

1457.  To  hold  D.'s  device  inoperative  and 
to  grant  F.  a  patent  would  not  be  a  reversal 
of  the  decision  of  the  court,  since  it  neither 
held  that  D.  was  entitled  to  a  patent  nor 
that  F.  was  not  entitled  to  a  patent.  The 
court's  decision  is  binding  only  as  to  the  spe- 
cific matters  stated  to  be  before  it  for  deci- 
sion. (Ex  parte  French,  91  U.  S.  423;  Ex  parte 
Potts  &  Co.,  C.  D.  1897,  342,  78  O.  G.  3049.) 
Id. 

1458.  Where  after  the  decision  of  the  court 
of  appeals  of  the  District  of  Columbia  a  peti- 
tion was  made  praying  that  the  award  of 
priority  be  set  aside  upon  the  ground  that  no 
interference  in  fact  existed  between  the  claims 
of  the  parties.  Held,  that  after  an  award  of 
priority  by  the  court  of  appeals  in  an  inter- 
ference proceeding  the  commissioner  of  pat- 
ents has  no  power  to  vacate  the  court's  deci- 
sion. To  do  so  would  be  in  effect  to  hold 
that  an  inferior  tribunal  can  nullify  the  deci- 
sion of  a  higher  tribunal.  Ex  parte  Guilbert, 
C.  D.  1898,  8.-1  O.  G.  454. 

1459.  In  an  interference  proceeding  after 
testimony  has  been  taken  thereon  and  the  va- 
rious  tribunals   of   the   patent   office   and   the 


INTERFERENCE,  XXIX. 


285 


court  of  appeals  of  the  District  of  Columbia 
have  passed  upon  the  issue  and  made  an  award 
of  priorit}',  Held,  that  it  is  too  late  to  vacate 
the  proceedings  on  the  ground  that  no  inter- 
ference in  fact  exists.    Id. 

1460.  The  fact  that  the  case  of  the  success- 
ful party  to  the  interference  has  become  a  part 
of  the  prior  art  will  not  militate  against  the 
grant  of  claims  to  the  defeated  party  for  sub- 
ject-matter not  covered  in  the  structure  of 
the  successful  party.  The  claims  of  the  de- 
feated party  which  are  embraced  or  said  to 
be  involved  in  the  interference  should  be  con- 
sidered, and  if  patentably  different  from  the 
invention  disclosed  by  the  successful  party 
they  may  be  allowed.    Id. 

1461.  Where  before  an  interference  was  de- 
clared the  party  was  notified  that  his  applica- 
tion was  otherwise  in  condition  for  allowance, 
Held,  that  there  was  no  irregularity  after  the 
termination  of  the  interference  in  at  once 
sending  the  case  to  issue  without  notifying 
the  applicant  and  giving  him  an  opportunity 
to  amend.  Ex  parte  Pierce,  C.  D.  1901,  97 
O.  G.  2307. 

1462.  Where  a  final  decision  on  priority  has 
been  rendered  against  a  party  in  an  interfer- 
ence and  his  claims  involved  have  been  finally 
rejected  under  Rule  132,  Held,  that  he  has 
the  right  of  appeal  to  the  examiners-in-chief 
from  the  rejection.  Ex  parte  Schupphaus,  C. 
D.  1902,  100  O.  G.  2775. 

1463.  Where  W.  is  made  the  senior  party  to 
an  interference  by  virtue  of  a  prior  applica- 
tion, which  application  is  held  by  the  exam- 
iner to  disclose  the  invention  of  the  issue, 
and  the  examiner  of  interferences  renders  a 
judgment  on  the  record  of  priority  of  inven- 
tion in  favor  of  W.  on  the  ground  that  the 
preliminary  statement  filed  by  the  junior  party 
failed  to  overcome  the  prima  facie  case  made 
against  him  by  W.'s  aforesaid  application ; 
Held,  that  a  motion  by  the  junior  party  to 
vacate  the  judgment  on  the  ground  that  it 
was  an  error  to  give  W.  the  benefit  of  the  date 
of  his  first  application  on  a  constructive  re- 
duction to  practice  does  not  lie;  that  if  in  the 
opinion  of  the  junior  party  there  was  such 
irregularity  in  declaring  the  interference  as 
to  preclude  a  proper  determination  of  the 
question  of  priority  he  should  have  brought  a 
motion  to  dissolve  the  interference  on  that 
ground.  (Rules  114  and  122.)  (Ritter  v. 
Kraukau.  ante,  59,  98  O.  G.  1798.)  Patten  v. 
Wiesenfeld,  C.  D.  1902,  98  O.  G.  2589. 


1464.  Held,  that  a  final  decision  on  priority 
in  an  interference  is  not  a  decision  that  the 
defeated  party  is  not  entitled  to  a  patent  upon 
the  claims,  although  it  may  furnish  a  basis 
for  such  a  decision.  Ex  parte  Schupphause, 
C.  D.  1902,  100  O.  G.  2775. 

1465.  Where  a  claim  which  was  involved 
in  an  interference  is  rejected  by  the  examiner 
under  the  provisions  of  Rule  132  on  the 
ground  that  the  applicant  is  not  the  first  in- 
ventor of  the  invention  defined  therein.  Held. 
that  such  a  rejection  is  to  be  regarded  as  a 
new  reason  for  rejection  and  that  the  appli- 
cant has  the  right  to  amend  the  claim  to  over- 
come the  rejection.  E.x  parte  Harvey,  C.  D. 
lOO.'l,  102  O.  G.  621. 

1466.  .\fter  the  termination  of  an  interfer- 
ence the  examiner  has  jurisdiction  of  an  appli- 
cation involved  to  consider  amendments  to 
the  application  whether  they  be  filed  to  over- 
come the  rejection  of  the  claims  involved  in 
the  issue  or  to  perfect  the  specification  and 
other  claims.     Id. 

1467.  Where  a  motion  under  Rule  122  to 
dissolve  an  interference  is  not  brought  at  the 
proper  time,  the  parties  thereto  must  be  con- 
sidered to  have  acquiesced  in  the  declaration 
of  the  interference,  and  therefore  cannot  as 
a  matter  of  right  have  the  points  involved  in 
such  a  motion  considered  at  final  hearing. 
Freeman  v.  Garrels  and  Kimball,  C.  D.  1903, 
102  O.  G.  1777. 

1468.  Where  after  a  record  judgment  a 
party  brought  a  motion  before  the  examiner 
of  interferences  to  transmit  a  motion  to  the 
primary  examiner,  which  motion  to  transmit 
was  filed  within  the  limit  of  appeal  from  the 
judgment,  but  was  not  noticed  for  hearing 
until  after  the  expiration  of  the  limit  of  ap- 
peal. Held,  that  the  examiner  of  interferences 
was  without  jurisdiction  to  transmit  and  his 
decision  to  this  effect  affirmed.  Kneedler  v. 
Shephard,  C.  D.  1903,  104  O.  G.  1895. 

1469.  Held,  however,  that  in  view  of  the 
circumstances  of  the  case  the  jurisdiction  of 
the  examiner  of  interferences  to  entertain  the 
motion  to  transmit  will  be  restored,  especially 
as  under  the  provisions  of  present  Rule  114 
motions  to  transmit  need  not  be  noticed  for 
hearing  within  the  twenty  days  allowed  for 
filing  motions.     Id. 

1470.  Where  after  judgment  against  a  party 
and  after  a  motion  by  him  to  dissolve  has 
been  denied  he  presents  a  petition  asking  that 
the  case  be  referred  to  the  examiner  to  con- 
sider additional   references  said   to  anticipate 


286 


INTERFERENCE,  XXIX. 


the  issue,  Held,  that  the  petition  will  be  denied. 
The  question  as  to  the  patentability  of  the  suc- 
cessful party's  claims  is  an  ex  parte  matter. 
Kempshall  v.  Seiberling,  C.  D.  1903,  107  O.  G. 
541. 

1471.  Where  after  a  decision  against  the 
applicant  in  an  interference  the  examiner  re- 
jects certain  claims  as  not  patentable  over  the 
issue  and  requires  the  applicant  to  amend  or 
cancel  them  within  a  fixed  time.  Held,  that  the 
examiner  had  no  authority  to  require  action 
within  any  time  less  than  that  fixed  by  law. 
Ex  parte  Hewlett,  C.  D.  1904,  108  O.  G.  1052. 

1472.  Where  after  a  decision  against  a  party 
in  an  interference  the  examiner  rejects  the 
claims  under  Rule  132,  Held,  that  the  appli- 
cant is  entitled  to  amend.  Ex  parte  Greuter, 
C.  D.  1905,  116  O.  G.  596. 

1473.  The  rejection  under  Rule  132  is  to  be 
considered  as  a  rejection  in  an  ex  parte  case 
upon  a  new  ground,  and  applicant  is  entitled 
to  request  a  reconsideration  and  to  point  out 
why  the  rejection  is  not  proper.  Ex  parte 
Lyon,  C.  D.  1906,  124  O.  G.  2905. 

1474.  Where  it  is  contended  by  one  party 
to  an  interference  that  he  has  a  right  to  urge 
the  unpatentability  of  the  issues  to  either 
party  at  the  final  hearing  under  Rule  130  and 
to  take  testimony  in  support  thereof,  Held, 
that  the  contention  is  erroneous  and  that  this 
rule  permits  a  party  to  urge  the  non-patent- 
ability of  a  claim  to  his  opponent  as  a  basis 
for  the  decision  upon  priority  of  invention 
only  when  it  is  material  to  his  own  right  to  a 
patent.  Dixon  and  Marsh  v.  Graves  and 
Whittemore,  C.  D.  1907,  127  O.  G.  1993. 

1475.  Where  the  primary  examiner  refused 
to  dissolve  an  interference  on  the  ground  that 
the  senior  party  had  no  right  to  make  the 
claims,  but  the  examiner  of  interferences 
under  Rule  130  decided  that  he  had  no  right 
to  make  the  claims,  Held,  that  this  state  of 
facts  was  sufficient  to  excuse  delay  in  bring- 
ing a  motion  to  amend  the  issue  under  the 
practice  announced  in  Churchward  v.  Douglas 
V.  Cutter  (C.  D.  1903,  389,  106  O.  G.  2016),  es- 
pecially in  view  of  the  recent  decisions  of  the 
court  of  appeals  in  Blackford  v.  Wilder  (ante, 
491,  127  O.  G.  1255),  and  Horine  v.  Wende 
(ante,  615,  129  O.  G.  2858).  Becker  v.  Otis, 
C.  D.  1907,  129  O.  G.  1267. 

1476.  Rule  130  does  not  confer  upon  a  party 
the  absolute  right  to  contest  his  opponent's 
right  to  a  claim,  but  allows  him  to  do  so  only 
when  the  objections  urged  against  his  oppo- 
nent's right  to  make  the  claim  do  not  apply 


with   equal    force  to  his  own   case.     Pym   v. 
Hadaway,  C.  D.  1907,  131  O.  G.  692. 

1477.  Under  Rule  130  where  the  operative- 
ness  of  an  opponent's  device  or  his  right  to 
make  the  claim  is  material  to  the  right  of  a 
party  to  a  patent  said  party  may  urge  the  mat- 
ter at  final  hearing  before  the  examiner  of 
interferences  as  a  basis  for  his  award  of 
priority ;  but  as  a  condition  precedent  to  such 
right  the  party  must  first  present  the  matter 
upon  a  motion  for  dissolution  or  show  good 
reason  why  such  motion  was  not  made  and 
prosecuted.  Barber  v.  Wood,  C.  D.  1907,  127 
O.  G.  1991. 

1478.  The  fact  that  a  party  cannot  under  the 
provisions  of  Rule  109  bring  a  motion  to  dis- 
solve as  to  counts  added  to  the  issue  of  the 
interference  will  not  of  itself  prevent  him  from 
urging  under  the  provisions  of  Rule  130  the 
right  of  his  opponent  to  make  the  claims. 
Josleyn  v.  Hulse,  C.  D.  1908,  132  O.  G.  679. 

1479.  The  fact  that  on  appeal  from  a  deci- 
sion on  a  motion  to  dissolve  the  examiners-in- 
chief  have  held  that  a  party  has  a  right  to 
m.akc  the  claims  does  not  prevent  the  question 
being  raised  before  the  examiner  of  interfer- 
ences at  final  hearing  under  Rule  130.  O'Brien 
v.  Gale  v.  Zimmer  v.  Calderwood,  C.  D.  1908, 
133  O.  G.  514. 

1480.  Where  a  party  to  an  interference  does 
not  bring  a  motion  to  dissolve  on  the  ground 
that  his  opponents  have  no  right  to  make  the 
claims  and  no  showing  is  made  why  such  a 
motion  was  not  brought,  he  is  not  entitled  to 
urge  the  question  under  the  provision  of  Rule 
130 ;  but  the  fact  that  such  a  motion  was  not 
brought  does  not  prevent  the  tribunals  of  the 
office  from  considering  the  question  of  their 
own  motion  when  it  appears  that  one  or  more 
of  the  parties  have  no  right  to  make  certain 
of  the  claims.  Smith  v.  Foley  v.  Anderson 
v.  Smith,  C.  D.  1908,  136  O.  G.  847. 

1481.  A  party's  right  to  make  a  claim  in 
issue  in  his  own  application  is  not  a  matter 
that  can  be  properly  raised  at  final  hearing 
under  Rule  130.  Hewitt  and  Waterman  v. 
Greenfield,  C.  D.  1909,  149  O.  G.  1119. 

1482.  A  party  has  no  right  under  the  provi- 
sions of  Rule  130  to  urge  at  final  hearing  the 
non-patentability  of  the  issue.  Perry  &  Hun- 
toon  v.  Busse,  C.  D.  1911,  163  O.  G.  490. 

1483.  Where  a  party  to  an  interference  op- 
poses the  granting  of  a  motion  to  amend  under 
Rule  109  on  the  ground  that  the  moving  party 
has  no  right  to  make  the  proposed  claims. 
Held,  that  under  the  provisions  of  Rule  130  he 


INTERFERENCE,  XXX,  (a). 


287 


can   urge   this   at   final   hearing.     Leonard    v. 
Pardie,  C.  D.  1911,  164  O.  G.  249. 

1484.  Rule  130  provides  a  party  may  urge  at 
final  hearing  the  non-patentability  of  a  claim 
to  his  opponent  only  if  he  has  presented  a 
motion  to  dissolve  the  interference  upon  that 
ground  or  shows  good  reason  why  such  mo- 
tion was  not  presented  and  prosecuted.  Held, 
that  "the  determination  of  the  question  wheth- 
er or  not  such  reason  exists  in  a  given  case 
rests  largely  in  the  discretion  of  the  tribunals 
of  the  patent  office  and  unless  there  has  been 
gross  abuse  of  discretion  this  court  will  not 
interfere.  *Broadwell  v.  Long,  C.  D.  1911, 
104  O.  G.  25?. 

1485.  After  all  the  testimony  had  been  taken 
Broadwell  filed  a  motion  to  dissolve  the  in- 
terference, on  the  ground  that  Long  had  no 
right  to  make  the  claims,  and  a  motion  for 
permission  to  take  testimony  to  show  that 
the  Long  device  is  inoperative.  Transmission 
of  the  motion  to  dissolve  the  interference  was 
refused  and  the  motion  to  reopen  denied,  on 
the  ground  that  the  showing  made  as  to  fail- 
ure to  bring  the  motions  within  the  proper 
time  was  insufficient.  Held  "the  Commissioner 
has  ruled,  and  we  think  properly,  that  the 
reasons  assigned  for  the  delay  were  not  suf- 
ficient to  warrant  the  reopening  of  the  case. 
*  *  *  We  conclude,  therefore,  on  this  branch 
of  the  case,  that  Broadwell  is  here  estopped 
to  question  Long's  right  to  make  these  claims." 
*Id. 

1486.  Where  a  party  seasonably  brought  a 
motion  to  dissolve  the  interference  on  the 
ground  that  his  opponent  had  no  right  to  make 
the  claims  because  of  laches  and  estoppel  and 
the  existence  of  intervening  rights.  Held,  that 
this  was  sufficiently  broad  to  entitle  him  to 
argue  at  final  hearing  the  sufficiency  of  his 
opponent's  disclosure  to  support  the  issue. 
*Manly  v.  Williams,  C.  D.  1911,  168  O.  G. 
loni. 

1487.  Appellee's  disclosure  considered  in  the 
light  of  the  treatment  of  the  application  by 
the  office  and  the  applicant  himself  and  Held, 
not  to  constitute  a  basis  for  claims  to  the 
invention  in  issue.     *Id. 

1488.  Where  after  a  decision  on  priority  by 
the  court  of  appeals  of  the  District  of  Colum- 
bia the  defeated  party  files  a  bill  in  equity 
under  the  provisions  of  section  491."),  Revised 
Statutes,  Held,  that  the  issuance  of  a  patent 
to  the  successful  party  to  the  interference 
cannot  be  suspended  pending  the  final  deter- 


mination of  the  suit.     Mclntyre  v.  Perry,  C. 
D.  1911,  169  O.  G.  943. 

1489.  Where  two  applications  each  of  which 
disclosed  several  species  of  the  invention  were 
involved  in  an  interference  on  a  broad  claim, 
Held,  that  the  successful  party  to  such  inter- 
ference may  after  the  termination  be  allowed 
a  claim  limited  to  one  of  the  specific  forms. 
Ex  parte  Van  Yort,  C.  D.  1911,  170  O.  G.  243. 

XXX.  Originality. 
(a)  In  General. 

1490.  Where  Winslow  relied  upon  his  rec- 
ord date  to  prove  priority  and  Austin  took 
testimony  and  claimed  that  he  disclosed  the 
invention  to  Winslow  before  Winslow  filed 
his  application.  Held,  that  Winslow's  failure 
to  rebut  this  assertion  of  Austin's  furnished 
convincing  evidence  that  Austin  was  the  prior 
inventor.  *Winslow  v.  Austin,  C.  D.  1899, 
86  O.  G.  2171. 

1491.  The  fact  that  Austin  took  an  assign- 
ment from  Licht  and  Kceney,  who  were  the 
assignees  of  Winslow,  ought  not  to  be  taken 
as  an  admission  on  his  part  that  he  in  reality 
and  truth  had  no  claim  to  the  invention  in- 
volved in  the  issue  and  that  the  sole  and  ex- 
clusive right  was  in  Winslow.     *Id. 

1492.  When  the  only  right  which  S.  had  to 
the  continuance  of  the  contest  was  to  deter- 
mine the  question  of  originality  of  invention, 
he  will  not  be  permitted  to  turn  the  contest 
off  upon  some  other  question,  and  thus  pos- 
sibly avoid  a  decision  on  the  only  question 
which  he  really  has  the  right  to  contest.  Shiels 
v.  Lawrence  et  al.,  C.  D.  1899,  87  O.  G.  180. 

1493.  Where  Pickles  made  the  application 
drawing  for  Aglar  and  put  on  said  drawing 
Aglar's  name  as  the  inventor  and  made  no 
claim  at  that  time  that  he  was  the  inventor. 
Held,  that  such  actions  are  strongly  against 
his  claim  to  be  the  inventor,  and  as  his  claim 
to  the  invention  is  not  supported  by  any  tes- 
timony except  his  own  he  cannot  prevail  over 
Aglar,  the  senior  party.  *Pickles  v.  Aglar,  C. 
D.  isy9,  86  O.  G.  346. 

1494.  Where  the  junior  party  admits  that 
his  efl^orts  in  the  field  of  invention  had  been 
superinduced  by  a  knowledge  of  a  different 
invention  by  the  senior  party  upon  the  same 
lines  embodying  the  germ  of  the  one  in  con- 
troversy and  the  question  arises  which  of  them 
was  the  inventor.  Held,  that  the  presumption 
is  in  favor  of  the  senior  party.  *Scott  v.  Scott, 
C.   D.  1901,  96  O.  G.   16.i0. 


288 


INTERFERENCE,  XXX,   (a). 


1495.  Where  the  senior  party  informed  the 
junior  party  that  he  had  apphed  for  a  patent 
on  the  invention  and  the  junior  party  made 
no  protest  and  signified  neither  by  word  nor 
by  act  that  the  invention  was  his  own,  Held, 
that  it  was  then,  if  ever,  he  should  have 
spoken.  *Scott  V.  Scott,  C.  D.  1901,  96  O.  G. 
16.50. 

1496.  The  issue  of  a  patent  raises  a  prima 
facie  presumption  that  the  patentee  is  the  first 
and  original  inventor;  but  this  presumption 
is  met  and  overcome  by  the  fact  that  several 
years  before  the  date  of  his  application  he 
prepared  an  application  for  the  same  inven- 
tion for  another  party  and  signed  it  as  a  wit- 
ness for  that  other  alleged  inventor,  d  Barr 
Car  Co.  V.  Chicago  &  Northwestern  Railway 
Company,  C.  D.  1901,  97  O.  G.  2.').34. 

1497.  Where  the  assignee  of  Howard,  who 
furnished  the  money  for  making  the  machine 
in  1883,  which  was  afterward  dismantled, 
claims  to  have  subsequently  employed  another 
party  merely  to  devise  a  new  feeding  device 
for  the  machine,  but  he  caused  applications  for 
patents  covering  the  entire  machine,  and  not 
merely  the  feeding  device,  to  be  filed  in  the 
name  of  the  second  party.  Held,  that  his  con- 
duct was  inconsistent  with  the  claim  that  he 
regarded  Howard  as  the  successful  inventor 
of  the  machine.  Lloyd  v.  Antisdel,  C.  D.  1901, 
95  O.  G.  164.-). 

1498.  Where  it  is  shown  that  H.  independ- 
ently built  and  operated  a  machine  and  filed  an 
application  for  a  patent  on  the  same,  H.  must 
be  presumed  to  be  an  original  inventor,  and 
it  is  incumbent  upon  F.,  who  alleges  prior  dis- 
closure to  H.,  to  establish  his  allegation  by 
clear  proof.  Funk  v.  Matteson  v.  Haines,  C. 
D.  1902,  100  O.  G.  1563. 

1499.  When  H.  is  the  only  party  to  establish 
an  actual  reduction  to  practice  and  when  the 
testimony  in  behalf  of  F.  not  only  does  not 
support  the  allegation  of  F.  that  the  invention 
was  disclosed  through  his  agent  to  H.,  but  is 
quite  persuasive  that  the  invention  disclosed 
to  H.  related  to  another  structure,  Held,  that 
priority  of  invention  should  be  awarded  to  H. 
Id. 

1500.  The  question  of  originality  when  it 
arises  between  two  parties  to  the  interference 
must  be  investigated,  because  the  question  of 
priority  is  involved  in  it.  It  is  not  the  fact 
of  disclosure  from  one  to  the  other  which 
controls,  but  the  fact  of  priority.  Trufant  v. 
Prindle  v.  Brown,  C.  D.  1902,  101  O.  G.  1608. 


1501.  Where  two  rival  inventors  admit  that 
the  invention  of  the  issue  was  reduced  to 
practice  in  the  presence  of  both  of  them  at  a 
certain  time  in  a  certain  place  and  that  no 
other  person  was  present  at  the  time  and 
place,  Held,  that  the  fact  that  the  invention  of 
the  issue  was  actually  reduced  to  practice  must 
be  accepted  as  established  and  that  the  only 
question  for  decision  is  which  one  of  the 
rival  inventors  is  entitled  to  the  benefit  of  this 
reduction  to  practice.  Weber  v.  Flather,  C. 
D.   1903,  103  O.  G.  223. 

1502.  Where  it  is  established  that  a  reduc- 
tion to  practice  grew  out  of  the  conception  of 
it  by  W.,  even  though  it  may  be  assumed  that 
this  reduction  to  practice  was  the  direct  act 
of  F.,  Held,  that  the  reduction  to  practice  in- 
ures to  the  benefit  of  W.    Id. 

1503.  When  the  contesting  parties  to  an  in- 
terference are  not  independent  inventors, 
working  out  the  same  conception  separately 
and  unknown  to  each  other,  but  each  claims 
the  conception  and  reduction  to  practice  of 
a  construction  that  was  set  on  foot  by  one 
to  meet  a  novel  condition  and  was  manufac- 
tured by  the  other,  and  the  only  witnesses 
are  the  contesting  parties,  each  of  whom  tes- 
tifies in  his  own  behalf,  which  testimony  re- 
sults in  conflict  of  statement,  it  is  natural 
and  proper  to  look  to  the  unquestioned  facts 
and  circumstances  that  surround  the  trans- 
action, or  occurrence,  and  shed  light  upon  it, 
to  ascertain  whether  they,  and  the  proper  in- 
ference therefrom,  corroborate  or  contradict 
one  or  the  other  party.  For  such  purposes 
they  are  always  entitled  to  more  or  less  weight 
and  sometimes  even  carry  more  than  do  the 
words  of  witnesses.  Beals  v.  Finkenbiner,  C. 
D.  1898,  326,  82  O.  G.  598,  13  App.  D.  C.  23, 
29,  and  cases  cited.  Gallagher  v.  Hastings, 
C.  D.  1003,  103  O.  G.  1165. 

1504.  Where  there  was  but  one  person  be- 
sides the  parties  themselves  who  had  any  di- 
rect knowledge  of  their  respective  claims  to 
the  conception  of  the  invention — viz.,  a  drafts- 
man employed  by  G.,  who  was  present  at  the 
invention  and  heard  all  that  occurred — and  the 
testimony  shows  that  this  person  is  still  in 
the  employ  of  G.  and  could  have  been  called 
by  either  party,  any  unfavorable  inference 
that  may  arise  from  the  failure  to  call  this 
witness  ought  to  operate  against  G.  rather 
than  H.,  for  the  reason  that  it  is  hardly  to  be 
presumed  that  H.  had  an  equal  opportunity 
with  G.  to  know  what  his  recollections  of  the 
occurrence  might  be.    It  is  hardly  possible  to 


INTERFERENCE,  XXX,  (a). 


289 


believe  that  G.  did  not  know  whose  testimony 
this  witness  would  corroborate  if  called  to 
testify.     *Id. 

1505.  Where  each  party  claims  to  have  dis- 
closed the  invention  to  the  other  and  there 
were  constant  disputes  between  them  in  re- 
gard to  the  matter,  but  it  is  admitted  by  one 
party  and  his  financial  backer  that  the  other 
party  suggested  many  improvements  and  they 
permitted  him  to  file  an  application  without 
protest  and  actually  paid  the  expenses  of  it, 
Held,  that  he  must  be  regarded  as  the  first 
inventor.  *Whitney  v.  Howard,  C.  D.  1903, 
104  O.  G.  16.59. 

1506.  Where  H.  employed  W.  to  build  a 
machine  and  each  party  claims  to  have  in- 
vented the  improvements  embodied  therein 
and  it  appears  that  H.  filed  his  application 
through  the  attorneys  of  W.'s  company  and 
the  company  paid  the  expenses  and  W.  with 
a  full  knowledge  of  that  application  made 
affidavits  for  use  by  H.  therein  referring  to 
the  making  of  the  invention.  Held,  that  H. 
must  be  regarded  as  the  inventor.    *Id. 

1507.  Where  the  question  at  issue  is  one 
of  originality  of  invention  and  the  testimony 
shows  that  F.  was  an  experienced  inventor, 
that  the  general  type  of  machine  in  contro- 
versy was  invented  by  him,  that  he  made  the 
drawings  of  the  improvements  in  issue,  and 
that  these  improvements  were  constructed 
under  his  supervision,  whereas  D.  and  D. 
were  inexperienced  inventors  and  yet  contend 
that  F.  worked  under  their  directions.  Held. 
that  there  arises  a  strong  presumption  that  F. 
is  the  inventor.  Fenwick  v.  Dixon  and  Dixon, 
C.   D.  1903,  107  O.  G.  1373. 

1508.  In  the  absence  of  clear  and  convinc- 
ing testimony  to  the  contrary  the  presumption 
in  favor  of  F.  must  prevail,  and  judgment  is 
accordingly  rendered   in  his  behalf.     Id. 

1509.  Where  there  is  evidence  that  one 
party  to  the  interference,  T.,  disclosed  the  in- 
vention to  another  party.  C,  and  because  of 
insufficient  evidence  T.  failed  to  establish  a 
conception  prior  to  that  established  by  C, 
Held,  that  newly-discovered  evidence  tending 
to  show  that  T.  conceived  before  the  alleged 
date  of  disclosure  to  C.  becomes  material  to 
the  case.  Robinson  v.  Townsend  v.  Copeland, 
C.  D.  1903,  107  O.  G.  1376. 

1510.  Held,  that  Sendelbach  was  the  orig- 
inal and  first  inventor  of  the  subject-matter 
in  controversy  and  that  the  patent  was  prop- 
erly issued  to  him.  *Sendelbach  v.  Gillette, 
C.  D.  1904,  109  O.  G.  276. 

19 


1511.  Where  Gillette  claims  to  have  dis- 
closed the  invention  to  Sendelbach,  but  it  does 
not  appear  that  the  disclosure  was  of  such 
special  character  as  to  the  combination  of 
parts  as  to  have  enabled  a  mechanic  of  ordi- 
nary ingenuity  and  skill  in  that  particular 
trade  or  calling  to  have  constructed  and  put 
the  improvement  in  successful  operation. 
Held,  that  Sendelbach  must  be  regarded  as  an 
independent  inventor.     *Id. 

1512.  Where  a  party  claims  to  have  con- 
ceived the  invention  and  disclosed  it  to  an- 
other, who  reduced  it  to  practice,  the  dis- 
closure in  order  to  be  effectual  must  be 
shown  to  have  been  fully  and  clear  as  to  all 
the  essential  elements  of  the  invention  and 
such  as  was  sufficient  in  itself  to  enable  the 
party  to  whom  the  disclosure  was  made  to 
give  the  invention  practical  form  and  effect 
without  the  e.xercise  of  invention  on  his  part. 
*Id. 

1513.  An  inventor  cannot  be  deprived  of 
the  right  to  his  invention  where  he  has  used 
due  diligence  in  the  assertion  of  his  right  ex- 
cept by  express  contract  or  by  a  course  of 
conduct  that  fairly  gives  rise  to  an  implica- 
tion of  an  intention  to  part  with  or  dispose  of 
the  right,  and  a  presumption  to  that  effect  is 
not  lightly  to  be  made.    *Id. 

1514.  Held,  upon  a  consideration  of  the 
evidence  that  Russell  was  the  original  and 
first  inventor  of  the  device  in  controversy, 
and  therefore  the  decision  must  be  in  his 
favor.  Russell  v.  Asencio,  C.  D.  1904,  109  O. 
G.  160.-. 

1515.  .Asencio's  assignee  and  principal  wit- 
ness claims  that  Asencio  disclosed  the  inven- 
tion to  him,  but  it  appears  that  he  did  not  re- 
duce it  to  practice  or  file  an  application  until 
after  he  heard  of  Russell's  work  upon  the 
same  lines  and  until  after  Russell,  with  his 
financial  assistance,  had  made  and  tested  the 
device  and,  with  his  consent,  had  filed  an  ap- 
plication which  was  assigned  to  .A.scncio,  Held. 
that  Russell  must  be  regarded  as  the  inventor. 
Id. 

1516.  Where  Asencio's  assignee  was  the  one 
who  furnished  the  money  for  Russell's  ex- 
periments and  paid  for  Russell's  application 
for  patent,  but  refused  to  pay  the  final  fee 
and  let  the  application  become  forfeited  and 
then  induced  .■\sencio  to  file  an  application 
for  and  secure  a  patent  upon  the  same  inven- 
tion, while  Russell's  case  was  forfeited.  Held, 
that  the  burden  of  proof  is  upon  Asencio  to 
show  that  he  was  the  first  inventor.     (Christ- 


290 


INTERI-ERENCH,  XXX,   (a). 


enson  v.  Noyes,  C.  D.  1900,  212,  90  O.  G.  227, 
distinguished.)     Id. 

1517.  Held,  that  the  evidence  shows  that 
Greenwood  disclosed  the  invention  to  Dover 
and  fails  to  show  that  Dover  had  a  concep- 
tion of  it  before  the  date  of  conception  proved 
by  Greenwood  and  that  therefore  Greenwood 
must  be  regarded  as  the  first  inventor. 
♦Greenwood  v.  Dover,  C.  D.  1904,  109  O.  G. 
2172. 

1518.  Held,  that  P.  cannot  be  adjudged  the 
prior  inventor  as  against  B.,  who  was  first  to 
file  his  application  and  who  actually  reduced 
the  invention  to  practice  before  P.  conceived 
it.  The  allegation  that  B.  is  not  an  original 
inventor  does  not  assist  P.'s  claim.  Trufant 
V.  Prindle  v.  Brown,  C.  D.  1904,  111  O.  G. 
1035. 

1519.  Held,  that  the  evidence  is  insufficient 
to  show  that  Brown  derived  his  knowledge  of 
the  invention  from  Trufant,  and  therefore 
Brown  is  to  be  regarded  as  an  original  inven- 
tor.    Id. 

1520.  Where  both  parties  were  working  for 
the  same  company  and  each  party  claims  to 
have  disclosed  the  invention  to  the  other,  but 
where  it  is  admitted  by  the  president  of  the 
company,  who  is  the  financial  backer  of  one 
of  the  parties,  that  the  other  contestant  was 
hired  for  the  purpose  of  making  such  inven- 
tions, Held,  the  presumption  is  that  the  inven- 
tion was  made  by  the  person  hired  for  that 
purpose.  Murphy  v.  Meissner,  C.  D.  1904, 
367,  112  O.  G.  249. 

1521.  Where  the  testimony  is  conflicting, 
but  it  is  acknowledged  by  the  president  of  the 
company  that  he  instructed  one  of  the  con- 
testants, who  was  employed  to  make  such  in- 
ventions, to  file  an  application  through  the 
attorneys  \  employed  by  the  company,  and 
where  such  application  was  actually  prepared 
and  filed  in  the  patent  office.  Held,  that  the 
party  who  executed  such  application  must  be 
regarded  as  the  first  inventor.     Id. 

1522.  Where  such  first  applicant's  inventor- 
ship was  not  questioned  until  a  disagreement 
between  the  president  of  the  company  and 
the  applicant  as  to  the  ownership  of  the  in- 
vention, resulting,  under  direction  of  the 
president,  in  another  application  being  filed 
for  the  same  invention  by  another  employee  of 
the  company,  Held,  that  the  first  applicant 
must  be  regarded  as  the  true  inventor.     Id. 

1523.  Where  Asencio  secured  his  patent 
while  Russell's  application  was  forfeited,  but 
that  forfeiture  was  due  to  the  fault  of  Asen- 


cio's  agent,  and  it  appears  from  the  evidence 
that  Russell  was  the  first  to  conceive  the  in- 
vention and  took  part  in  the  single  reduction 
to  practice  claimed  by  both  parties.  Held,  that 
Russell  is  the  first  inventor.  *Asencio  v.  Rus- 
sell. C.  D.  1904,   112  O.  G.  955. 

1524.  Where  A.,  who  was  not  skilled  in  the 
art,  claims  to  have  conceived  the  invention  in 
feeding  pulverized  fuel  in  1896,  and  to  have 
then  disclosed  it  to  his  agent,  N.,  who  was  at- 
tempting to  make  improvements  in  that  art, 
but  they  made  no  progress  toward  reducing 
it  to  practice  until  they  met  R.,  who  was  an 
expert  in  the  art,  claiming  prior  conception 
of  the  invention,  and  who  proceeded  to  re- 
duce it  to  practice,  and  the  evidence  indicates 
that  R.  furnished  the  ideas  and  N.  the  money. 
Held,  that  R.  is  the  real  inventor.     *Id. 

1525.  Where  M.  fails  to  establish  that  he 
had  a  conception  of  the  invention  in  issue 
before  meeting  D.  and  they  both  claim  to 
have  disclosed  the  invention  to  the  other  by 
having  a  tool  changed  to  embody  the  issue 
and  the  witnesses  called  to  corroborate  M.  in 
the  man  corroborate  D.  and  his  witnesses, 
Held,  that  M.  has  not  sustained  the  burden  of 
proof  and  that  D.  is  the  original  inventor. 
Mitchell  V.  Dinsmore,  C.  D.  1904,  113  O.  G. 
279. 

1526.  Where  A.  claims  to  have  conceived, 
disclosed,  made  drawings,  and  reduced  the  in- 
vention to  practice  between  September  12 
and  September  24,  the  date  of  the  interview 
with  B.,  and  several  witnesses  corroborate 
him,  but  in  some  instances  there  are  circum- 
stances tending  to  show  that  these  witnesses 
are  mistaken  and  in  others  the  surrounding 
circumstances  are  suspicious  and  the  means 
relied  upon  for  fixing  the  date  discredited. 
Held,  that  B.,  who  claims  that  he  disclosed 
the  invention  to  A.  at  the  interview  on  Sep- 
tember 24,  and  whose  testimony  is  not  im- 
peached, is  the  original  inventor.  Blackman 
V.  .Mexander,  C.  D.   1904,  113  O.  G.  1703. 

1527.  Where  C.  alleges  a  conception  of  the 
invention  in  February,  1901,  and  it  appears 
that  C.  was  an  employee  of  K.  prior  to  that 
date  and  the  testimony  shows  that  he  was 
present  while  the  work  was  going  on  under 
the  supervision  of  K.  with  respect  to  the  in- 
vention of  the  issue,  and  that  he  had  an  op- 
portunity of  seeing  and  observing  the  work, 
and.  in  fact,  did  see  and  observe  the  work, 
and  C.  does  not  deny  these  facts,  Held,  that 
they  must  be  regarded  as  established,  and  C. 
is  therefore   not  an  original   inventor  of   the 


INTERFEREN'CE,  XXX,  (a). 


291 


issue.     Kyle  v.  Corner,  C.  D.  inof,  113  O.  G. 
2216. 

1528.  Where  it  is  established  beyond  ques- 
tinn  that  B.  had  working  drawings  and  a 
model  made  of  the  invention  and  that  H.  saw 
them  and  understood  their  construction  and 
operation  and  said  nothing  about  any  pre- 
vious conception  or  disclosure  of  it  by  him- 
self, notwithstanding  the  fact  that  both  parties 
were  at  the  time  in  the  employ  of  the  same 
company,  which  was  engaged  in  the  manufac- 
ture of  similar  devices  and  whose  superintend- 
ent solicited  suggestions  from  its  employees 
for  improved  constructions,  and  H.  persisted 
for  more  than  a  year  in  the  same  silence  after 
seeing  the  invention  as  disclosed  by  B.  and 
did  not  even  seek  within  that  time  to  protect 
himself  by  an  application  for  a  patent.  Held, 
that  H.'s  conduct  was  antagonistic  to  his 
claim  of  invention  and  was  not  consistent 
with  the  existence  of  a  right  on  his  part  which 
he  was  desirous  to  protect.  *Harter  v.  Bar- 
rett, C.  D.  1905,  114  O.  G.  975. 

1529.  Where  the  case  is  one  of  originality 
as  distinguished  from  priority  of  invention 
and  it  appears  that  the  junior  party  filed  his 
application  only  because  the  senior  party  re- 
fused to  assign  his  invention  to  the  company 
which  employed  him,  and  the  senior  party's 
application  was  filed  at  the  solicitation  of  said 
company.  Held,  that  these  circumstances  show 
quite  conclusively  that  the  senior  party  is  the 
inventor.  *Murphy  v.  Meissner,  114  O.  G. 
1830. 

1530.  Where  the  applicant  Cherney  proves 
that  he  made  patterns  embodying  certain 
counts  of  the  issue  before  any  date  proved 
by  Clauss,  and  Clauss  asserts  that  they  were 
made  from  disclosures  by  him,  but  this  is 
denied  by  Cherney,  Held,  that  Cherney  must 
be  regarded  as  the  inventor  of  these  counts. 
The  burden  was  on  Clauss  to  prove  the  dis- 
closure, and  he  failed  to  sustain  it.  *Cherney 
V.  Clauss,  C.  D.  1905,  116  O.  G.  597. 

1531.  Where  T.  made  a  machine  at  H.'s 
request  which  when  completed  embodied  the 
invention  in  issue  and  each  party  claims  to 
have  suggested  the  improvements,  and  where 
there  is  evidence  of  conception  by  H.  before 
T.  was  employed  and  no  evidence  of  concep- 
tion by  T.,  and  after  making  the  machine  T. 
delayed  his  application  for  patent  for  nine 
months,  although  he  knew  of  H.'s  applica- 
tion. Held,  that  H.  is  the  real  inventor.  Thi- 
bodcau  V.  Hildreth,  C.  D.  1905,  116  O.  G. 
1183. 


1532.  Held,  that  D.  was  the  original  inven- 
tor of  the  subject-matter  in  controversy  and 
that  H.  derived  his  knowledge  of  it  from  a 
communication  by  D.'s  company  to  H.'s  com- 
pany. Doble  V.  Henry,  C.  D.  1905,  118  O.  G. 
2249. 

1533.  Where  it  appears  that  W.  was  a  pro- 
fessional inventor  of  machinery  of  the  class 
in  issue  when  he  claims  to  have  made  the 
invention  in  issue,  that  the  G.  and  L.  Company 
was  making  patented  machinery  of  W.'s  in- 
vention at  that  time,  that  C.  first  appears  with 
the  invention  after  W.  had  terminated  his 
contract  with  the  company,  and  that  C,  then 
president  of  the  company,  desired  a  machine 
avoiding  W.'s  patents,  Held,  that  these  facts 
lend  support  to  the  contention  of  W.  that  the 
invention  was  derived  by  C.  from  W.  Wilkin 
V.  Cleveland,  C.  D.  1905,  118  O.  G.  2533. 

1534.  Where  the  party  to  an  interference 
proceeding  who  is  the  first  to  reduce  an  in- 
vention to  practice  is  shown  to  have  received 
his  knowledge  of  the  invention  from 
the  other  party,  who  is  the  first  to 
conceive  of  the  invention.  Held,  that 
the  reduction  to  practice  of  the  invention  in- 
ured to  the  benefit  of  the  one  who  was  the 
lirst  to  conceive.  Weyant  v.  Brown  v.  Sitt- 
mann.  C.  D.  1905,  118  O.  G.  587. 

1535.  Where  the  claim  is  made  that  an  in- 
vention was  disclosed  by  one  party  to  another, 
who  afterwards  is  alleged  to  have  threatened 
to  appropriate  the  invention  to  his  own  use, 
and  it  appears  after  the  threat  was  alleged  to 
have  been  made  that  neither  party  promptly 
took  active  steps  toward  reducing  the  inven- 
tion to  practice,  Held,  that  such  delay  is  not 
in  accordance  with  the  laws  which  govern 
ordinary  human  conduct,  and  the  claim  of 
misappropriation  of  the  invention  is  not 
proved.     Id. 

153G.  Held,  that  although  the  conclusion  to 
be  drawn  from  the  fact  that  R.  did  not  file  his 
application  until  after  K.'s  failure  to  assign 
his  patent  to  the  company  (assignee  of  R.'s 
application)  is  unfavorable  to  R.,  the  presump- 
tion against  K.  from  his  failure  to  deny  the 
charges  of  R.  is  of  greater  weight,  and  that 
even  if  K.  was  not  the  inventor  it  was  for  the 
interest  of  the  company  to  acquire  an  assign- 
ment of  K.'s  patent  in  order  to  avoid  possible 
litigation.  Royce  v.  Kempshall.  C.  D.  1906,  125 
O.  G.  1347. 

1537.  Evidence  considered  and  Held,  insuffi- 
cient to  clearly  prove  that  the  invention  of  the 
issue  originated  with  French  rather  than  Hal- 


292 


INTERFERENCE,  XXX,   (a). 


comb.     *French  v.   Halcomb,  C.  D.  1906,  120 
O.  G.  1824. 

1538.  Where  a  party  contended  that  he  com- 
municated the  invention  to  his  opponent,  but 
did  not  claim  to  have  made  complete  disclo- 
sure, and  the  circumstances  did  not  support 
the  theory  of  derivation,  Held,  that  the  rule 
of  Winslow  V.  Austin  (C.  D.  1899,  301,  86 
O.  G.  2171,  14  App.  D.  C.  137)  that  the  fail- 
ure of  a  party  to  relnit  the  sworn  statement 
of  his  adversary  that  he  had  fully  disclosed 
the  invention  to  him  furnished  strong  evi- 
dence that  the  latter  was  not  the  prior  inven- 
tor did  not  apply.  *Podlesak  and  Podlesak 
V.  McTnnerney.  C.  D.  1906,  120  O.  G.  2127. 

1539.  Held,  that  the  commissioner  of  patents 
having  found  there  was  an  interference  in 
fact  and  that  McTnnerney  had  the  right  to 
make  the  claim  could  come  to  no  other  conclu- 
sion upon  the  proofs  and  the  law  applicable 
thereto  than  the  one  he  did,  and  consequently 
his  award  of  priority  is  correct  if  the  remain- 
ing questions  be  decided  in  Mclnnerney's 
favor.    *Id. 

1540.  As  between  two  parties  each  claiming 
disclosure  of  the  invention  to  the  other, 
where  one  of  such  parties  has  a  practical 
knowledge  of  the  art  and  the  other  has  not 
there  is  a  strong  presumption  in  favor  of  the 
one  having  such  practical  knowledge.  ♦Alex- 
ander V.  Blackman,  C.  D.  1906,  121  O.  G. 
1979. 

1541.  Where  the  evidence  shows  that  H.  is 
not  an  original  inventor.  Held,  that  the  ques- 
tion of  the  diligence  of  D.  is  immaterial. 
♦Henry  v.  Doble,  C.  D.  1906,  122  O.  G.  1398. 

1542.  Where  plans  and  specifications  sub- 
mitted to  the  construction  company  with 
which  H.  was  connected  disclosed  the  inven- 
tion and  H.  prepared  a  proposal  to  meet  said 
requirements,  Held,  that  H.  is  not  an  original 
inventor.     *Id. 

1543.  If  there  could  be  any  doubt  that  the 
invention  of  the  issue  was  disclosed  by  cer- 
tain specifications  to  the  perception  of  H., 
who  undertook  the  preparation  of  a  proposal 
to  meet  their  requirements,  it  is  removed  by 
his  own  admission  under  examination  as  a 
witness  that  they  suggest  the  subject-matter 
of  the  interference.    *Id. 

1544.  Upon  the  question  of  originality  of 
invention  the  surrounding  circumstances  and 
the  conduct  of  the  parties  at  the  time  are 
more  convincing  as  evidence  than  specific 
claims  made  by  them  long  afterward,  and  it  is 
essential  in  weighing  the  specific  testimony  to 


have  in  mind  the  relations  of  the  parties  to 
each  other  and  to  the  principal  facts  proved 
or  admitted  in  the  development  of  the  inter- 
ference.    Larkin   v.    Richardson,    C.   D.    1906, 

122  O.  G.  2390. 

1545.  When  a  party  claims  an  invention  and 
also  to  have  communicated  that  invention  to 
another,  who  has  applied  mechanical  work 
thereto,  and  put  such  invention  into  practice, 
claiming  the  same  as  his  own,  the  communi- 
cation in  order  to  be  effectual  must  be  shown 
to  have  been  full  and  clear  as  to  all  the  essen- 
tial elements  of  the  invention  and  such  as 
was  sufficient  in  itself  to  enable  the  party 
to  whom  the  disclosure  was  made  to  give  the 
invention  practical  form  and  effect  without 
the  exercise  of  invention  on  his  part.  ♦Ander- 
son V.  Wells,  C.  D.  1906,  122  O.  G.  3014. 

1546.  Held,  that  upon  examination  of  the 
evidence  and  aside  from  the  weight  attached 
to  the  unanimous  decisions  of  the  patent  of- 
fice tribunals  there  is  no  doubt  but  that  Wilkin 
was  the  real  inventor  and  that  Cleveland  ob- 
tained his  knowledge  of  the  invention  from 
Newton's  drawing  made  after  Wilkin's  orig- 
inal sketch.    ♦Cleveland  v.  Wilkin,  C.  D.  1906, 

123  O.  G.  1286. 

1547.  Held,  that  wherever  there  is  a  con- 
flict between  the  witnesses  surrounding  and 
well-established  circumstances  of  great  weight 
support  those  who  testified  on  behalf  of  Wil- 
kin.    ♦Id. 

1548.  Where  S.  obtained  patents  before 
B.'s  applications  were  filed,  but  credible  and 
competent  witnesses  testify  to  disclosure  of 
the  invention  to  them  by  B.  before  the  date 
of  conception  claimed  by  S.  and  to  disclosure 
by  B.  to  the  brother-in-law  and  business  asso- 
ciate of  S.  before  that  date  and  circumstances 
support  the  conclusion  that  B.  and  not  S.  is 
the  inventor  and  the  delay  of  B.  in  applying 
for  patents  and  his  failure  to  reduce  to  prac- 
tice are  satisfactorily  explained,  Held,  that  S. 
derived  the  invention  from  B.  *Shuman  v. 
Bcall.  Jr.,  C.  D.  1906,  123  O.  G.  1664. 

1549.  Where  B.  conceived  the  invention  and 
S.  appropriated  B.'s  conception  and  reduced 
the  same  to  practice  and  took  out  patents  upon 
the  same  as  his  own  invention,  Held,  that  the 
work  of  S.  upon  the  invention  inured  to  the 
benefit  of  B.    ♦Id. 

1550.  Reduction  to  practice  by  S.  in  the 
course  of  work  for  the  company  employing  B. 
under  circumstances  which  naturally  led  B. 
to  suppose  the  reduction  was  recognized  as 
that   of   his   own    invention   satisfactorily   ac- 


INTERFERENCE,  XXX,  (a). 


293 


counts  for  B.'s  long  inaction  and  other  con- 
duct tending  to  bear  against  the  justice  of  his 
claim  for  patents.     *ld. 

1551.  Where  it  is  contended  by  K.  that  he 
suggested  the  invention  in  issue  to  K.,  but  K. 
denies  that  R.  made  suggestions  to  him  rela- 
tive to  the  structure  of  the  stopper  in  issue 
except  as  to  the  narrow  slot,  and  it  is  shown 
by  K.  that  he  had  in  his  possession  prior  to 
his  conversation  with  R.  a  patent  to  one 
Harris  showing  a  similar  slot.  Held,  that  it  is 
of  little  consequence  whether  K.  obtained  a 
suggestion  as  to  the  form  of  the  slot  from 
R.  or  from  the  Harris  patent,  as  this  feature 
is  only  one  element  of  the  structure  embodied 
in  the  combination  defined  by  the  issue.  Kirke- 
gaard  and  Jebsen  v.  Ries,  C.  D.  1906,  125  O. 
G.  1700. 

1552.  Where  B.  claims  conception  of  the  in- 
vention and  disclosure  to  an  associate  of  S. 
prior  to  S.'s  alleged  date  of  conception  and 
is  corroborated  as  to  both  matters  by  credible 
witnesses  and  the  associate  is  discredited  by 
his  denial  that  the  invention  was  so  disclosed 
to  him  and  the  weight  of  circumstances  is  in 
favor  of  derivation  by  S.  from  B.  through 
the  associate.  Held,  that  the  testimony  of  S. 
and  the  associate  to  independent  invention  by 
S.  and  the  inference  unfavorable  to  B.  from 
inactivity  in  connection  with  the  invention 
are  overcome  and  that  B.  is  entitled  to  an 
award  of  priority  of  invention.  Beall  v.  Shu- 
man,    C.   D.    1906,   120    O.   G.   635. 

1553.  Held,  that  the  mere  appearance  of  two 
parties  with  the  same  invention  identical  in 
many  novel  and  distinct  details  raises  some 
suspicion  of  derivation  by  one  from  the  other, 
and  where  one  of  these  parties  is  proved  to 
have  been  in  possession  of  the  invention  prior 
to  any  date  of  possession  proved  by  the  other 
party  and  it  is  shown  that  opportunity  for 
derivation  by  the  later  party  from  the  earlier 
party  occurred  prior  to  such  proved  date  of 
possession  by  the  latter  party  the  suspicion  of 
derivation,  in  the  absence  of  s£<tisfactory 
evidence  to  the  contrary,  becomes  conviction, 
and  it  must  be  held  that  the  later  party  did, 
in  fact,  obtain  the  invention  from  the  earlier 
Iiarty.     Id. 

1554.  Where  B.  was  not  active  in  obtain- 
ing patents  or  in  the  reduction  to  practice 
and  promotion  of  the  invention  which  was 
carried  on  by  S.,  but  produces  evidence  in 
support  of  his  claim  that  he  supposed  S.  to 
be  carrying  out  B.'s  conception  in  the  busi- 
ness of  the  common  employer  of   B.  and   S., 


Held,  that  in  t^le  absence  of  proof  that  B.  in 
the  period  of  his  inactivity  had  notice  of  S.'s 
adverse  claim  no  inferences  strongly  unfavor- 
able to  B.  can  be  drawn  from  his  inactivity. 
Id. 

1555.  Where  B.  carefully  omitted  from  his 
applications,  prepared  from  S.'s  patents,  fea- 
tures of  invention  disclosed  in  the  patents  to 
S.  and  which  B.  in  testifying  claims  to  have 
invented.  Held,  that  the  inference  from  these 
facts  that  B.  did  not  originate  the  inventions 
in  issue  is  too  remote  to  stand  against  satis- 
factory evidence  that  B.  did  originate  the  in- 
vention in  issue.    Id. 

1556.  Where  the  evidence  indicated  that  the 
senior  party  derived  the  invention  in  contro- 
versy from  the  junior  party  and  that  prior 
to  the  junior  party's  application  the  senior 
party  admitted  that  the  invention  was  made 
by  the  junior  party.  Held,  that  the  election  of 
the  senior  party  to  rely  on  his  record  date 
rather  than  to  take  the  stand  and  explain  such 
admissions  is  significant  evidence  of  their 
truth.  *Id.  Kempshall  v.  Royce,  C.  D.  1907, 
129  O.  G.  3162. 

1557.  An  allegation  of  derivation  of  an  in- 
vention by  one  party  from  another  is  not 
proved  by  a  mere  showing  that  opportunity 
for  such  derivation  existed.  Id.  Woods  v. 
Poor,  C.  D.  1907,  126  O.  G.  391. 

1558.  A  statement  by  applicant  to  his  as- 
signee that  he  does  not  regard  himself  as  the 
inventor  of  the  subject-matter  claimed  in  such 
application  is  not  sufficient  to  warrant  an 
award  of  priority  to  an  opponent  where  it 
appears  that  such  statement  was  made  during 
a  controversy  between  the  parties  with  regard 
to  the  amount  of  royalty  which  should  be  paid 
to  the  assignor.  *Gibbons  v.  Peller,  C.  D. 
1907,  127  O.  G.  3C43. 

1559.  Where  W.  stated  in  the  presence  of  K. 
and  a  witness  that  he  proposed  to  file  an  ap- 
plication for  patent  for  an  invention  which 
each  now  claims  to  have  made  and  K.  at 
that  time  made  no  protest,  but  a  few  days 
later  went  to  W.  and  asked  to  have  his  name 
in  the  patent.  Held,  that  as  it  appeared  that 
W.  was  at  the  head  of  the  business  and  was 
a  man  of  violent  temper  and  that  K.  made 
it  a  practice  not  to  dispute  W.  in  the  presence 
of  others,  and  in  view  of  the  fact  that  K. 
was  an  intelligent  man  at  the  head  of  a  large 
department  his  request  to  have  his  name  in 
the  patent  indicated  that  he  regarded  himself 
at  that  time  to  be  the  inventor  of  the  process 


294 


INTERFERENCE,  XXX,   (a). 


in  issue.    Wcidmann  v.  Knup,  C.  D.  1907,  131 
O.  G.  3143. 

1560.  A  failure  to  assert  the  origination  of 
an  invention  by  a  subordinate  officer  against  ^ 
the  claims  of  his  superior  cannot  be  regarded 
as  acquiescence  in  the  superior  officer's  claims 
to  the  invention  wliere  prior  to  that  time  the 
subordinate  officer  had  tiled  an  application  for 
such  invention.     Id. 

1561.  Where  R.,  who  was  a  patent  solicitor, 
familiar  with  the  patent  law,  both  as  inventor 
and  solicitor,  entered  into  a  contract  with  K. 
and  J.,  joint  claimants  of  the  invention  in 
issue,  according  to  the  terms  of  which  he 
was  to  attempt  the  sale  of  the  invention  and 
if  he  was  successful  he  was  to  have  one-third 
of  the  proceeds,  Held,  to  constitute  a  substan- 
tial acknowledgment  that  the  invention  was 
made  by  K.  and  J.  *Ries  v.  Kirkegaard  and 
Jebsen,  C.  D.  1908,  133  O.  G.  199. 

1562.  The  communication  of  an  idea  of  the 
desirability  of  accomplishing  a  certain  result, 
without  a  disclosure  of  the  means  to  be  em- 
ployed, cannot  be  regarded  as  a  communica- 
tion of  an  invention.  *Fenner  v.  Blake,  C.  D. 
I'.ldS,   i:!4  O.  G.  2244. 

1563.  W.,  who  was  a  manufacturer  of  clus- 
ter-sockets, entered  into  a  contract  with  D., 
whereby  he  was  to  furnish  such  sockets  to 
D.  and  to  no  other  manufacturer,  and  D.  was 
tn  push  the  sale  of  the  same.  There  was  a 
demand  for  an  improved  form  of  socket,  and 
W.  constructed  such  a  device  embodying  the 
issue  in  August,  1902,  which  he  testified  he 
showed  to  D.  Held,  that  this  testimony  in 
view  of  the  relation  between  the  parties  and 
in  the  absence  of  an  unequivocal  denial  by 
D.  is  sufficient  to  establish  such  disclosure. 
♦Weeks  v.  Dale,  C.  D.  190.S,  13.")  O.  G.  318. 

1564.  The  testimony  of  a  party  to  an  inter- 
ference that  he  devised  a  removable  metallic 
plate  for  a  specified  purpose  after  he  had  re- 
ceived the  suggestion  of  a  third  party  through 
the  opposing  party  of  a  removable  plate  cov- 
ered with  cloth  for  the  same  purpose  is  equiv- 
alent to  an  admission  that  the  opposing  party 
was  first  in  possession  of  the  invention  in 
issue  covering  a  removable  surface  or  plate 
broadly  and  also  a  metallic  removable  plate 
for  such  purpose.  *Bossart  v.  Pohl,  C.  D. 
1908,  135  O.  G.  453. 

1565.  Where  the  junior  party  testified  that 
he  disclosed  the  invention  to  the  senior  party, 
through  the  latter's  agent,  which  is  denied  by 
the  senior  party,  the  failure  of  the  senior  party 
to  call  the  agent  to  corroborate  his  testimony 


docs  not  raise  a  presumption  in  favor  of  the 
junior  party  of  sufficient  force  to  dispense 
with  proof  to  corroborate  his  allegations. 
Brown  v.  Fessenden,  C.  D.  1908,  137  O.  G. 
14  82. 

1566.  The  testimony  reviewed  and  Held,  in 
view  of  the  unquestioned  facts  of  the  case 
and  the  circumstances  surrounding  the  trans- 
actions between  L.  and  D.  to  sustain  D.'s 
claim  that  he  was  the  original  inventor.  *DufT 
V.  Latshaw,  C.  D.  1908,  13G  O.  G.  658. 

1567.  K.,  who  succeeded  D.  as  superintend- 
ent of  L.'s  factory,  filed  an  application  for  the 
invention  in  issue  at  L.'s  suggestion  and  for 
his  benefit,  L.'s  application  not  being  filed  until 
after  the  interference  was  declared  between 
K.  and  D.  Held,  that  this  strongly  discredits 
L.'s  claim  to  inventorship.     *Id. 

1568.  The  testimony  reviewed  and.  Held,  in 
view  of  all  the  circumstances  of  the  case  to 
show  that  C.  was  the  original  inventor  of 
the  invention  in  issue  and  that  D.  derived 
his  knowledge  thereof  from  him.  'Conner 
v.  Dean,  C.  D.  1909,  142  O.  G.  856. 

1569.  When  O.  was  admittedly  the  inventor 
of  all  the  features  of  the  invention  save  one, 
and  H.  obtained  his  knowledge  of  these  fea- 
tures from  O.,  and  the  testimony  was  not 
clear  as  to  whether  the  other  feature  was  an 
improvement  suggested  by  H.  or  by  a  third 
party,  Held,  that  O.  was  entitled  to  an  award 
of  priority  in  either  event,  inasmuch  as  a 
partnership  relation  was  shown  to  exist  be- 
tween O.  and  H.  at  the  time  the  invention 
in  issue  was  made.  Ohlsen  v.  Harmer,  C.  D. 
1909,  148  O.  G.  1085. 

1570.  In  cases  where  the  question  is  on  the 
originality  rather  than  priority  of  invention 
the  surrounding  circumstances  and  conduct 
(if  the  parties  are  entitled  to  great  weight.  Id. 

1571.  P.  filed  his  application  for  a  cable- 
hanger  after  he  had  obtained  knowledge, 
through  an  interference,  of  H.'s  application. 
He  claimed  to  have  conceived  the  invention 
in  issue  and  reduced  it  to  practice  at  the 
same  time  that  he  invented  a  similar  device 
shown  in  an  earlier  application  on  which  he 
obtained  a  patent.  Held,  that  P.,  being  a 
manufacturer  of  cable-hangers,  an  inventor, 
and  highly  skilled  in  the  art,  was  certainly 
in  a  position  to  understand  and  fully  appre- 
ciate the  value  of  such  device,  and  it  was  in- 
conceivable that  he  should  have  failed  to  dis- 
close it  in  his  earlier  application  if  he  actually 
had  conceived  it  and  embodied  it  in  concrete 


INTERFERENCE,  XXX,  (b). 


293 


form.    *Peirce  v.  Hiss,  Jr.,  C.  D.  1909,  141  O. 
G.  116-). 

1572.  Wiiere  a  party  to  an  interference  tes- 
tifies that  he  described  to  the  opposing  party 
certain  experiments  which  he  had  made  in- 
volving the  invention  of  the  issue  and  it  ap- 
pears that  such  party  at  the  time  of  such  dis- 
closure was  highly  skilled  in  the  art  and  that 
prior  thereto  he  was  not  in  possession  of  the 
invention,  the  failure  of  such  party  to  testify 
in  his  own  belialf  justilies  the  conclusion  that 
the  testimony  is  true.     *Id. 

1573.  Evidence  considered  and  Held,  insuffi- 
cient to  show  that  the  invention  in  issue  orig- 
inated with  appellant,  the  junior  party. 
♦Smith  v.  Phelps,  C.  D.  1910,  155  O.  G.  1043. 

1574.  Evidence  considered  and  Held,  to  es- 
tablish, in  view  of  all  the  circumstances  of 
the  case,  that  S.  was  not  an  original  inventor, 
but  derived  her  knowledge  of  the  invention 
in  issue  from  B.  Barnes  v.  Swartout,  C.  D. 
1910,  161  O.  G.  1045. 

(b)  Employer  and  Employee. 

1575.  An  employee  performing  all  the  du- 
ties assigned  to  him  in  his  department  of 
service  may  exercise  his  inventive  faculties 
in  any  direction  he  chooses  with  the  assurance 
that  whatever  invention  he  may  thus  conceive 
and  perfect  in  his  individual  property.  (Solo- 
mons v.  U.  S.,  C.  D.  1891,  267,  54  O.  G.  265, 
137  U.  S.  342.)  Streat  v.  Freckleton,  C.  D. 
1899,  87  O.  G.  695. 

1576.  The  first  inventor  cannot  be  deprived 
of  an  award  of  priority  because  he  was  at 
one  time  employed  by  his  opponent,  who  had 
disclosed  to  him  a  portion  of  the  issue  of  the 
interference,  when  it  appeared  that  he  was 
not  employed  to  devise  or  perfect  an  inven- 
tion being  developed  by  the  employer,  or  the 
suggestions  or  improvements  made  by  the  first 
inventor  were  not  merely  "ancillary  to  the 
plan  and  preconceived  design  of  the  employer." 
Id. 

1577.  Where  Bernard  employed  Huebel  to 
make  the  device  and  pointed  out  the  distinc- 
tive and  dominating  feature  of  his  improve- 
ment, but  did  not  make  anything  resembling 
a  perfect  drawing  for  his  guidance  or  describe 
the  proposed  construction  in  detail,  Held,  that 
Huebel  is  not  entitled  to  claim  the  invention, 
although  by  reason  of  his  mechanical  skill  he 
may  have  made  a  neater  and  more  perfect 
device  than  was  in  the  mind  of  Bernard. 
♦Huebel  v.  Bernard,  C.  D.  1900,  90  O.  G.  751. 


1578.  An  inventor  who  employs  a  mechanic 
to  embody  his  conception  in  practical  form 
retains  his  exclusive  right  to  the  perfected 
improvement  notwithstanding  the  perfection 
is  partly  due  to  the  exercise  of  the  mechanical 
skill  of  the  employee.  The  latter  must  in- 
vent something,  not  merely  improve  by  the 
exercise  of  his  mechanical  skill  upon  a  con- 
ception which  he  has  been  employed  to  work 
out.  (Agawam  Co.  v.  Jordan,  7  Wall.  583; 
Milton  V.  Kingsley,  C.  D.  1896,  420,  75  O.  G. 
2193.;     *Id. 

1579.  Held,  that  the  evidence  on  behalf  of 
Bernard  has  overcome  the  burden  of  proof 
imposed  upon  him  by  the  earlier  application 
of  Huebel  and  has  successfully  established 
his  claim  to  the  award.  The  decision  ap- 
pealed from  affirmed.  (G7  MS.  Dec.  2G.) 
*Id. 

1580.  Where  each  party  claims  to  have  dis- 
closed to  the  other  an  invention  jointly  em- 
bodied in  a  machine  and  there  is  no  other  di- 
rect testimony  on  the  subject,  but  the  col- 
lateral circumstances — such  as  the  previous 
experience  of  the  parties,  the  refusal  of  M. 
to  answer  questions,  and  the  contradiction  by 
witnesses  of  statements  made  by  him  on 
other  matters — tend  to  discredit  M.  and  cor- 
roborate K.,  Held,  that  the  decision  must  be 
in  favor  of  K.  *Miller  v.  Kelley,  C.  D.  1901, 
90  O.  G.  1038. 

1581.  Where  K.  was  an  expert  machinist  en- 
gaged in  perfecting  and  improving  match- 
making machinery  upon  which  he  had  obtained 
a  patent  and  he  employed  M.  as  a  mechanic, 
who  knew  nothing  of  such  machinery,  to  as- 
sist him  in  his  work,  and  they  produced  the 
machine  embodying  the  invention  in  contro- 
versy and  each  claimed  it  as  his  invention. 
Held,  that  the  probabilities  are  in  favor  of  K. 
*Id. 

1582.  As  between  an  employer  and  a  party 
employed  for  a  special  purpose  matters  merely 
auxiliary  or  tributary  to  the  main  invention 
can  give  to  the  employee  no  claim  as  an  in- 
ventor, and  in  regard  to  such  features  as 
amount  to  independent  inventions  a  presump- 
tion exists  in  favor  of  the  employer  as  the 
author  of  the  same  which  can  only  be  over- 
come by  conclusive  and  unequivocal  proofs. 
*Id. 

1583.  Although  an  employee  is  to  be  pro- 
tected from  the  rapacity  of  the  employer  as 
much  as  the  employer  from  the  dishonesty  of 
the  employee,  and  if  the  employee  makes  an 
invention  wholly  independent  of  the  employer 


296 


INTERFERENCE,  XXX,   (b). 


it  belongs  to  him  and  does  not  inure  to  the 
benefit  of  the  employer.  Held,  that  in  case 
of  dispute  as  to  a  particular  improvement  the 
presumption  is  in  favor  of  the  employer.    *Id. 

1584.  Where  A.  employed  L.  as  a  pattern- 
maker to  embody  his  ideas  in  a  model  and  L. 
suggested  the  introduction  of  a  headed  rivet 
as  one  of  the  features,  Held,  that  where  the 
invention  in  controversy  consisted  of  a  com- 
bination of  parts  only  one  of  which  was  a 
headed  rivet,  A.  and  not  L.  was  to  be  regard- 
ed as  the  inventor.  *Lloyd  v.  Antisdel,  C.  D. 
1901,  9">  O.  G.    1645. 

1585.  Where  a  party  prepares  an  application 
for  patent  and  drawings  for  another  party 
as  inventor  and  signs  them  as  a  witness  and 
makes  no  claim  at  that  time  that  he  is  the 
inventor  and  asserts  no  such  claim  until  three 
years  thereafter,  when  he  files  an  application. 
Held,  that  no  credit  can  be  given  to  his  claim, 
judging  the  case  in  the  light  of  the  usual  con- 
duct of  men.  d  Barr  Car  Co.  v.  Chicago  & 
Northwestern   Railway  Company,  C.   D.  1901, 

97  O.  G.  2.i34. 

1586.  Where  an  alleged  inventor  was  em- 
ployed by  a  company  and  failed  to  assert  claim 
to  the  invention  in  the  face  of  claims  by  a 
superior  officer  to  the  same  invention  and  al- 
leges as  an  excuse  a  fear  that  he  would  lose 
his  employment,  Held,  that  this  is  not  a  valid 
excuse  for  his  silence  in  the  absence  of  active 
compulsion  by  the  superior,     d  Id. 

1587.  Where  it  is  shown  that  T.  construct- 
ed the  first  machine  embodying  the  invention 
and  delivered  it  to  K.  when  finished  and  it  is 
alleged  on  behalf  of  K.  that  T.  was  merely 
employed  to  embody  K.'s  idea  and  the  evi- 
dence shows  that  K.  had  a  conception  of  the 
invention  before  T.'s  alleged  date  of  concep- 
tion. Held,  that  K.  is  the  prior  inventor.  The 
decision  of  the  commissioner  of  patents  af- 
firmed. *Tyler  v.  Kelch,  C.  D.  1902,  98  0.  G. 
1282. 

1588.  The  rule  is  that  one  who  by  way  of 
partnership  or  contract,  or  in  any  other,  em- 
powers another  person  to  make  experiments 
upon  his  own  conception  for  the  purpose  of 
perfecting  it  in  its  details  is  entitled  to  the 
ownership  of  such  improvements  in  the  con- 
ception as  may  be  suggested  by  such  other 
person.  The  second  person  is  not  in  law  to 
be  regarded  as  an  independent  and  original 
inventor.     *Gedge   v.   Cromwell,   C.    D.    1902, 

98  O.  G.  1486. 

1589.  Where  C.'s  company  by  contract 
agreed  to  make  improvements  upon  G.'s  pat- 


ented reel,  Held,  that  it  was  incumbent  upon 
C.  to  show  beyond  a  reasonable  doubt  that 
what  he  did  was  his  own  invention  and  not 
that  of  G.    *Id. 

1590.  Where  C.'s  company  agreed  to  im- 
prove G."s  reels  and  it  appears  that  G.  made 
disclosures  to  one  member  of  C.'s  company. 
Held,  that  it  was  not  necessary  to  show  dis- 
closure to  C.  in  person,  since  he  was  charge- 
able with  the  notice  to  his  firm.     *Id. 

1591.  Where  G.  had  a  patent  upon  wire- 
reels,  granted  in  1891,  and  in  1897  C.  by  con- 
tract undertook  in  subordination  to  G.  and 
for  the  benefit  of  his  invention  to  make  im- 
provements upon  that  reel  and  perfect  its  de- 
tails, the  profits  to  be  equally  divided  between 
them.  Held,  that  whatever  improvements  were 
made  are  to  be  regarded  as  the  invention  of 
G.  (.\gawam  v.  Jordan,  7  Wall.  583;  Milton 
v.  Kingsley,  C.  D.  1896,  420,  75  O.  G.  2193,  7 
App.  D.  C.  531.)     Id. 

1592.  When  one  who  has  conceived  the  prin- 
ciple or  plan  of  an  invention  employs  another 
to  perfect  the  details  and  to  realize  his  con- 
ception and  the  employee  devises  new  and 
valuable  improvements  in  the  original  con- 
ception or  invention,  the  improvements  belong 
to  the  employer  and  not  to  the  employee, 
(.^gawam  Company  v.  Jordan,  7  Wall.  583, 
r.02;  Milton  V.  Kingsley,  C.  D.  1890,  420,  75 
O.  G.  2193.)  Hastings  v.  Gallagher,  C.  D. 
1903,  103  O.  G.  425. 

1593.  It  is  not  necessary  for  the  employer 
to  disclose  every  specific  feature  of  the  issue 
to  the  employee.  In  order  to  be  entitled  to 
an  award  of  priority,  the  employer  need  only 
disclose  to  the  employee  the  general  principle 
of  the  invention — the  broad  idea — and  engage 
him  to  "perfect  the  details"  and  to  "realize  his 
conception."    Id. 

1594.  Where  the  employee  claims  that  the 
reduction  to  practice  which  was  realized  on 
the  conception  of  the  employer  contains  cer- 
tain new  improvements  which  were  devised 
by  the  employee.  Held,  that  even  admitting 
that  fact,  the  improvements  "belong  to  the 
employer  and  not  to  the  employee."  (Milton 
V.  Kingsley,  supra.)  The  exceedingly  liberal 
policy  of  the  patent  office  in  the  allowance  of 
independent  patents  for  minute  improvements 
is  not  to  be  regarded  as  contravening  this  rule. 
Gedge  v.  Cromwell,  C.  D.  1902,  514,  98  O.  G. 
1486.     Id. 

1595.  Where  H.  disclosed  the  idea  of  a  bol- 
ster with  recesses  for  sills  to  G.  and  employed 
him  to  construct  one  of  that  kind,  the  rela- 


INTERFERENCE,  XXX,  (b). 


297 


tion  of  employer  and  employee,  to  which  the 
law  attaches  certain  consequences,  was  estab- 
Hshed  between  them.  These  consequences  are 
that  if  the  employee  makes  a  mere  improve- 
ment on  the  general  idea  in  the  course  of 
reducing  the  invention  to  practice  it  belongs 
to  the  employer  and  not  to  the  employee.    Id. 

1596.  Where  the  relation  of  employer  and 
employee  is  established  between  two  contest- 
ing parties  to  an  interference,  the  principle 
controlling  that  relation  imposed  upon  the 
employee,  at  least,  the  burden  of  showing  that 
the  employment  was  not  to  give  practical 
form  to  a  conception  of  his  employer,  but 
merely  to  provide  means  to  answer  a  general 
purpose,  and  that  in  so  doing  he  had  an  inde- 
pendent conception  of  the  way  to  accomplish 
that  purpose.     Id. 

1597.  Where  it  is  established  that  H.  em- 
ployed G.  to  work  out  an  invention  the  gen- 
eral features  of  which  were  disclosed  by  H. 
to  G.,  Held,  that  the  reduction  to  practice  by 
G.  inures  to  the  benefit  of  H.  and  H.  is  en- 
titled to  the  award  of  priority  of  invention. 
Id. 

1598.  Where  it  is  conceded  that  W.  was 
the  mover  and  instigator  of  the  whole  effort 
to  produce  the  invention,  that  all  experiments 
made  after  F.  became  interested  were  in  the 
presence  and  with  the  co-operation  of  W.,  and 
that  the  experiments  were  made  in  W.'s  shed 
with  no  other  witness  present  to  say  what  was 
done,  Held,  that  W.  must  be  regarded  as  the 
inventor.  *Flather  v.  Weber,  C.  D.  1903,  104 
O.  G.  312. 

1599.  Where  W.  signed  the  application  of  F. 
as  a  witness,  but  it  appears  from  the  evidence 
that  it  was  through  a  misunderstanding  and 
upon  the  supposition  that  the  application  was 
for  their  joint  benefit,  Held,  that  the  circum- 
stance cannot  be  construed  against  W.'s  claim 
as  inventor  and  in  favor  of  F.    *Id. 

1600.  The  weight  of  the  testimony  of  the 
parties  and  its  inherent  probabilities  must  be 
considered  in  the  light  of  all  the  circumstances 
of  the  case,  and  though  conflict  may  exist  a 
rational  conclusion  may  be  drawn  from  what 
appears  to  be  the  real  transaction  as  disclosed 
by  the  surrounding  circumstances — such  cir- 
cumstances as  lend  support  to  the  credibility 
of  one  of  the  parties  as  opposed  to  that  of 
another.    *Id. 

1601.  Where  it  is  admitted  by  both  parties 
that  the  invention  was  reduced  to  practice  in 
the  presence  of  both  of  them  and  the  only 
dispute   between    the   parties    is   as   to    which 


one  is  entitled  to  the  benefit  of  this  reduction, 
Held,  that  the  fact  that  the  invention  was  re- 
duced to  practice  may  be  taken  as  established. 
*Id. 

1602.  Where  the  device  embodying  the  in- 
vention in  controversy  was  made  by  W.  upon 
the  order  of  H.  and  it  is  admitted  that  H. 
was  familiar  with  the  subject  and  suggested 
all  sorts  of  alterations.  Held,  that  H.  must 
regarded  as  the  inventor  in  the  absence  of  con- 
vincing evidence  that  W.  was  the  real  inven- 
tor. Whitney  v.  Howard  v.  Stanley  and 
Stanley,  C.  D.  1903,  104  O.  G.  1391. 

1603.  Where  W.  and  H.  working  together 
made  the  invention  and  there  is  a  conflict  of 
testimony  as  to  who  was  the  originator,  but 
it  appears  that  W.  permitted  H.  to  file  an 
application  in  his  own  name  without  protest 
and  executed  an  affidavit  to  be  used  by  H.  in 
that  case  and  did  not  file  his  own  application 
until  si.x  months  later.  Held,  that  H.  is  the 
first  inventor.     Id. 

1604.  Whatever  equitable  interest  B.  may 
have  in  the  W.  invention  is  not  a  question  to 
be  decided  upon  an  appeal  on  priority  unless 
the  relation  of  employer  and  employee  be 
established  in  the  perfecting  of  the  invention. 
In  such  cases  it  must  satisfactorily  appear  that 
the  employer  disclosed  the  invention  to  the 
employee  and  that  the  employee  merely  per- 
fected the  same  on  the  lines  of  the  original 
disclosure  to  him.  Bowler  v.  Wilcox,  C.  D. 
1903,   lUG  O.  G.  993. 

1605.  Where  the  testimony  clearly  shows 
that  R.  was  the  first  to  conceive  of  an  arti- 
cle of  manufacture  and  subsequently  consulted 
with  G.,  a  mechanical  expert,  to  inquire  of 
G.  whether  a  machine  could  be  built  to  make 
that  invention,  and  G.,  at  R.'s  request,  suc- 
ceeded in  constructing  a  mechanism  to  per- 
form that  work.  Held,  that  the  resulting  re- 
duction to  practice  of  the  article  of  manufac- 
ture inures  to  the  benefit  of  R.,  and  R.  is 
therefore  the  prior  inventor  of  said  article 
of  manufacture.  Granger  v.  Richardson,  C. 
D.  1901.  110  O.  G.  1724. 

1606.  When  there  is  a  conflict  of  testimony 
between  the  contesting  inventors  and  all  the 
surrounding  circumstances  point  plainly  to  the 
fact  that  R.  was  the  first,  if  not  the  only, 
conceiver  of  the  invention  and  all  that  G.  did 
in  connection  with  the  same  grew  out  of  and 
was  dependent  upon  R.'s  disclosure  to  him. 
Held,  that  R.  is  the  prior  inventor.     Id. 

1607.  Where  Jackson  and  Summerfield  en- 
tered into  an  agreement  under  which  Jackson 


298 


INTERFERENCE,  XXX,   (b). 


was  to  make  improvements  in  cotton-pickers 
and  Summcrfield  was  to  bear  the  expense,  the 
parties  sharing  equally  in  the  profits,  and  it 
appears  that  Jackson  did  design  a  machine, 
but  that  Summerfield  suggested  an  improve- 
ment in  one  element  of  that  machine.  Held, 
that  Jackson  is  to  be  regarded  as  the  first  in- 
ventor of  the  issue,  although  it  includes  the 
element  suggested  by  Summerfield.  Jackson 
V.  Summerfield,  C.  D.  1904,  112  O.  G.  1212. 

1608.  Where  a  party  has  conceived  the  prin- 
ciple or  plan  of  an  invention  and  is  working 
under  a  contract  with  another  person  to  per- 
fect it  for  the  benefit  of  both  and  that  other 
person  suggests  an  improvement  ancillary  to 
the  plan  and  preconceived  design,  Held,  that 
the  first  person  is  entitled  to  claim  the  device, 
including  the  improvement,  and  is  entitled  to 
the  patent.     Id. 

1609.  Where  W.  and  S.  made  the  invention 
while  employed  by  a  company  in  a  position 
where  Schroeder  was  their  superior  officer, 
but  it  does  not  appear  that  Schroeder  disclosed 
the  invention  to  them  or  employed  them  to 
work  out  any  preconceived  design  made  by 
him.  Held,  that  W.  and  S.  are  to  be  regarded 
as  original  inventors.  Schroeder  v.  Wageley 
and  Stocke,  C.  D.  1905,  118  O.  G.  268. 

1610.  To  establish  the  relation  of  employer 
and  employee  which  will  entitle  the  employer 
to  claim  the  benefit  of  improvements  made  by 
the  employee,  it  must  be  shown  that  the  em- 
ployment relates  to  the  subject-matter  of  the 
invention  involving  an  agreement  to  perfect 
a  preconceived  design  of  the  employer  re- 
lating to  that  invention.  The  mere  employ- 
ment of  a  workman  does  not  entitle  the  em- 
ployer to  claim  all  inventions  made  by  him. 
Id. 

1611.  Where  the  evidence  clearly  shows 
that  O.  was  engaged  as  a  mechanic  by  McD. 
to  construct  a  device  w'hich  had  been  conceived 
by  McD.  and  a  feature  auxiliary  to  the  main 
invention  is  placed  upon  the  machine  during 
the  construction  of  the  same.  Held,  that  the 
relation  of  employer  and  employee  is  estab- 
lished and  the  entire  invention  belongs  to  the 
employer  and  a  patent  should  be  granted  to 
him.  Orcutt  v.  McDonald  and  McDonald,  C. 
D.  lOO.'i,  118  O.  G.  591. 

1612.  Where  the  employee  delayed  in  filing 
his  application  for  some  fourteen  months  after 
the  employer  filed  his  application  and  after 
he  had  failed  to  obtain  from  the  employer 
money  which  he  demanded  of  him,  which  de- 
mand was  made  not  because  he  claimed  to  be 


the  inventor,  but  merely  for  work  done  as  a 
mechanic.  Held,  that  such  actions  do  not  tend 
to  support  the  employee  in  his  claims  as  an 
inventor  of  the  invention  of  the  issue.    Id. 

1613.  Where  employee  improved  patented 
device  of  employer,  but  the  improvement  of 
that  specific  device  was  not  contemplated  as 
part  of  the  employee's  duty  and  no  suggestion 
of  such  improvement  was  made  by  the  em- 
ployer. Held,  that  the  employee  and  not  the 
employer  is  the  inventor  of  the  improvements. 
Peckham  v.  Price,  C.  D.  1905,  118  O.  G.  1934. 

1614.  The  doctrine  by  which  the  creations 
of  one  party  are  patented  as  the  inventions 
of  another  party  on  account  of  certain  rela- 
tions existing  between  the  parties  when  the  in- 
vention was  made  is  an  exception  to  a  rule  of 
the  patent  law  of  this  country,  otherwise 
strictly  enforced,  namely,  the  creator  of  the 
specific  art  or  instrument  to  be  patented  is 
alone  to  be  considered  the  inventor  thereof 
and  that  it  is  only  to  him  or  his  representatives 
or  assigns  that  a  valid  patent  can  be  issued. 
Id. 

1615.  The  unexplained  failure  of  the  em- 
ployer to  take  the  stand  necessitates  inferences 
in  favor  of  the  employee's  claim  to  independ- 
ent inventorship.     Id. 

1616.  Where  the  record  clearly  shows  that 
H.  not  only  exercised  rigid  and  careful  super- 
vision of  the  work  performed  by  F.,  but  also 
gave  many  specific  directions  to  F.  as  to 
what  he  should  do  in  making  tests,  and  it  is 
apparent  that  F.  did  little  more  than  carry  out 
the  suggestions  and  make  reports  of  the  re- 
sults of  the  tests  to  H.,  and  that  H.  was  the 
president  of  the  company  of  which  F.  was 
the  chemist.  Held,  that  the  relation  of  employ- 
er and  employee  existed  between  H.  and  F., 
and  though  the  invention  of  the  issue  was 
actually  reduced  to  practice  it  was  the  result 
of  a  general  disclosure  of  the  invention  by 
H.  to  F.,  and  that  all  F.  did  after  the  dis- 
closure to  him  by  H.  is  what  might  have  been 
expected  from  any  person  skilled  in  the  art 
who  was  employed  for  the  purpose  of  com- 
pleting a  general  conception,  and  that  priority 
of  invention  should  be  awarded  to  H.  French 
V.  Halcomb,  C.  D.  1905,  115  O.  G.  506. 

1617.  Where  it  is  admitted  by  F.  that  H. 
furnished  him  with  all  mixes  and  made  sug- 
gestions and  exercised  rigid  oversight  over 
all  his  work,  with  the  sole  exception  of  the 
single  specific  invention  of  the  issue,  and  H. 
obtains  a  patent  before  F.  files  his  application, 
which    was   only    done   after    the    knowledge 


INTERFERENCE,  XXX,  (b). 


299 


came  to  him  of  H.'s  patent.  Held,  that  the 
presumption  is  raised  that  H.  also  disclosed 
the  invention  of  the  issue  to  F.     Id. 

1618.  Where  F.  testifies  to  a  certain  dis- 
closure to  H.  and  H.  does  not  deny  the  fact 
of  this  alleged  disclosure,  Held,  the  absence 
of  this  denial  can  have  no  effect  upon  the  cir- 
cumstances of  the  case,  since  the  alleged  dis- 
closure, even  if  true,  is  not  a  disclosure  of  the 
invention  of  the  issue,  but  a  mere  disclosure 
of  something  that  was  already  well  known  by 
experts  in  that  art.    Id. 

1619.  Held,  that  Corry  and  Barker,  who 
built  a  device  under  the  directions  of  McDer- 
mott,  have  not  sustained  the  burden  of  prov- 
ing that  the  device  embodied  an  independent 
invention  made  by  them  and  not  disclosed  by 
McDermott.  Decision  in  favor  of  McDermott 
affirmed.  *Corry  et  al.  v.  McDermott,  C.  D. 
]90.->,  117  O.  G.  279. 

1620.  Where  Corry  and  Barker  were  not 
only  the  junior  parties,  but  admittedly  em- 
ployed by  McDermott  to  construct  a  machine 
embodying  an  invention  made  by  him,  Held, 
that  the  burden  is  upon  them  to  prove  that 
the  improvements  embodied  by  them  in  the 
machine  Were  their  own  invention  and  not 
the  ideas  suggested  by  McDermott     *Id. 

1621.  Where  Thibodeau  was  employed  by 
Hildreth  and  was  admittedly  instructed  to 
improve  a  particular  machine  and  each  party 
claims  the  machine  made  as  his  invention. 
Held,  that  the  decision  must  be  in  favor  of 
Hildreth  in  the  absence  of  any  satisfactory 
evidence  as  to  who  suggested  the  improve- 
ments, particularly  since  Thibodeau  allowed 
Hildreth  to  make  application  without  protest. 
♦Thibodeau  v.  Hildreth,  C.  D.  190:,,  117  O.  G. 
6111. 

1622.  When  the  employer  instructed  the 
employee  to  stamp  the  article  "Patent  applied 
for,"  which  he  did  without  protest.  Held,  that 
it  was  then,  if  at  all,  that  the  employee  would 
naturally  be  expected  to  assert  his  claim  of 
invention,  and  his  failure  to  do  so  raises  a 
strong  presumption  that  the  employer  was  the 
real  inventor  and  that  the  present  claim  of 
the  employee  is  a  mere  afterthought.  Larkin 
V.  Richardson,  C.  D.  1906,  122  O.  G.  2390. 

1623.  Where  R.  suggested  the  main  and 
predominating  structural  features  of  the  in- 
vention and  all  that  remained  to  be  supplied 
were  the  details  of  the  fastening  means.  Held. 
that  these  details,  if  they  called  for  anything 
more  than  the  skill  of  the  mechanic,  are  clear- 
ly   merely    ancillary    features,   brought    about 


by  the  suggestion  of  the  general  plan  or  main 
structural  features,  and  even  in  the  absence  of 
specific  proof  that  they  were  suggested  by  R. 
they  are  to  be  regarded  as  his  invention.     Id. 

1624.  Where  the  evidence  is  silent  as  to  who 
suggested  the  specific  details,  the  presumption 
is  that  the  inventor  of  the  broad  idea  also 
suggested  the  details.     Id. 

1625.  One  who  conceives  the  plan  of  an  in- 
vention and  is  engaged  in  experiments  to 
perfect  it  and  who  employs  another  to  realize 
his  conception  is  not  to  be  deprived  of  the 
exclusive  property  in  the  perfected  improve- 
ment by  any  suggestions  of  the  employee 
which  do  not  amount  in  themselves  to  a  com- 
plete invention.  The  suggested  features  are 
to  be  regarded  as  ancillary  to  the  main  in- 
vention and  belong  to  the  employer.  *Orcutt 
V.  McDonald,  Jr.,  and  McDonald,  C.  D.  190C, 
123  O.  G.  1287. 

1626.  When  one  conceives  the  principle  or 
plan  of  an  invention  and  employs  another  to 
perfect  the  details  and  realize  his  conception, 
though  the  latter  may  make  valuable  improve- 
ments therein,  such  improved  result  belongs 
to  the  employer.  *Kreag  v.  Geen,  C.  D.  1907, 
127  O.  G.  1581. 

1627.  Where  a  person  has  discovered  an 
improved  principle  in  a  manufacture  and  em- 
ploys others  in  assisting  him  to  carry  out  that 
principle,  and  these  in  that  employment  make 
valuable  additions  to  the  preconceived  design 
of  the  employer,  such  suggested  improve- 
ments are  in  general  to  be  regarded  as  the 
property  of  the  party  who  discovered  the 
original  improved  principle  and  may  be  em- 
bodied in  his  patent  as  part  of  his  invention. 
(See  Agawam  Co.  v.  Jordan,  7  Wall.  r.S:!,  602; 
Gedge  v.  Cromwell,  C.  D.  1903,  .514,  9.S  O.  G. 
1480,  19  .\pp.  D.  C.  198;  Milton  v.  Kingsley, 
C.  D.  1896,  42G,  75  O.  G.  2195,  7  App.  D.  C. 
537.)  *Larkin  v.  Richardson,  C.  D.  1907,  127 
O.  G.  2394. 

1628.  Inventors  are  often  compelled  to 
have  their  conceptions  embodied  in  construc- 
tion by  skilled  mechanics  and  manufacturers, 
whose  practical  knowledge  often  enables  them 
to  suggest  and  make  valuable  improvements 
in  simplifying  and  perfecting  machines  or  de- 
vices, and  the  inventor  is  entitled  to  protec- 
tion from  their  efforts  to  claim  his  inven- 
tion. At  the  same  time  an  employee  is  to  be 
protected  from  the  rapacity  of  his  employer 
also,  and  if  in  doing  the  work  assigned  him 
the  employee  goes  farther  than  mechanical 
skill  enables  him  to  do  and  makes  an  actual 


300 


INTERFERENCE,  XXX,   (b). 


invention  he  is  equally  entitled  to  the  benefit 
of  his  invention.  *Robinson  v,  McCormick, 
C.  D.  1907,  128  O.  G.  :!28'J. 

1629.  Where  an  employee  claims  protection 
for  an  improvement  wliich  he  devised  while 
working  ii|)on  a  general  conception  of  his  em- 
ployer, the  burden  is  generally  upon  him  to 
show  that  he  made  an  invention  in  fact.     *Id. 

1630.  To  claim  the  benefit  of  the  employee's 
skill  and  achievement,  it  is  not  sufficient  that 
the  employer  had  in  mind  a  desired  result  and 
employed  one  to  devise  means  for  its  ac- 
complishment. He  must  show  that  he  had 
an  idea  of  the  means  to  accomplish  the  par- 
ticular result,  which  he  communicated  to  the 
employee  in  such  detail  as  to  enable  the  latter 
to  embody  the  same  in  some  practical  form. 
*Id. 

1631.  Where  an  employee  was  assigned  to 
the  duty  of  producing  a  new  telephone  trans- 
mitter and  during  the  time  he  was  experiment- 
ing on  such  devices  constructed  six  or  seven 
different  transmitters,  but  did  not  construct 
any  embodying  the  invention  in  issue,  the  pre- 
sumption is  strong  that  he  did  not  construct 
such  device  because  he  was  not  possessed  of 
the  inventive  idea.  *Hansen  v.  Dean,  C.  D. 
10(17,   129   O.  G.   48.3. 

1632.  Where  an  employee  is  assigned  to 
the  duty  of  producing  a  new  telephone  trans- 
mitter, but  after  experiments  to  this  end  fails 
to  produce  an  acceptable  device  and  is  assigned 
to  the  work  of  testing  electrical  instruments 
and  while  so  employed  he  tests  a  transmitter 
invented  by  a  coemployee  containing  the  in- 
vention in  issue  and  continues  in  his  employ- 
ment for  several  months  thereafter  without 
making  claim  to  the  one  who  had  charge  of 
the  experimental  work  and  who  assigned  him 
to  such  work  that  the  invention  was  his,  al- 
though the  claim  was  made  to  others,  and 
fails  to  construct  a  device  or  file  an  applica- 
tion until  after  he  had  left  his  employer  and 
about  seven  months  after  he  had  tested  the 
invention  claimed  by  his  coemployee,  a  claim 
that  he  invented  the  device  during  his  experi- 
mental work  can  be  given  little  weight.    *Id. 

1633.  Where  an  invention  is  reduced  to 
practice  by  B.  while  working  as  an  assistant 
of  H.  and  in  pursuance  of  a  general  plan  ar- 
ranged by  H.  and  his  associate  officers  with  a 
view  to  the  attainment  of  the  result  actually 
accomplished  by  such  invention,  the  presump- 
tion is  that  the  reduction  to  practice  is  a  re- 
sult of  H.'s  disclosures  to  B.,  and  in  order 
for  the  latter   to  prevail   on   the  question  of 


priority  he  must  affirmatively  show  that  he 
was  an  independent  inventor.  Braunstein  v. 
Holmes,  C.   D.    1907,   lliU  O.  G.  2;!71. 

1634.  It  is  well  settled  that  in  the  relation 
of  employer  and  employee  where  the  employer 
conceived  the  principle  or  plan  of  an  inven- 
tion and  the  employee  is  directed  to  perfect 
the  details,  though  the  employee  may  make 
valuable  improvements  thereon,  the  improved 
result  belongs  to  the  employer.  The  same 
rule  of  law  applies  to  principal  and  assistant, 
though  they  may  be  fellow  employees.  ♦Braun- 
stein V.  Holmes,  C.  D.  1908,  13:!  O.  G.  19:!7. 

1635.  B.  was  assigned  to  assist  H.  in  mak- 
ing investigation  and  actually  did  the  work 
which  resulted  in  reducing  the  invention  to 
practice.  Held,  that  the  presumption  is  that 
what  he  accomplished  was  done  under  H.'s 
direction,  and  the  burden  is  on  him  to  over- 
come that  presumption.     *Id. 

1636.  It  is  well  settled  that  if  one  conveys 
to  his  employees  information  and  instructions 
to  proceed  and  manufacture  a  piece  of  me- 
chanism which,  with  the  instruction  imparted, 
can  be  constructed  by  the  application  of  ordi- 
nary mechanical  skill,  such  employer  is  enti- 
tled to  the  benefit  of  the  skill  and  ingenuity 
of  the  employee  in  successfully  completing 
the  device.  (Sparkman  v.  Higgins,  1  Blatchf. 
206;  Yoder  v.  Mills,  C.  D.  1886,  115,  34  O.  G. 
1048,  25  Fed.  Rep.  821  ;  Huebel  v.  Bernard,  C. 
D.  1900,  22;j,  90  O.  G.  751,  15  App.  D.  C.  510; 
Agawam  v.  Jordan,  7  Wall.  583.)  *Neth  and 
Tamplin  v.  Ohmer,  and  Ohmer  v.  Ohmer,  C. 
D.   1908,  135  O.  G.  662. 

1637.  Where  the  question  is  one  of  orig- 
inality and  the  relation  of  employer  and  em- 
ployee exists  between  the  parties,  the  fact  that 
the  junior  party,  who  was  the  employee,  did 
not  file  his  application  till  nearly  a  year  after 
he  knew  of  the  issuance  of  the  senior  party's 
patent  and  has  given  no  excuse  for  such  delay 
justifies  resolving  any  doubt  as  to  who  was 
the  originator  of  the  invention  against  him. 
*McKillop,  V.  Fetzer,  C.  D.  1908,  136  O.  G. 
1770. 

1638.  Evidence  considered  and  Held,  to 
show  that  B.  originated  the  invention  and  that 
no  such  relation  of  employer  and  employee 
was  shown  to  exist  as  would  cause  the  inven- 
tion to  inure  to  the  benefit  of  G.  Gould  v. 
Barnard.  C.  D.  1908,  132  O.  G.  1071. 

1639.  R.  was  a  manufacturer  of  artificial 
limbs  and  a  prolific  inventor  in  that  art.  M. 
at  the  time  he  entered  R.'s  employ  was  not 
a  mechanic  nor  skilled  in  the  art,  and  though 


INTERFERENCE,  XXXI,  (a). 


301 


lie  claimed  to  have  conceived  the  invention 
while  in  R.'s  employ  made  no  disclosure  of 
it  to  any  one,  but  within  a  month  from  the 
time  he  entered  the  employ  of  a  rival  manu- 
facturer made  a  full-sized  device.  These 
facts,  together  with  the  fact  that  M.  was  ad- 
mittedly familiar  with  the  improvements  got- 
ten up  l)y  K.,  Held,  sufficient  to  show,  as  testi- 
fied by  R.,  that  he  disclosed  the  invention  in 
issue  to  M.  *Martin  v.  Rowley,  C.  D.  1000, 
146  O.  G.  722. 

1640.  It  is  a  well-established  principle  of 
the  patent  law  that  where  an  inventor  em- 
ploys another  to  embody  his  conception  in 
practical  form  he  is  entitled  to  any  improve- 
ment therein  due  to  the  mechanical  skill  of 
the  employee;  but  if  the  latter  goes  farther 
than  mechanical  skill  enables  him  to  do  and 
makes  an  actual  invention  he  is  entitled  to  the 
benefit  thereof.  *McKeen,  Jr.  v.  Jerdone,  Jr., 
C.  D.  1910,  153  O.  G.  272. 

1641.  The  principle  is  well  settled  that  if 
one  employed  to  carry  out  an  invention  by 
another  of  a  machine,  manufacture,  or  com- 
position of  matter  makes  valuable  discover- 
ies ancillary  to  the  plan  and  preconceived  de- 
sign of  the  employer  such  discoveries  inure 
to  the  benefit  of  the  employer,  and  the  prin- 
ciple applies  to  the  case  of  principal  and  as- 
sistant engaged  in  the  work  of  a  common  em- 
ployer. *Ladoff  V.  Dempster,  Dempster  v. 
Ladnff,  C.  D.   1911,  166  O.  G.  .511. 

1642.  D.  was  employed  to  improve  upon  the 
magnetite  electrode  of  S.  He  made  several 
different  combinations  of  material,  one  of 
which  contained  three  to  twelve  per  cent,  of 
titanium  oxid.  L.  was  employed  to  assist  D. 
and  mixed,  fired,  and  tested  the  pencils  ac- 
cording to  his  directions,  but  was  not  called 
upon  to  advise  or  assist  him  in  any  other  way. 
While  doing  the  work  L.  conceived  the  idea 
of  an  entire  or  substantially  entire  reduction 
of  the  oxids  to  iron.  Held,  that  this  did  not 
inure  to  the  benefit  of  D.,  since  it  was  not  a 
mere  mechanical  improvement  of  the  thing 
L.  was  employed  to  perfect.    *Id. 

1643.  M.  organized  a  company  for  the  pur- 
pose of  manufacturing  a  gasolene-truck  in 
which  was  to  be  used  a  transmission  device 
designed  by  M.  B.  was  employed  by  M.  as 
a  draftsman  and  while  so  employed  improved 
the  transmission  device  used  by  M.  Held. 
that  the  relation  of  employer  and  employee 
in  the  sense  in  which  that  term  is  used  in  the 
patent  law  did  not  exist  between  M.  and  B., 
since   B.   was   not   employed   to   assist   M.   in 


any  capacity  except  that  of  draftsman  and 
since  the  transmission  device  designed  by  M. 
was  notoriously  old,  and  therefore  the  inven- 
tion of  B.  was  not  ancillary  to  an  invention 
made  by  M.  Miller  v.  Blackburn,  C.  D.  1911, 
172  O.  G.  549. 

XXXI.  Prkliminary  Statumknt. 
(a)   /;(  General. 

1644.  The  filing  of  a  preliminary  statement 
by  an  applicant  stating  that  he  made  the  in- 
vention of  the  issue  at  a  certain  date  does 
not  estop  that  party  from  afterwards  alleg- 
ing in  a  motion  for  dissolution  that  he  docs 
not  claim  that  invention.  Preliminary  state- 
ments are  necessarily  made  with  reference  to 
the  invention  disclosed  in  a  party's  own  case 
upon  the  presumption  that  the  issue  applies 
to  that  invention.  Sadtler  v.  Carmichael  v. 
Smith,  C.  D.  1899,  86  O.  G.  1498. 

1645.  The  requirement  of  specific  prelim- 
inary statements  by  the  contending  parties 
under  oath  is  a  reasonable  one,  and  experience 
has  demonstrated  its  special  adaptation  to  the 
conditions  that  ordinarily  exist  in  interference 
cases.  *Cross  v.  Phillips,  C.  D.  1899,  87  O. 
G.   i:!09. 

1646.  The  dates  of  conception  and  reduc- 
tion to  practice  are  peculiarly  within  the 
knowledge  of  the  inventor,  and  the  facts  by 
which  they  may  be  eslalilished  are  naturally  of 
difficult  contradiction  by  his  adversary.  Hence 
it  is  quite  important  to  the  administration  of 
justice  in  contests  between  them  that  he  be 
required  to  state  those  dates  with  reasonable 
certainty  before  notice  of  the  foundations 
of  his  adversary's  claim.  These  preliminary 
statements  constitute  what  may  be  called  the 
"pleadings'"  in  the  case,  and  to  their  allega- 
tions  the  evidence   must  respond.     *Id. 

1647.  Interferences  are  declared  for  the 
purpose  of  determining  the  question  of  pri- 
ority or  originality  of  invention  between  two 
or  more  parties.  Preliminary  statements  are 
the  pleadings  of  the  parties  and  set  forth  cer- 
tain facts  as  to  conception,  disclosure,  and 
reduction  to  practice,  and  to  the  allegations  set 
up  in  the  preliminary  statements  the  evidence 
must  respond.  Huber  v.  .\iken,  C.  D.  1899,  8S 
O.  G.  152.->. 

1648.  In  the  production  of  proof  in  matters 
of  interference  the  parties  must  be  held  strict- 
ly to  the  dates  set  forth  in  their  preliminary 
statements.  Funk  v.  Matteson  v.  Haines,  C. 
D.  1902,  100  O.  G.  17G4. 


303 


INTERFERENCE,  XXXI,  (a). 


1649.  Where  a  preliminary  statement  is 
held  by  the  office  to  be  informal  in  that  it  does 
not  sufficiently  state  the  facts  and  the  party 
is  called  upon  for  a  new  statement.  Held, 
that  the  new  statement  will  not  be  stricken 
out  on  motion  merely  because  it  states  addi- 
tional facts  besides  those  called  for  by  the 
office.  Shaw  v.  Gaily,  C.  D.  I'JOS,  100  O.  0. 
uOI4. 

1650.  Preliminary  statements  are  not  like 
the  pleadings  in  the  courts,  since  they  do  not 
make  the  issue.  They  consist  merely  of  a 
statement  by  a  party  of  his  case  made  in  ig- 
norance of  the  case  to  be  made  by  his  oppo- 
nent and  operate  merely  as  an  estoppel.  If 
not  made  in  ignorance,  they  serve  no  useful 
purpose.  Woodward  v.  Kennedy,  C.  D.  1903, 
104  O.  C.  IHO:!. 

1651.  The  purpose  of  preliminary  state- 
ments made  in  ignorance  of  the  dates  claimed 
by  the  opposing  party  is  to  avoid  the  tempta- 
tion to  fraud,  and  where  the  chances  of  fraud 
are  eliminated  the  reason  for  the  statement 
made  in  secrecy  has  less  force.  Davis  v. 
Ocumpaugh  v.  Garrett,  C.  D.  1903,  104  O.  G. 
2440. 

1652.  Where  A,  claims  that  he  knew  the 
exact  date  of  his  conception  (September  12) 
when  he  executed  his  preliminary  statement, 
yet  alleged  an  indefinite  date,  which  would 
permit  him  to  establish  September  1  if  neces- 
sary to  his  ends.  Held,  that  this  looseness  of 
assertion  in  the  statement  is  inexcusable  and 
tends  to  discredit  him  and  is  in  marked  con- 
trast with  B.'s  specific  statement  and  proofs. 
Blackman  v.  Alexander,  C.  D.  1904,  113  O. 
G.  1703. 

1653.  A  preliminary  statement  is  inconsist- 
ent and  misleading  which  alleges  that  draw- 
ings and  a  device  were  made  before  the  date 
assigned  for  actual  conception,  and  such  state- 
ment should  not  have  been  made  without 
some  explanation.  *Robinson  v.  Copeland, 
C.  D.  1904,  112  O.  G.  501. 

1654.  Where  it  is  alleged  in  a  preliminary 
statement  that  an  invention  is  conceived  "in 
the  early  spring  of  1900,"  Held,  that  such 
statement  necessarily  means  not  earlier  at  the 
utmost  than  March  1,  1900.  *Richards  v. 
Meissner,  C.  D.  1905,  114  O.  G.  1831. 

1655.  The  sworn  preliminary  statements  re- 
quired when  an  interference  has  been  declared 
constitute  the  pleadings  of  the  parties,  and 
we  have  had  occasion  several  times,  and  for 
reasons  satisfactory  now  as  then,  to  approve 


the  practice  of  holding  the  parties  strictly  to 
the  dates  given  herein.  (Bader  v.  Vajen,  C. 
D.  1899,  329,  87  O.  G.  1235,  14  App.  D.  C.  241, 
254;  Stevens  v.  Seher,  C.  D.  1897,  767,  81  O. 
G.  1932,  11  App.  D.  C.  245,  251.)  *Ilammond 
V.  Basch,  C.  D.  1905,  115  O.  G.  804. 

1656.  The  proHminary  statement  of  a  party 
alleging  invention  prior  to  the  date  of  a  pat- 
ent cited  will  be  accepted  as  a  substitute  for 
an  affidavit  under  Rule  75,  making  out  a 
friiita  facie  case  justifying  a  continuance  of 
the  interference  in  which  the  facts  will  be 
mure  completely  shown  by  the  proofs.  For- 
syth V.  Richards,  C.  D.  1905,  115  O.  G.  1327. 

1657.  Where  a  party's  preliminary  statement 
fails  to  overcome  his  opponent's  filing  dale, 
Held,  that  the  contention  that  he  should  on 
that  account  not  be  regarded  as  a  real  party 
to  the  interference  entitled  to  a  hearing  as 
to  the  rights  of  other  parties  is  not  sound. 
Taylor  v.  Kinsman  v.  Kinter  v.  Potter,  C.  D. 
1905,  118  O.  G.  838. 

1658.  Held,  that  a  preliminary  statement  is 
conflicting,  and  therefore  objectionable,  which 
contains  allegations  that  an  invention  was  re- 
duced to  practice  on  a  certain  date,  but  no  de- 
vices embodying  the  invention  were  ever  made. 
Guett  v.  Trcgoning,  C.  D.  1005,  114  O.  G.  544. 

1659.  Parties  are  required  to  prepare  their 
statements  before  having  an  opportunity  to 
see  the  applications  and  statements  of  the  op- 
posing parties,  and  the  filing  of  a  statement 
subsequently  will  not  be  permitted  except  upon 
a  clear  showing  that  justice  demands  it. 
Dutcher  v.  Matthew  v.  Dutcher  and  Peter  v. 
Jackson,  C.  D.  1905,  118  O.  G.  2538. 

1660.  Where  an  applicant  has  taken  no  ac- 
tion in  his  case  and  has  not  filed  a  preliminary 
statement  and  the  time  for  filing  statements 
has  expired,  a  statement  filed  within  the  time 
fixed  by  the  assignee  of  an  undivided  part 
interest  whose  assignment  is  of  record  in  this 
office  will  be  accepted.  Lottridge  v.  Eustice, 
C.  D.  1906,  121  O.  G.  689. 

1661.  An  order  permitting  an  alleged  equit- 
able assignee  to  file  a  preliminary  statement 
will  not  be  entered  where  the  assignment  is 
not  of  record  and  ample  opportunity  has  been 
given  to  file  a  statement  in  accordance  with 
Rule  131  and  the  failure  to  do  so  is  not  suffi- 
ciently excused.  Churchill  v.  Goodwin,  C.  D. 
1908,  132  O.  G.  1S38. 

1662.  In  cases  where  the  junior  party  to  an 
interference  alleges  in  his  preliminary  state- 
ment a  date  of  conception  prior  to  the  senior 


INTERFERENCE,  XXXI,  (b),  1. 


303 


party's  filing  date,  hut  the  other  dates  alleged 
are  subsequent  thereto,  the  examiner  of  in- 
terferences should  issue  an  order  to  show 
cause  why  judgment  on  the  record  should  not 
be  rendered  against  such  junior  party,  as  ex- 
perience shows  it  is  rarely,  if  ever,  that  con- 
ception is  proven  by  means  other  than  dis- 
closure. Hopkins  v.  Peters  v.  Dement,  C.  D. 
loos,  KM  O.  G.  lonn. 

1663.  If  in  response  to  the  order  to  show 
cause  such  junior  party  or  his  attorney  shall 
file  an  affidavit  stating  it  is  proposed  to  estab- 
lish conception  by  means  other  than  disclo- 
sure, the  examiner  of  interferences  should 
not  render  judgment,  but  should  set  times  for 
taking  testimony.     Id. 

1664.  Rule  110  requires  that  the  allegations 
of  the  preliminary  statements  should  set  forth 
iiiler  alia  the  "date  of  the  reduction  to  prac- 
tice of  the  invention."  This  allegation  of  the 
reduction  to  practice  should  be  alleged  posi- 
tively either  in  the  terms  of  the  rule  or  in  such 
other  language  as  will  leave  no  question  as 
to  the  actual  reduction  to  practice  of  the  in- 
vention. Williams  v.  Foyer  and  Kurz,  C.  D. 
I'JOO,  142  O.  G.  1114. 

1665.  Where  an  application  was  filed  by  the 
administrator  of  an  inventor  and  the  entire 
interest  therein  assigned,  it  is  not  necessary 
that  the  preliminary  statement  be  made  by 
the  "applicant,"  but  it  may  be  made  by  the 
assignee.  Lotterhand  v.  Cornwall,  C.  D.  1909, 
14S  O.  G.  1344. 

1666.  Rule  l.il  relates  only  to  the  assignee 
of  an  undivided  interest,  and  it  is  not  neces- 
sary that  the  assignee  of  the  entire  interest 
file  a  motion  such  as  provided  for  in  that  rule 
in  order  to  be  allowed  to  file  a  preliminary 
statement.     Id. 

(b)  Ameiidincut  of. 
1.  In  General. 

1667.  After  testimony  has  been  taken  the 
showing  which  would  warrant  an  amendment 
to  a  preliminary  statement  changing  the  date 
of  disclosure  must  be  of  the  same  kind  as  if 
the  moving  party  were  attempting  to  carry 
his  date  back  of  that  of  his  opponent.  Ber- 
nard v.  Huebel,  C.  D.  1898,  84  O.  G.  1729. 

1668.  While  motions  to  amend  preliminary 
statements  are  to  be  decided  in  view  of  the 
particular  facts  disclosed  in  each  case,  and 
therefore  no  cast-iron  rule  can  be  applied  to 
all  cases,  it  may  be  said  that  amendments  to 


preliminary  statements  should  be  permitted 
only  when  the  motion  has  been  made  promptly 
after  the  discovery  of  the  error,  and  then 
only  when  equity  and  justice  demand  it — as, 
for  example,  in  a  case  where  the  testimony 
of  neither  party  has  been  taken,  or,  if  it  has 
been  taken,  where  the  other  party  will  not 
be  injured,  save  as  the  true  state  of  facts 
may  be  injurious,  and  the  opponent  would  not 
be  misled  nor  the  expenses  of  the  proceeding 
increased.  Whitney  v.  Gibson,  C.  D.  1899,  86 
O.  G.  1083. 

1669.  After  testimony  has  been  taken  an 
amendment  to  set  back  the  dates  set  forth  in 
the  preliminary  statement  is  open  to  suspicion 
and  will  be  received  only  upon  a  clear  show- 
ing of  mistake,  and,  further  than  this,  the 
moving  party  must  be  free  from  negligence 
and  must  show  the  utmost  diligence  in  seek- 
ing to  correct  this  mistake.  (Citing  Hender- 
son v.  Noakes,  C.  D.  1892,  114,  .59  O.  G.  14:il.) 
McDermott  v.  Hildreth,  C.  D.  1902,  98  O.  G. 
1282. 

1670.  When  in  making  a  preliminary  state- 
ment a  party  was  aware  of  the  facts,  but  not 
of  the  force  and  effect  that  these  facts  might 
have,  a  failure  to  ascertain  the  true  character 
of  his  previous  acts  shows  negligence  from 
which  he  has  no  relief.  (Citing  Franklin  v. 
Morton  v.  Cooley,  C.  D.  1901,  49,  95  O.  G. 
2063;  Thomas  v.  Trissell,  C.  D.  1901,  200,  97 
O.  G.  1598.)     Id. 

1671.  Amendments  to  preliminary  state- 
ments should  be  permitted  only  where  it  is 
made  clearly  to  appear  that  the  party  used  all 
reasonable  care  and  diligence  in  preparing  his 
original  statement  and  in  discovering  the  facts 
to  be  alleged  therein.    Woodward  v.  Kennedy, 

C.  D.  1903,  104  O.  G.  1393. 

1672.  Whether  an  amendment  to  preliminary 
statement  shall  be  allowed  in  an  interference 
proceeding  under  the  rules  of  practice  of  the 
patent  office  calls  for  the  exercise  of  a  wide 
latitude  of  discretion  by  the  commissioner, 
and  certainly  nothing  less  than  an  abuse  of 
that  discretion,  causing  a  palpable  miscarriage 
of  justice,  would  warrant  the  review  and  re- 
versal  of   his   action.      (Cross   v.    Phillips,   C. 

D.  1899,  342,  87  O.  G.  1399,  14  App.  D.  C.  228, 
237,  238.)  *Hammond  v.  Basch,  C.  D.  1905, 
115  O.  G.  804. 

1673.  Where  a  motion  to  amend  a  prelim- 
inary statement  is  based  upon  a  publication 
or  official  record  and  not  upon  the  memory 
of    witnesses.   Held,    that    the    rule    requiring 


304 


INTERFERENCE,  XXXI,   (b),  2. 


that  the  utmost  diligence  be  shown  to  have 
been  exercised  in  preparing  the  original  state- 
ment may  be  applied  with  less  strictness. 
Fullagar  v.  Junggreu,  C.  D.  1905,  114  O.  G. 
l.-).50. 

1674.  Whether  leave  shall  be  given  to  amend 
a  preliminary  statement  is  a  matter  within  the 
discretion  of  the  commissioner  and  is  not  re- 
viewable, save  possibly  in  a  case  of  palpable 
abuse  of  that  discretion.  *Neth  and  Tamplin 
V.  Ohmcr,  C.  D.  1906,  123  O.  G.  998. 

1675.  A  motion  to  amend  a  preliminary 
statement  should  be  brought  promptly  after 
the  discovery  of  the  facts  on  which  the  mo- 
tion is  based,  and  delay  in  bringing  the  mo- 
tion is  a  sufficient  ground  for  denying  it. 
Floyd  V.  Rohlhng,  C.   D.  1908,  13:j  O.  G.  1992. 

1676.  Where  a  motion  to  amend  a  prelim- 
inary statement  is  based  upon  testimony  taken 
in  the  case,  it  is  indefinite  if  it  fails  to  point 
out  particular  parts  of  the  testimony  upon 
which  reliance  is  placed.     Id. 

1677.  Since  the  granting  of  a  motion  to 
amend  a  preliminary  statement  will  injure  the 
opposing  party  only  so  far  as  his  case  will 
be  prejudiced  by  evidence  showing  the  true 
state  of  facts,  a  limit  of  appeal  should  be  set 
by  the  examiner  of  interferences  in  his  deci- 
sion on  such  motions  only  when  he  denies  the 
motion.  Smith  and  Wickes  v.  Emerson  v. 
Sanders,  C.  D.  1908,  133  O.  G.  1433. 

1678.  Where  the  examiner  of  interferences 
required  one  of  the  parties  to  an  interference 
to  amend  his  preliminary  statement  in  cer- 
tain particulars  or  be  penalized  by  being  re- 
stricted to  his  record  date.  Held,  that  no  ap- 
peal lay  from  the  decision  and  that  the  ac- 
tion of  the  examiner  of  interferences  would 
not  be  reviewed  in  the  absence  of  a  showing 
of  a  clear  abuse  of  discretion.  Opalla  v. 
Hughes,  C.  D.  1910,  158  O.  G.  481. 

2.  Permitted. 

1679.  Where  it  appears  that  a  mistake  was 
made  in  a  preliminary  statement  through  a 
misunderstanding  by  the  applicant  as  to  what 
constituted  a  reduction  to  practice.  Held,  that 
amendment  should  be  permitted  if  no  change 
is  made  in  the  date  of  conception  and  dis- 
closure alleged  in  the  original  statement.  Mc- 
Connell  v.  Lindsay  and  Tonner,  C.  D.  1898, 
82  O.  G.  337. 

1680.  A  motion  for  leave  to  amend  a  pre- 
liminary statement  brought  by  the  eenior 
party  after  testimony-in-chief  has  been  taken 


may  be  granted  when  notice  of  such  intended 
motion  has  been  given  and  when  any  state- 
ments in  the  testimony  may  be  met  by  re- 
buttal testimony.  Webb  v.  Lcvedahl,  C.  D. 
isns.  84  O.  G.  810. 

1681.  Notice  of  intention  to  move  for 
amended  statement  given  at  the  beginning  of 
lestiraony-in-chief  is  sufficient  notice.     Id. 

1682.  Where  a  motion  was  made  to  fde  an 
amended  preliminary  statement  within  fifteen 
days  after  the  original  preliminary  statements 
had  been  approved  and  the  time  set  for  taking 
testimony  and  also  before  any  testimony  had 
been  taken.  Held,  that  there  was  no  lack  of 
diligence  in  bringing  the  motion.  May  v. 
Mcrker,  C.  D.  1898,  85  O.  G.  150. 

1683.  It  is  the  duty  of  the  office  to  issue  a 
jiatcnt  to  the  one  entitled  thereto,  and  to 
that  end  it  is  desirable  to  have  before  it  for 
consideration  all  the  facts  essential  to  a  cor- 
rect determination  of  the  question  of  prioritj'. 
Where,  therefore,  an  adversary  will  not  be 
injured  by  the  grant  of  a  motion  to  amend  a 
statement,  and  to  deny  the  motion  would  be 
unjust  to  the  moving  party  and  might  lead  to 
the  grant  of  a  patent  to  one  who  was  not  en- 
titled to  it.  Held,  that  the  motion  to  amend 
should  be  granted.     Id. 

1684.  A  motion  for  leave  to  amend  a  pre- 
liminary statement  brought  after  the  taking  of 
testimony  may  be  granted  when  at  the  begin- 
ning of  the  taking  of  testimony  it  was  stip- 
ulated that  any  testimony  taken  might  be  used 
in  or  in  support  of  any  statement  which  might 
thereafter  be  made  and  when  testimony  was 
thereafter  taken  in  accordance  with  such  stip- 
ulation. (Webb  V.  Levedahl,  ante.  126,  84  O. 
G.  810,  and  Kasson  v.  Hetherington,  63  MS. 
Dec,  403,  cited.)  Shantz  v.  Osborn,  C.  D. 
1S98,  85  O.  G.  1224. 

1685.  The  rule  of  the  patent  office  which 
permits  the  statement  of  either  party  to  an 
interference  to  be  amended  where  material 
error  has  been  committed  through  inadvert- 
ence or  mistake  and  its  correction  is  essen- 
tial to  the  ends  of  justice  is  reasonable  and 
just  and  seems  to  conform  as  near  as  may  be, 
considering  the  peculiar  character  of  inter- 
ference cases,  to  the  general  rule  prevailing 
in  the  courts  of  equity.  *Cross  v.  Phillips, 
C.  D.  1899,  342,  87  O.  G.  1399. 

1686.  In  courts  both  of  law  and  equity  the 
right  to  amend  is  not  an  absolute  one,  but 
rests  in  the  discretion  of  the  court,  and  the 
e.xercise  of  this  discretion   is  not  reviewable 


INTERFERENCE,  XXXI,  (b),  2. 


305 


unless  it  may  be  in  case  of  its  palpable  abuse. 
Necessarily  the  allowance  or  refusal  of  leave 
to  amend  a  preliminary  statement  in  an  inter- 
ference case  rests  in  like  manner  in  the  dis- 
cretion of  the  commissioner  of  patents,  and 
it  might  be  said  for  even  a  stronger  reason, 
because  he  is  vested  with  the  authority  to 
make  the  needful  rules  for  the  regulation  of 
the  practice  of  his  office  without  the  supervi- 
sing power  of  any  appellate  tribunal.     *Id. 

1687.  If  the  exercise  of  the  discretion  of 
the  commissioner  in  the  matter  of  allowing 
and  refusing  leave  to  amend  preliminary  state- 
ments be  subject  to  review  by  the  court  of 
appeals  of  the  District  of  Columbia  at  all,  it 
must  be  confined  to  those  cases  where  the 
question  comes  up  properly  with  the  appeal 
from  the  decision  on  the  merits  and  where  it 
can  be  made  clearly  to  appear  that  this  dis- 
cretion has  been  abused  to  the  extent  of  caus- 
ing a  palpable  miscarriage  of  justice.     *Id. 

1688.  After  a  decision  on  priority  an  amend- 
ment to  the  preliminary  statement  may  be 
permitted  where  a  material  error  has  occurred 
through  inadvertence  or  mistake  and  it  clearly 
appears  that  there  was  no  negligence  in  dis- 
covering the  error  or  in  bringing  the  motion 
to  amend  and  that  the  correction  is  essential 
to  the  ends  of  justice.  Richardson  v.  Humph- 
rey, C.  D.  1899,  88  O.  G.  2241. 

1689.  When  a  preliminary  statement  is 
amended  to  conform  to  the  evidence  after  de- 
cision on  priority.  Held,  that  new-  times  for 
taking  testimony  should  be  set,  so  as  to  give 
the  opposing  party  an  opportunity  to  cross- 
examine  the  witnesses  in  regard  to  the  matter. 
Id. 

1690.  An  amendment  to  a  preliminary  state- 
ment was  admitted  where  a  mistake  therein 
was  not  discovered  until  the  beginning  of  the 
taking  of  testimony  and  notice  of  an  inten- 
tion to  amend  was  given  at  that  time.  (Webb 
V.  Levedahl,  C.  D.  1898,  126,  84  O.  G.  810.) 
Ancora  v.  Keiper,  C.  D.  1899,  86  O.  G.  2171. 

1691.  An  amendment  made  to  correct  a  mis- 
take in  a  preliminary  statement  may  be  ad- 
mitted where  it  does  not  change  the  date  of 
conception,  disclosure,  or  reduction  to  practice. 
(Maltby  v.  Miehle,  C.  D.  1898,  11,  82  O.  G. 
749.)     Id. 

1692.  Where  a  motion  was  made  by  a  party 
to  an  interference  that  his  opponent  be  re- 
quired to  amend  his  preliminary  statement 
by  adding  thereto  a  statement  showing  the  ex- 
tent of  use  of  the  invention,  or  if  it  has  not 

20 


been  used  to  any  extent,  specifically  disclosing 
that  fact,  Held,  that  under  Rule  110  the  mo- 
tion should  be  granted.  Loeben  v.  Hamrick, 
C.  D.  1899,  89  O.  G.  1672. 

1693.  It  is  important  that  the  extent  of  use 
of  a  completed  invention  be  disclosed  in  the 
preliminary  statement ;  but  it  is  not  necessary 
that  such  disclosure  should  be  prolix  and  give 
unnecessary  details ;  but  it  should  set  forth  in 
concise  and  explicit  terms  the  extent  of  use 
of  the  completed  invention.    Id. 

1694.  After  decision  on  priority  had  been 
rendered  by  the  examiner  of  interferences 
and  an  appeal  from  his  decision  had  been 
taken  a  petition  asking  that  the  jurisdiction 
of  the  examiner  of  interferences  be  restored 
for  the  consideration  of  a  motion  to  amend  a 
preliminary  statement  was  granted  under  the 
circumstances  of  this  case.  Richardson  v. 
Humphrey,  C.  D.  1899,  86  O.  G.  1804. 

1695.  When  it  is  contended  that  the  mis- 
take in  the  preliminary  statement  was  not 
discovered  until  it  was  made  apparent  by  the 
decision  of  the  examiner  of  interferences  on 
priority  and  the  moving  party  uses  reasonable 
diligence  thereafter  in  presenting  his  motion 
to  amend.  Held,  that  the  jurisdiction  of  the 
examiner  of  interferences  will  be  restored  to 
consider  the  motion.    Id. 

1696.  On  a  petition  that  the  jurisdiction  of 
the  examiner  of  interferences  be  restored  for 
the  purpose  of  considering  an  amendment  to 
a  preliminary  statement  the  question  as  to 
whether  or  not  that  amendment  shall  be  ad- 
mitted is  not  up  for  consideration,  but  mere- 
ly the  question  whether  proper  diligence  has 
been  exercised  in  presenting  that  motion.     Id. 

1697.  Where  one  of  the  parties  to  an  inter- 
ference who  has  made  a  bona  fide  mistake  in 
the  preparation  of  his  preliminary  statement 
not  due  to  his  own  negligence  moves  promptly 
to  amend  before  testimony  has  been  taken,  if 
no  additional  burden  or  expense  will  be 
thrown  upon  the  opposing  party  the  amend- 
ment upon  a  proper  showing  of  the  facts  may 
he  admitted.  McDermott  v.  Hildreth.  C.  D. 
1902.  98  O.  G.  1282. 

1698.  An  amendment  to  a  preliminary  state- 
ment to  set  back  the  date  of  conception  and 
reduction  to  practice  of  the  invention  should 
be  permitted  when  a  refusal  to  do  so  might 
result  in  the  allowance  of  a  patent  to  one 
who  is  not  the  inventor  and  where  it  appears, 
further,  that  the  opposing  party  will  not  be 
injured  except  as  the  true  state  of  facts  may 


306 


INTERFERENCE,  XXXI,   (b),  2. 


injure  him  and  that  he  will  not  be  misled  nor 
the  expenses  of  the  proceeding  increased. 
Silver  V.  Eustis,  C.  D.  1902,  98  O.  G.  2361. 

.1699.  Where  it  appears  that  an  amendment 
to  a  preliminary  statement  will  not  carry  the 
date  of  reduction  to  practice  back  of  that 
of  the  opposing  party  and  a  reasonable  excuse 
is .  offered  for  the  delay  in  presenting  the 
amendment  and,  further,  that  no  testimony 
has  been  taken.  Held,  that  the  amendment 
should  be  permitted.  Gales  v.  Berrigan,  C.  D. 
1902,  100  O.  G.  231. 

1700.  Where  there  is  no  attempt  to  change 
the  date  of  conception,  disclosure,  or  reduc- 
tion to  practice,  the  reason  for  the  strict  rule 
against  amendment  does  not  apply.  Williams 
V.  Liberman,  C.  D.  1902,  100  O.  G.  1331. 

1701.  Where  it  appears  from  the  testimony 
that  a  model  was  in  fact  made  which  had 
been  forgotten  and  motion  to  amend  the  pre- 
liminary statement  to  allege  that  fact  is  made 
before  the  opposing  party's  time  for  taking 
testimony  is  closed,  Held,  that  the  amendment 
will  be  permitted.    Id. 

1702.  Where  a  party  in  a  preliminary  state- 
ment makes  a  bona  fide  mistake  in  the  use 
of  the  word  "model,"  he  should  be  allowed 
to  correct  the  mistake  if  he  acts  diligently; 
but  he  should  not  be  allowed  to  carry  back 
the  date  alleged  of  a  particular  act  without 
a  proper  showing.  Fordyce  v.  Taisey,  C.  D. 
1903,   102  O.  G.  829. 

1703.  Amendments  to  preliminary  state- 
ments based  on  newly-discovered  evidence 
should  not  be  allowed,  especially  after  the 
testimony  of  an  opponent  has  been  taken,  un- 
less it  clearly  appears  that  the  evidence  could 
not  have  been  discovered  at  the  time  the  orig- 
inal statement  was  made  by  the  exercise  of 
reasonable  care  and  diligence.     Id. 

1704.  Where  a  motion  to  amend  a  pre- 
liminary statement  was  based  upon  the  acci- 
dental discovery  of  a  publication  referring 
to  the  invention  and  it  appears  that  this  publi- 
cation was  not  discovered  when  the  original 
statement  was  prepared,  although  a  careful 
search  was  made,  Held,  that  the  amendment 
should  be  permitted.  Davis  v.  Ocumpaugh  v. 
Garrett,  C.  D.  1903,  104  O.  G.  2440. 

1705.  The  rule  against  the  amendment  of 
preliminary  statements  except  where  the  ut- 
most care  and  diligence  was  exercised  in  pre- 
paring the  original  statement  may  be  ap- 
plied with  less  strictness  where  the  amendment 


is  based  upon  record  evidence  and   not  upon 
the  memory  of  fallible  witnesses.    Id. 

1706.  Where  it  clearly  appears  that  a  party 
has  made  a  clerical  error  in  writing  a  date  in 
his  preliminary  statement  and  he  promptly 
moves  to  correct  it,  Held,  that  the  amendment 
will  be  permitted.  Osborne  v.  Mitchell,  S.  D. 
1904,  111  O.  G.  301. 

1707.  Where  the  invention  is  a  highly-com- 
plicated mechanism,  one  of  the  elements  of 
which  is  "item-wheels,"  and  from  the  show- 
ing it  appears  that  the  preliminary  statement 
w^as  carefully  drawn  to  include  a  machine 
made  by  C.  having  item-wheels  of  a  peculiar 
construction,  but  later  it  is  found  that  the 
term  "item-wheels"  is  not  limited  to  the  sec- 
ond structure  made  by  C,  but  apparently  cov- 
ers an  earlier  machine  made  by  him.  Held, 
that  as  no  testimony  has  been  taken  C.  should 
be  permitted  to  amend  his  preliminary  state- 
ment to  include  his  earlier  machine.  Car- 
roll v.  Stahlberg,  C.  U.  1904,  111  O.  G.  1937. 

1708.  Held,  that  a  preliminary  statement 
which  contains  no  allegations  regarding  mod- 
els, reduction  to  practice,  or  extent  of  use 
should  not  be  accepted,  but  an  amended  state- 
ment containing  the  allegations  specified  in 
Rule  110  should  be  required.  Schoonmaker 
v.  Sintz,  C.  D.  1906.  123  O.  G.  2974. 

1709.  Held,  that  the  requirement  for  an 
amended  preliminary  statement  containing  al- 
legations regarding  the  making  of  models,  re- 
duction to  practice,  and  extent  of  use,  which 
allegations  had  been  omitted  from  the  orig- 
inal preliminary  statement,  will  not  necessarily 
result  merely  in  the  filing  of  an  amended  state- 
ment containing  an  allegation  that  no  model 
or  machine  had  been  made,  and  furthermore, 
such  an  allegation  would  be  useful  as  notice 
to  the  opposing  party  and  the  office.     Id. 

1710.  Where  a  party  used  the  word  "model" 
in  his  preliminary  statement,  as  commonly 
used  in  the  factory,  to  indicate  experimental 
full-sized  devices  made  by  hand,  which,  if 
found  satisfactory,  are  copied  in  subsequently 
making  the  commercial  device  in  large  quan- 
tities by  machinery,  and  it  appears  that  his 
attorney  prepared  the  preliminary  statement 
from  written  memoranda  mailed  to  him  and 
did  not  discover  that  the  party  had  not  used 
the  word  "model"  in  the  legal  sense  until 
preparing  to  take  testimony,  and  where  the 
motion  was  brought  before  any  testimony  was 
taken  and  it  does  not  appear  that  the  delay 
in  bringing  the  motion  will  work  any  injury 


INTERFERENCE,  XXXI,  (b),  3. 


307 


to  the  opponent,  Held,  that  the  party  should 
be  permitted  to  correct  his  mistake.  Day  v. 
Adt  V.  Hardy,  C.  D.  1906,  12j  O.  G.  2765. 

1711.  The  junior  party  to  an  interference 
permitted  to  amend  his  preliminary  statement 
by  carrying  the  date  of  the  production  of  two 
full-sized  devices  from  a  date  subsequent  to 
the  opponent's  filing  date,  on  which  the  oppo- 
nent alone  relies  for  reduction  to  practice,  to 
a  date  prior  thereto,  where  the  motion  to 
amend  was  brought  only  thirteen  days  after 
the  filing  of  the  original  statement  and  be- 
fore any  testimony  was  taken  and  where  it 
appears  from  affidavits  filed  that  prior  to  the 
execution  of  his  first  preliminary  statement 
he  examined  such  records  and  consulted  with 
such  persons  as  would  in  his  opinion  enable 
him  to  secure  all  the  necessary  facts.  Davis 
V.  Kennard,  C.  D.  1907,  131  O.  G.  695. 

3.  Not  Permitted. 

1712.  Where  an  amendment  to  a  prelim- 
inary statement  is  presented  after  testimony 
has  been  taken,  the  office  will  not  consider 
such  testimony  to  determine  what  dates  have 
been  proved,  but  the  possibility  must  be  con- 
templated that  the  moving  party  may  be  at- 
tempting to  carry  his  dates  back  of  those 
which  in  his  opinion  have  been  established  by 
his  opponent.  Bernard  v.  Huebel,  C.  D.  1898, 
84  O.  G.  1729. 

1713.  Where  an  applicant  prepares  his  pre- 
liminary statement  under  the  counsel  and  di- 
rection of  an  attorney,  but  through  ignorance 
of  the  law  fails  to  inform  him  of  all  of  the 
material  facts  within  his  knowledge  as  to  the 
disclosure  of  the  invention.  Held,  that  it  shows 
negligence  on  his  part  and  furnishes  no  good 
ground  for  permitting  an  amendment  to  the 
statement. 

1714.  After  testimony  has  been  taken  an 
amendment  to  a  preliminary  statement  will 
not  be  permitted  where  no  excuse  whatever  is 
given  for  not  making  the  motion  to  amend 
earlier  or  for  not  sooner  discovering  the  al- 
leged error  in  the  original  statement.  Miehlc 
V.  Read,  C.  D.  1899,  89  O.  G.  354. 

1715.  When  a  party  after  discovering  that 
there  is  an  error  in  his  preliminary  statement 
makes  no  effort  whatever  for  a  long  time  to 
discover  the  true  state  of  facts  and  after  dis- 
covering the  facts  does  not  use  diligence  in 
presenting  a  motion  to  amend,  Held,  that  the 
amendment  will  not  be  permitted.  Atkins  v. 
Paul  V.  Johnson,  C.  D.  1901,  94  O.  G.  1785. 


1716.  Where  a  party  with  a  full  knowledge 
of  all  the  facts  in  regard  to  the  making  of  his 
invention  prepares  and  files  his  preliminary 
statement  and  testimony  is  taken  by  his  oppo- 
nent and  he  afterwards  desires  to  amend  his 
statement  because  of  an  alleged  mistake  as 
to  his  right  to  allege  experiments  as  a  con- 
ception and  reduction  to  practice  of  the  in- 
vention, Held,  that  the  amendment  should  not 
be  permitted.  Franklin  v.  Morton  v.  Cooley, 
C.   D.  1901,  95  O.  G.  2063. 

1717.  Where  the  facts  were  within  a  party's 
knowledge  since  their  respective  dates,  but 
new  light  has  reached  him  as  to  the  law  of 
his  case,  Held,  that  his  mistake  was  not  of 
fact,  but  of  law,  from  which  courts  do  not  re- 
lieve.    Id. 

1718.  After  a  party  to  an  interference,  rely- 
ing upon  his  opponent's  statement,  has  taken 
his  proofs  the  inability  of  the  commissioner 
to  impose  terms  upon  the  other  party  for  the 
expense  of  taking  supplementary  proofs 
should  operate  agaijist  permitting  an  amend- 
ment which  might  render  such  supplementary 
proofs  necessary.    Id. 

1719.  The  rule  that  preliminary  statements 
are  conclusive  upon  the  parties  in  whose  be- 
half they  are  made  operates  powerfully  against 
manufactured  evidence  and  will  only  be  re- 
la.xed  upon  great  consideration  in  view  of 
the  special  circumstances  of  the  case.     Id. 

1720.  After  the  junior  party  to  an  interfer- 
ence has  taken  his  testimony  and  has  disclosed 
his  date  of  invention  the  senior  party  should 
not  me  permitted  to  amend  his  preliminary 
statement  to  carry  back  his  date  of  reduction 
to  practice  when  it  appears  that  the  facts  were 
within  his  knowledge  when  he  made  his  pre- 
liminary statement,  but  that  he  was  not  aware 
of  the  full  weight  which  they  might  have. 
Thomas  v.  Trissel,  C.  D.  1901,  97  O.  G.  1598. 

1721.  Where  a  preliminary  statement  con- 
tains the  allegation  that  no  model  was  made 
and  it  is  desired  to  amend  it  by  adding  the 
allegation  that  an  experimental  device  was 
made  and  it  appears  that  said  device  was  in 
fact  a  model,  field,  that  the  amendment 
should  not  be  permitted,  since  it  would  make 
the  statement  contradictory.  Williams  v. 
Liberman,  C.  D.  1902,  100  O.  G.  1331. 

1722.  Where  a  party  discovers  an  alleged 
mistake  in  his  preliminary  statement  and  there- 
after permits  his  opponent  to  take  and  file  his 
testimony  without  any  notice  of  an  intention 
to  amend.  Held,  that  he  will  not  thereafter  be 
permitted    to    amend    by    carrying    his    dates 


308 


INTERFERENCE,  XXXI,  (b),  3. 


back    of    those    originally    alleged.      Mills    v. 
Torrance,  C.  D.   1002,  98  O.  G.  416. 

1723.  The  question  as  to  the  truth  or  falsity 
of  the  allegations  in  a  proposed  amendment 
to  a  preliminary  statement  is  not  controlling 
upon  the  question  whether  the  amendment 
shall  be  permitted.  The  rights  of  the  oppos- 
ing party  to  the  interference  must  be  consid- 
ered.    Id. 

1724.  Where  two  months  after  a  decision 
on  priority  against  him  a  party  makes  a  mo- 
tion to  amend  his  preliminary  statement  to 
strengthen  his  case  where  it  was  weak  and  it 
appears  from  his  statement  that  he  knew  of 
the  facts  desired  to  be  alleged  all  of  the  time 
and  did  not  use  diligence  in  presenting  his 
motion.  Held,  that  a  case  is  not  made  out 
which  would  warrant  restoring  the  jurisdic- 
tion of  the  examiner  of  interferences  to  con- 
sider the  motion.  Dahlgren  v.  Crocker,  C.  D. 
1902,   9S  O.  G.  2.-.S6. 

1725.  Where  in  preparing  his  original  state- 
ment a  party  knew  all  of  the  facts  which  he 
desires  to  set  forth  by  amendment,  but  did 
not  state  them  or  disclose  them  to  his  attor- 
ney because  he  did  not  consider  them  material 
to  his  case.  Held,  that  his  error  was  one  of 
law  and  not  of  fact  and  that  therefore  the 
amendment  should  not  be  permitted.     Id. 

1726.  Where  the  examiner  of  interfer- 
ences decided  priority  against  a  party  for  the 
reason  that  he  was  not  exercising  diligence 
in  regard  to  the  invention  during  a  certain 
period  of  time  and  the  party  thereafter  wishes 
to  amend  his  statement  to  set  up  certain  work 
done  at  that  time  which  he  did  not  include  in 
his  original  statement  because  he  did  not  re- 
gard it  as  material,  Held,  that  the  amendment 
should  not  be  permitted.     Id. 

1727.  Where  testimony  has  been  taken  by 
both  parties,  a  motion  for  leave  to  amend  a 
preliminary  statement  by  changmg  the  date 
of  reduction  to  practice  will  not  be  granted 
where  there  is  no  showing  that  the  utmost  dil- 
igence in  preparing  the  original  statement  had 
been  used  and  when  it  does  not  appear  that  a 
mistake  had  been  made  in  alleging  the  date 
of  reduction  to  practice.  (McDermott  v.  Hil- 
dreth,  ante,  43,  98  O.  G.  1282.)  Lockwood  v. 
Schmidt,  C.  D.  1902,  100  O.  G.  4.53. 

1728.  Where  preliminary  statements  have 
been  filed  in  an  interference  proceeding  and 
on  motion  the  interference  is  subsecjuently 
dissolved  as  to  one  of  the  counts  and  con- 
tinued as  to  others,  this  fact  of  itself  does 
not  warrant  new  times  for  filing  preliminary 


statements  being  set,  as  such  a  proceeding 
would  have  the  eflfect  of  permitting  the 
amendment  of  the  original  statement.  Sea- 
man V.  Brooks,  C.  D.  1902,  100  O.  G.  683. 

1729.  Where  the  showing  which  accom- 
panies a  motion  to  file  a  new  preliminary  state- 
ment, which  is  in  eflfect  a  motion  to  amend 
the  original  statement,  merely  states  that  ad- 
ditional facts  have  been  discovered,  without 
specifying  said  facts,  and  that  the  utmost  dil- 
igence was  exercised  in  making  the  discovery 
of  the  new  facts,  without  stating  what  means 
were  employed  and  the  reasons  why  the  same 
means  could  not  have  been  earlier  employed. 
Held,  not  sufficient  to  warrant  the  grant  of 
the  motion.  (McDermott  v.  Hildreth,  ante, 
43,  98   O.  G.   1282.)      Id. 

1730.  Where  K.  prepared  his  preliminary 
statement  from  memory  without  attempting 
to  look  up  records  relating  to  his  invention 
and  six  months  later  when  preparing  to  tes- 
tify he  found  records  tending  to  show  that 
he  had  made  a  mistake.  Held,  that  his  mistake 
was  due  to  negligence  and  he  is  not  entitled 
to  amend  his  statement.  King  v.  Hansen,  C. 
D.  1002,  101  O.  G.  1129. 

1731.  The  desire  of  the  office  to  discover 
all  facts  and  to  issue  the  patent  to  the  one 
who  is  in  fact  the  first  inventor  does  not 
justify  it  in  relieving  a  party  from  the  effects 
of  his  own  negligence.    Id. 

1732.  The  question  whether  the  expense  of 
the  proceedings  is  increased  and  whether  the 
opposing  party  will  be  injured  except  as  the 
true  state  of  facts  is  injurious  cannot  be  ac- 
cepted as  the  sole  test  of  the  right  to  amend 
a  preliminary  statement.     Id. 

1733.  The  rule  that  the  preliminary  state- 
ment upon  which  the  party  will  rely  must  be 
Idcd  at  a  time  fixed  and  must  be  carefully 
prepared  is  a  good  one  and  will  be  enforced, 
since  it  is  regarded  as  the  best  means  of 
doing  justice  between  all  parties.     Id. 

1734.  Where  a  party  makes  a  motion  to 
amend  his  preliminary  statement,  carrying 
his  date  of  conception  back  ten  years,  basing 
it  upon  the  testimony  taken  on  his  behalf, 
Held,  that  the  motion  will  be  denied  in  the 
absence  of  good  and  sufficient  reasons  why 
the  facts  were  not  discovered  when  the  orig- 
inal statement  was  prepared.  Woodward  v. 
Kennedy,  C.  D.  1903,  104  O.  G.  1393. 

1735.  Where  a  party  moves  to  amend  his 
preliminary  statement,  alleging  that  he  has 
discovered  the  facts  upon  which  it  is  based 
from  certain  witnesses  who  were  hard  to  lo- 


INTERFERENCE,  XXXI,  (b),  3. 


309 


cate,  but  it  does  not  appear  that  he  was  un- 
able to  find  them  or  that  he  made  proper  ef- 
forts to  do  so  when  preparing  his  statement, 
Held,  that  he  did  not  exercise  proper  care, 
and  the  motion  must  be  denied.     Id. 

1736.  Where  in  support  of  a  motion  to 
amend  a  preliminary  statement  it  is  alleged 
that  the  testimony  shows  clearly  that  the  facts 
are  as  alleged  in  the  amended  statement  and 
that  unless  it  is  admitted  the  decision  must 
be  in  favor  of  one  who  is  not  the  first  in- 
ventor, Held,  without  considering  the  truth 
of  the  allegation  that  the  amendment  will  not 
be  permitted  in  the  absence  of  a  showing  of 
care  in  preparing  the  original  statement.    Id. 

1737.  In  considering  the  propriety  of  per- 
mitting an  amendment  to  a  preliminary  state- 
ment the  question  is  not  whether  the  party 
can  prove  the  allegations  therein,  but  the 
matter  turns  upon  the  reasons  why  the  alle- 
gations were  not  made  in  the  original  state- 
ment.   Id. 

1738.  Where  B.  in  support  of  his  motion  to 
amend  his  preliminary  statement  filed  an  affi- 
davit that  a  mistake  was  made  in  his  original 
statement  "due  to  inadvertence  and  mistake," 
but  made  no  showing  of  fact  as  to  how  the 
inadvertence  or  mistake  arose,  Held,  that  the 
motion  should  be  denied.  Brown  v.  Cutler  v. 
Keeney,  C.  D.  1903,  104  O.  G.  1896. 

1739.  Where  a  certain  machine  is  set  up  by 
the  inventor  as  a  reduction  to  practice  and  it 
is  alleged  that  the  attorneys  did  not  inform 
him  that  the  machine  did  not  embody  the  in- 
vention of  the  issue  until  just  prior  to  the 
filing  of  the  motion  to  amend,  Held,  not  to 
constitute  a  bona  fide  mistake,  such  as  to  war- 
rant the  grant  of  a  motion  to  amend,  as  it 
constitutes  nothing  less  than  gross  negli- 
gence, as  all  the  steps  could  have  been  taken 
at  first  to  ascertain  the  facts  which  were  sub- 
sequently taken  after  the  applicant's  testimony- 
in-chief  has  been  closed.     Id. 

1740.  To  warrant  an  amendment  to  a  pre- 
liminary statement  it  is  not  sufficient  to  show 
merely  that  the  original  statement  is  incor- 
rect. It  must  be  shown  that  the  error  did  not 
arise  from  a  lack  of  proper  care  and  dili- 
gence in  preparing  the  statement.  Beckert  v. 
Currier,  C.  D.  1903,  104  O.  G.  2439. 

1741.  An  amendment  to  a  preliminary  state- 
ment will  not  be  permitted  upon  the  mere  al- 
legation that  the  error  was  due  to  inadvertence 
or  mistake,  but  only  upon  a  showing  of  facts 
which  will  enable  the  office  to  judge  that  there 
was  inadvertence  or  mistake  and  that  amend- 


ment is  essential  to  the  ends  of  justice.  Brown 
v.  Keeney,  C.  D.  lyo.i,  105  O.  G.  200. 

1742.  Where  on  a  moticjn  to  amend  a  pre- 
liminary statement  it  is  alleged  that  new  facts 
were  discovered  from  a  proposed  witness  and 
it  does  not  appear  why  they  were  not  dis- 
covered before.  Held,  that  the  motion  will  be 
denied.  McHarg  v.  Schmidt  and  Mayland, 
C.   D.   1903,   103  O.  G.  263. 

1743.  Where  a  certain  machine  was  con- 
sidered in  preparing  the  original  preliminary 
statement  and  it  was  concluded  that  it  did 
not  embody  the  invention  in  controversy  and 
after  the  testimony  of  the  opposing  party  is 
taken  it  is  concluded  upon  further  considera- 
tion that  the  machine  does  embody  the  in- 
vention, Held,  that  the  party  is  not  entitled 
to  amend  his  statement  so  as  to  include  the 
making  of  that  machine.  Soley  v.  Peck  v. 
Clement  v.  Richards  v.  Meissner,  C.  D.  1903, 
105  O.  G.  1262. 

1744.  Where  the  facts  which  it  is  desired  to 
allege  in  an  amended  preliminary  statement 
were  known  when  the  original  statement  was 
prepared  and  were  not  set  forth  through  an 
alleged  error  in  judgment.  Held,  that  the 
amendment  will  not  be  permitted,  since  the 
error  was  due  to  carelessness.     Id. 

1745.  Where  a  motion  to  amend  a  prelim- 
inary statement  is  made  and  it  appears  that 
the  dates  which  it  is  desired  to  allege  are 
those  which  were  disclosed  to  the  attorney 
when  preparing  the  original  statement,  but 
which  were  not  embodied  in  the  statement 
through  some  alleged  misunderstanding  which 
is  not  explained,  Held,  that  the  amendment 
will  not  be  permitted.  Heinitsh  and  Moriarty 
V.  Congdon  v.  Kelsea,  C.  D.  1903,  lOG  O.  G. 
.'>42. 

174G.  Where  a  party  wishes  to  amend  his 
statement  to  include  dates  within  his  knowl- 
edge when  he  prepared  his  original  statement. 
Held,  that  it  is  incumbent  upon  him  to  show 
very  clearly  and  satisfactorily  why  they  were 
not  alleged  and  that  the  omission  was  not 
due  to  a  lack  of  care.    Id. 

1747.  Where  a  motion  to  amend  a  prelim- 
inary statement  is  based  upon  the  allegation 
that  a  mistake  was  made  by  the  inventor  as 
to  what  was  meant  by  reduction  to  practice, 
but  there  is  no  explanation  what  the  mistake 
was  or  how  it  arose  and  the  dates  which  it  is 
desired  to  allege  are  not  given.  Held,  that  the 
motion  must  be  denied.  Fowler  v.  Boyce  v. 
Dyson  V.  McBerty,  C.  D.  1903,  107  O.  G.  3544. 


310 


INTERFERENCE,  XXXI,  (b),  3. 


1748.  Where  it  appears  that  R.  was  negli- 
gent in  preparing  his  first  preliminary  state- 
ment and  in  informing  his  attorneys  of  all 
the  facts  and  he  also  did  not  use  the  utmost 
diligence  in  trying  to  find  the  alleged  new  wit- 
ness before  making  his  preliminary  statement. 
Held,  that  R.  has  not  sufficiently  excused  his 
failure  to  allege  all  the  facts  in  his  first  pre- 
liminary statement  and  that  an  amendment  of 
the  same  should  not  be  permitted.  Seeberger 
V.  Russel,  C.  D.  1903,  107  O.  G.  S.-ias. 

1749.  Where  a  party  wishes  to  amend  his 
preliminary  statement  after  testimony  is  taken 
to  carry  back  the  date  of  the  making  of  a  ma- 
chine to  the  date  alleged  for  making  a  model, 
but  the  testimony  shows  no  justification  for 
alleging  that  date  and  indicates  that  proper 
care  was  not  exercised  in  preparing  the  orig- 
inal statement,  Held,  that  the  amendment  will 
not  be  permitted.  Parkes  v.  Lewis,  C.  D.  1904, 
110  O.  G.  305. 

1750.  Where  a  party  prepares  his  prelim- 
inary statement  under  the  direction  of  his  at- 
torney, it  is  to  be  presumed  that  he  is  advised 
as  to  the  legal  effect  of  the  facts  disclosed 
to  his  attorney,  and  he  is  not  to  be  permitted 
to  amend  his  statement  carrying  his  dates  back 
upon  the  mere  allegation  that  he  did  not  un- 
derstand the  difference  between  a  model  and 
a  full-sized  machine.    Id. 

1751.  An  amendment  to  a  preliminary  state- 
ment alleging  earlier  dates  will  not  be  per- 
mitted merely  because  the  party  making  it 
stated  the  facts  as  he  believed  them  to  be  and 
subsequently  discovered  his  error  when  it 
does  not  appear  that  he  could  not  have  dis- 
covered the  facts  sooner  by  careful  and  dili- 
gent search.  Hamilton  v.  Carroll  v.  Goldberg 
v.  Stahlberg,  C.  D.  1904,  110  O.  G.  2510. 

1752.  Where  because  of  the  death  of  the 
inventor  the  assignee  executed  the  prelim- 
inary statement  and  in  doing  so  accepted  the 
statements  of  an  associate  of  the  inventor 
without  making  diligent  inquiries  of  others 
who  would  be  likely  to  know,  Held,  that  he 
will  not  be  permitted  to  amend  the  statement 
because  of  an  alleged  error  subsequently  dis- 
covered.    Id. 

1753.  Where  a  motion  is  made  to  amend  a 
preliminary  statement  after  testimony  is  taken 
and  it  is  considered  that  the  testimony  shows 
that  a  bona  fide  mistake  was  made  in  the 
date  set  up  and  that  the  testimony  also  suffi- 
ciently excuses  the  presumptive  inadvertence 
and  neglect,  Held,  that  as  a  consideration  of 
the  testimony  is  necessary  in  order  to  rightly 


determine  whether  or  not  the  amended  pre- 
liminary statement  should  be  received  this 
consideration  should  be  postponed  until  final 
hearing.  Bauer  v.  Crone,  C.  1).  1904,  111  O.  G. 
1939. 

1754.  Whare  in  support  of  a  motion  to 
amend  a  preliminary  statement  it  is  said  by 
F.  that  when  preparing  to  take  testimony  he 
learned  of  an  earlier  disclosure  than  that  al- 
leged in  his  statement,  but  no  good  rea.son  is 
shown  for  not  discovering  the  fact  sooner. 
Held,  that  the  amendment  should  not  be  per- 
mitted. Fowler  v.  Boyce  v.  Temple  and  Good- 
rum,  C.  D.  1904,  108  O.  G.  561. 

1755.  Where  a  party  wishes  to  amend  his 
preliminary  statement,  setting  up  an  earlier 
reduction  to  practice,  and  it  appears  that  he 
has  discovered  no  new  facts,  but  upon  consul- 
tation with  his  attorney  has  obtained  a  better 
idea  of  what  in  law  constitutes  a  reduction  to 
practice,  Held,  that  the  amendment  should  not 
be  permitted.  He  should  consult  his  attor- 
ney when  preparing  his  statement.     Id. 

175G.  Applicants  should  exercise  the  same 
care  in  preparing  their  preliminary  statements 
that  they  exercise  in  discovering  evidence 
after  they  learn  the  dates  alleged  by  their 
opponents.     Id. 

1757.  Where  a  party  wishes  to  amend  his 
statement  and  include  dates  furnished  to  his 
attorney,  but  which  were  not  included,  and 
who  deliberately  two  days  after  furnishing 
this  information  to  his  attorney  swore  to  an- 
other date.  Held,  that  either  the  party  or  his 
attorney  was  guilty  of  gross  carelessness,  and 
the  amendment  will  not  be  permitted.  Jones 
V.  Linn,  C.  D.  1904,  110  O.  G.  1430. 

1758.  An  affidavit  of  an  attorney  that  he 
was  engaged  upon  other  pressing  work  which 
demanded  his  attention  cannot  excuse  care- 
lessness in  preparing  a  preliminary  statement. 
Id. 

1759.  Held,  that  after  the  testimony  of  one 
of  the  parties  to  an  interference  has  been 
l:ikcn,  relying  upon  the  dates  alleged  by  the 
other  party,  an  amendment  to  the  preliminary 
statement  changing  those  dates  will  not  be 
permitted  without  a  most  clear  and  satisfac- 
tory showing.  Bliss  v.  Creveling,  C.  D.  1904, 
112  O.  G.  499. 

17G0.  Held,  that  the  unverilied  statement 
of  the  attorney  as  to  what  the  inventor  be- 
lieved in  making  his  original  preliminary 
statement,  unsupported  by  other  showing,  is 
not    sufficient   to   warrant   the   granting   of   a 


INTERFERENCE,  XXXI,  (b), 


311 


motion    to    amend    a    preliminary    statement. 
Guett  V.  Tregoning,  C.  D.  1905,  114  O.  G.  544. 

1761.  Motion  to  amend  preliminary  state- 
ment by  alleging  the  making  of  a  model  de- 
nied where  no  satisfactory  explanation  is 
given  for  the  omission  from  the  original  state- 
ment and  no  good  excuse  is  given  for  the 
delay  in  bringing  the  motion  to  amend.  Full- 
agar  v.  Junggren,  C.  D.  1905,  114  O.  G.  1550. 

1762.  Where  a  party  is  called  upon  to  show 
cause  why  judgment  should  not  be  rendered 
against  him  on  the  record  and  he  then  seeks 
to  amend  his  preliminary  statement,  carrying 
his  dates  back  of  his  opponent's  dates,  but  no 
good  reasons  appear  why  the  dates  were  not 
discovered  and  alleged  originally.  Held,  that 
the  amendment  will  not  be  permitted.  Frie- 
stedt  V.  Harold,  C.  D.  1905,  116  O.  G.  594. 

1763.  Amendment  to  a  preliminary  state- 
ment will  not  be  permitted  where  the  excuse 
for  the  alleged  error  is  forgetfulness  and  there 
is  no  showing  what  effort,  if  any,  was  made 
to  refresh  his  recollection  originally  or  what 
steps  were  taken  to  fix  definitely  and  cer- 
tainly the  dates  to  be  alleged.     Id. 

1764.  Where  motion  to  amend  preliminary 
statement  to  carry  date  back  of  those  alleged 
by  opponent  is  brought  after  opportunity  to 
see  opponent's  statement  and  case  has  been  af- 
forded. Held,  that  the  motion  will  be  denied 
unless  supported  by  a  most  satisfactory  and 
convincing  showing.  Hoyt  v.  Sanders  v. 
Hawthorne,  C.  D.  1905,  119  O.  G.  1260. 

1765.  Where  in  support  of  a  motion  to 
amend  preliminary  statement  to  carry  dates 
back  of  those  of  opponent  it  is  merely  alleged 
that  search  for  certain  evidence  now  possessed 
was  originally  unsuccessful,  but  no  satisfac- 
tory e.xplanation  is  made  why  the  search  could 
not  have  been  completed  in  time  for  the  orig- 
inal statement  instead  of  later,  Held,  that  the 
showing  is  not  satisfactory  and  convincing. 
Id. 

1766.  Where  motion  to  amend  a  prelim- 
inary statement  is  brought  after  the  state- 
ments have  been  open  to  inspection  and  seeks 
to  carry  the  party's  reduction  to  practice  from 
a  date  subsequent  to  that  of  his  opponent  to 
a  date  prior  thereto.  Held,  that  such  amend- 
ment will  not  be  permitted  unless  supported 
by  a  clear  and  satisfactory  showing  that  jus- 
tice requires  it  and  that  the  alleged  error  was 
not  due  to  negligence.  Dunn  v.  Halliday,  C. 
D.  1905,  119  O.  G.  1261. 

1767.  Where  upon  motion  to  amend  pre- 
liminary statement   it   is   stated   in   excuse  of 


alleged  error  in  the  original  statement  that 
the  party  did  not  correctly  understand  what 
was  meant  by  reduction  to  practice.  Held,  that 
it  was  clearly  his  duty  to  discover  the  mean- 
ings of  the  allegations  which  he  made  and  that 
he  apparently  could  have  discovered  them 
from  from  his  attorney.    Id. 

1768.  Where  in  excuse  of  alleged  error  in 
preliminary  statement  upon  motion  to  amend 
the  same  it  is  stated  that  party  did  not  under- 
stand the  meaning  of  the  words  reduction  to 
practice  and  it  appears  that  these  words  were 
not  used  in  the  statement,  which,  on  the  other 
hand,  gave  the  date  of  construction  of  full- 
sized  operative  apparatus.  Held,  that  the  ex- 
cuse was  insufficient.     Id. 

1769.  A  motion  to  amend  a  preliminary 
statement  based  upon  conception,  drawings, 
and  model  made  abroad  will  not  be  granted, 
since  acts  performed  abroad  are  immaterial 
upon  the  question  of  priority  of  invention. 
Emmet  v.  Fullagar,  C.  D.  1905,  114  O.  G. 
1551. 

1770.  Amendment  to  a  preliminary  state- 
ment carrying  the  dates  back  of  the  dates  of 
the  opposing  party  will  not  be  permitted  where 
the  alleged  error  was  due  to  carelessness  or 
inattention  in  preparing  the  original  state- 
ment. Neth  and  Tamplin  v.  Ohmer,  C.  D. 
1905,  116  O.  G.  874. 

1771.  On  a  motion  to  amend  a  preliminary 
statement  the  question  is  not  whether  the  mov- 
ing party  would  be  able  to  prove  his  case  if 
amendment  were  permitted,  but  is  whether  the 
showing  made  warrants  permitting  the  amend- 
ment.    Id. 

1772.  Where  a  party  seeks  to  amend  his 
statement  after  learning  the  dates  of  his  op- 
ponent, it  should  be  made  to  appear  not  mere- 
ly that  there  was  error  in  the  original  state- 
ment, but  that  such  error  could  not  have  been 
avoided  by  the  exercise  of  reasonable  care  in 
the  preparation  of  that  statement.     Id. 

1773.  Where  the  alleged  error  in  a  pre- 
liminary statement  is  discovered  as  soon  as 
an  inspection  of  the  opposing  party's  case  re- 
veals the  fact  that  the  allegation  of  an  earlier 
date  is  necessary,  Held,  that  the  presumption 
is  strong  that  the  alleged  error  could  have 
been  discovered  sooner  if  proper  care  had 
been  exercised.    Id. 

1774.  Unless  the  circumstances  surround- 
ing the  discovery  of  the  alleged  error  are  fully 
set  forth  and  make  good  reasons  appear  why 
it  was  possible  to  fix  the  earlier  date  after 
knowing  the  opponent's  dates  and  not  before. 


312 


INTERFERENCE,  XXXI,  (b),  3. 


Held,  that  this  office  can  pay  very  httle  atten- 
tion to  the  mere  allegation  that  it  was  impos- 
sible to  discover  the  error  sooner.    Id. 

1775.  Where  in  excuse  for  the  alleged  error 
in  the  original  statement  it  is  alleged  that  the 
sketches  and  tangible  evidence  were  not  in 
the  possession  of  the  moving  party  when  he. 
prepared  his  statement,  but  it  appears  that  he 
has  not  yet  obtained  possession  of  them  or 
seen  them.  Held,  that  the  excuse  is  insufficient. 
Id. 

1776.  A  motion  to  amend  a  preliminary 
statement  to  correct  the  inadvertent  use  of 
the  word  "model"  instead  of  the  fords  "full- 
sized  machine"  will  not  be  granted  where  it 
is  found  that  the  device  referred  to  as  the 
"full-sized  machine"  does  not  disclose  the 
issue.  Parkes  v.  Lewis,  C.  D.  1906,  120  O.  G. 
333. 

1777.  A  motion  by  one  party  that  the  op- 
posing party  be  required  to  file  an  amended 
preliminary  statement  based  upon  the  alleged 
character  of  a  machine  which  the  moving 
party  assumes  will  be  relied  upon  by  the  op- 
posing party  in  producing  his  evidence  should 
not  be  granted.  The  sufficiency  of  the  ma- 
chine to  establish  a  date  of  invention  will  be 
determined  by  the  office  when  it  is  introduced 
in  evidence  and  in  connection  with  the  testi- 
mony which  may  be  taken  concerning  it.  Barr 
V.  Bugg,  C.  D.  1906,  122  O.  G.  2061. 

1778.  Where  after  decision  upon  a  motion 
for  dissolution  a  party  moves  to  amend  his 
preliminary  statement  and  it  is  held  that  the 
showing  in  support  thereof  is  insufficient  to 
warrant  such  amendment,  a  second  motion  to 
amend  will  not  be  granted  where  no  good 
reason  appears  why  the  showing  then  made 
could  not  have  been  presented  in  connection 
with  the  first  motion.  Parties  cannot  be  per- 
mitted to  try  their  cases  piecemeal  and  ex- 
perimentally. Borg  v.  Strauss,  C.  D.  1907,  130 
O.  G.  2719. 

1779.  Amendments  to  preliminary  state- 
ments are  to  be  permitted  after  a  party  has 
had  an  opportunity  to  inspect  his  opponent's 
case  only  in  cases  where  bona  fide  mistakes  of 
fact  have  been  made  and  a  full  and  clear 
showing  is  made  that  there  was  no  negligence 
in  discovering  the  true  facts.    Id. 

1780.  An  amendment  to  a  preliminary  state- 
ment will  not  be  permitted  upon  the  allega- 
tion of  the  moving  party  that  at  the  time  of 
the  declaration  of  the  interference  he  sup- 
posed that  the  issue  was  restricted  to  the  ma- 
chine shown   in   the   application,  but   that  he 


later  learned  that  the  examiner  construed  it  so 
broadly  as  to  read  on  a  prior  application, 
where  it  did  not  appear  that  the  examiner 
had  construed  the  issue  except  by  declaring 
the  interference,  and  that  the  examiner  had 
held,  on  a  motion  to  shift  the  burden  of 
proof,  that  the  issue  was  not  readable  upon 
the  earlier  application.  In  any  event  the  mis- 
take was  one  of  law  and  affords  no  ground 
for  amendment.  Miller  v.  Wallace,  C.  D. 
1907,  131  O.  G.  1689. 

1781.  A  motion  to  amend  a  preliminary 
statement  cannot  be  granted  where  it  has  not 
been  shown  that  proper  care  was  exercised 
in  the  preparation  of  the  original  statement 
and  no  explanation  is  given  of  how  the  orig- 
inal mistake  occurred  or  why  it  was  not  sooner 
discovered.  Johnston  v.  Erekson  and  Carl- 
son v.  Barnard,  C.  D.  1907,  131  O.  G.  2419. 

1782.  Where  it  appears  that  at  the  time  of 
making  his  preliminary  statement  a  party  did 
not  read  the  counts  of  the  issue,  that  the  al- 
leged mistake  therein  was  not  discovered  till 
testimony  was  taken,  and  the  motion  to  amend 
was  not  brought  for  more  than  two  months 
thereafter,  Held,  that  neither  proper  care  in 
preparing  the  statement  nor  diligence  in  in- 
vestigating the  matter  and  discovering  the  mis- 
take was  shown.  Smith  v.  Ingram,  C.  D.  1907, 
l.;i  O.  G.  2420. 

1783.  Whether  a  decision  on  a  motion  to 
amend  a  preliminary  statement  should  be  ren- 
dered before  or  at  final  hearing  is  a  matter 
within  the  discretion  of  the  examiner  of  in- 
terferences.    Id. 

1784.  A  party  will  not  be  permitted  to 
amend  his  preliminary  statement  to  carry  back 
his  date  of  disclosure  to  cover  the  date  proved 
by  his  opponent  in  a  prior  interference  with 
a  third  party  where  the  amended  date  is  earlier 
than  that  set  up  in  a  preliminary  statement 
filed  three  years  before  in  an  interference  be- 
tween him  and  said  third  party  and  where  the 
affidavit  in  support  of  the  motion  indicates 
an  uncertainty  whether  the  alleged  disclosure 
took  place  prior  to  the  date  originally  given. 
Beall,  Jr.  v.  Lyon,  C.  D.  1907,  126  O.  G.  388. 

1785.  Where  D.  was  notified  that  his  pre- 
liminary statement  was  indefinite  and  should 
be  amended,  but  no  amendment  was  made,  and 
the  present  motion  was  not  brought  until  eight 
months  later  and  after  testimony  had  been 
taken  by  D.,  and  was  inspired  by  a  statement 
placed  on  the  record  by  his  opponent.  Held, 
that  the  motion  was  properly  denied  in  the 
absence  of  a  showing  in  excuse  for  the  long 


INTERFERENCE,  XXXI,  (b),  3. 


313 


delay  in  bringing  the  motion  or  the  failure  to 
respond  to  the  requirement  for  a  more  def- 
inite statement  or  of  a  satisfactory  showing 
of  accident  or  mistake  or  of  newly-discovered 
evidence.  Dixon  v.  McElroy,  C.  D.  1907,  127 
O.  G.  2393. 

1786.  The  question  of  amending  the  pre- 
liminary statement  is  a  matter  largely  within 
the  discretion  of  the  examiner  of  interfer- 
ences. Unless  it  be  shown  that  such  discre- 
tion has  been  abused  his  decision  will  not  be 
disturbed.     Karpenstein    v.   Hertzberg,   C.    D. 

1907,  127  O.  G.  2393. 

1787.  A  motion  to  amend  a  preliminary 
statement  will  not  be  granted  in  the  absence 
of  a  valid  ground  therefor,  even  though  the 
proposed  amendment  does  not  seek  to  change 
the  sequence  of  dates  set  up  originally  by  the 
respective  parties.     Ridgway  v.  Tilyou,  C.  D. 

1908,  137  O.  G.  979. 

1788.  Where  a  motion  to  amend  a  prelim- 
inary statement  has  been  denied  by  the  ex- 
aminer of  interferences  and  his  decision  af- 
firmed on  appeal,  it  should  not  be  reconsid- 
ered in  the  absence  of  any  additional  showing 
as  to  the  grounds  on  which  it  was  denied. 
Dyson  v.  Land  v.  Dunbar  v.  Browne,  C.  D. 
1908,  133  O.  G.  1679. 

1789.  Where  during  the  taking  of  testimony 
notice  was  given  by  counsel  for  W.,  in  con- 
nection with  an  answer  of  a  witness  as  to  the 
date  of  disclosure,  of  an  intention  to  present 
a  motion  for  leave  to  amend  W.'s  preliminary 
statement,  Held,  that  such  notice  is  insufficient 
to  warrant  amendment  of  the  statement  to 
change  the  allegation  of  making  a  model  to 
an  allegation  of  reduction  to  practice  at  such 
date.  Kent  v.  Wilson  v.  Jeffery  and  Jeffery, 
C.  D.  1908,  137  O.  G.  1943. 

1790.  Where  counsel   for  W.  was  apprised 
the  acts   which   W.  expected   to  prove   as 

early  as  September  23,  1908,  and  the  testimony 
in  behalf  of  W.  was  filed  in  the  patent  office 
on  October  9,  1908,  but  the  motion  to  amend 
the  preliminary  statement  was  not  filed  until 
October  30,  Held,  that  in  the  absence  of  suffi- 
cient excuse  the  -delay  in  filing  the  motion 
warrants  the  denial  of  the  motion.     Id. 

1791.  Where  a  party  in  preparing  a  prelim- 
inary statement  recollects  having  had  a  con- 
ersation  in  which  the  invention  in  issue  was 
discussed  and  writes  a  letter  addressed  to  the 
party  with  whom  the  conversation  was  had 
to  find  out  whether  the  invention  was  dis- 
closed to  him  at  that  time,  but  gets  no  reply, 
and  does  nothing  further  with  respect  thereto. 


and  it  does  not  appear  whether  the  letter  was 
returned  or  whether  it  even  had  a  return  card 
on  it,  or  that  applicant  endeavored  to  find  out 
through  mutual  friends  of  such  party's 
whereabouts.  Held,  that  such  party  was  negli- 
gent and  that  he  was  not  entitled  to  amend 
his  preliminary  statement  after  testimony  was 
taken  carrying  his  date  of  disclosure  back  to 
the  date  of  such  conversation  on  the  plea  of 
poverty,  applicant  having  failed  to  take  the 
steps  within  his  means  to  secure  the  informa- 
tion sought.  Floyd  v.  Robbing,  C.  D.  1908,  133 
O.  G.  992. 

1792.  Since  the  rule  regarding  the  allega- 
tions of  preliminary  statements  requires  a 
specific  statement  as  to  disclosure  as  well  as 
to  conception  of  the  invention,  a  party  may 
not  amend  his  statement  by  carrying  back  the 
date  alleged  for  disclosure  to  the  date  al- 
leged for  conception  on  the  theory  that  dis- 
closure is  merely  evidence  of  conception.    Id. 

1793.  The  practice  in  permitting  amend- 
ments to  preliminary  statements  has  been  well 
defined  in  many  consistent  decisions,  and  the 
applicability  of  the  principles  announced  there- 
in to  the  facts  in  any  particular  case  should 
ordinarily  be  left  to  the  discretion  of  the  ex- 
aminer of  interferences.  Smith  v.  Wickes 
v.  Emerson  v.  Sanders,  C.  D.  1908,  133  O.  G. 
1433. 

1794.  On  a  motion  to  amend  a  preliminary 
statement  to  change  the  date  of  a  disclosure 
and  of  the  making  of  drawings  from  a  date 
subsequent  to  a  date  prior  to  the  dates  al- 
leged by  the  opposing  party,  where  it  appears 
that  the  drawings  which  are  alleged  to  con- 
stitute newly-discovered  evidence  were  exam- 
ined prior  to  the  making  of  the  preliminary 
statement,  an  averment  that  the  element  shown 
therein  and  which  is  involved  in  interference 
was  an  obscure  part  of  the  machine  and  that 
the  illustration  thereof  was  therefore  over- 
looked does  not  constitute  a  sufficient  excuse 
for  failure  to  earlier  discover  such  evidence. 
Goldberg  v.  Crumpton  v.  Carlin,  C.  D.  1909, 
141  O.  G.  286. 

1795.  C.'s  motion  to  amend  his  preliminary 
statement  was  denied  by  the  examiner  of  in- 
terferences. He  then  renewed  his  motion  and 
filed  additional  affidavits.  This  motion  was 
dismissed.  Held,  that  on  appeal  from  the 
former  decision  the  affidavits  filed  with  the 
renewed  motion  will  not  be  considered.  (Borg 
V.  Strauss,  C.  D.  1907,  320,  130  O.  G.  2719.) 
Curtis  V.  Hedlund,  C.  D.  1909,  139  O.  G.  989. 


314 


INTERFERENCE,  XXXI.  (c),  (d). 


1796.  It  appeared  that  the  drawings  and 
records  of  the  inventor  were  arranged  in 
classes  and  that  the  drawing  now  rehcd  upon 
to  support  the  proposed  amended  prehminary 
statement  was  in  its  proper  class  and  might 
have  heen  found  when  the  original  preliminary 
statement  was  prepared  had  the  search  of  the 
records  extended  to  that  class  and  that  such 
search  was  made  only  after  a  decision  on  a 
motion  to  shift  the  burden  of  proof  which 
changed  the  relation  of  the  parties.  Held, 
that  the  motion  to  amend  was  properly  de- 
nied.    Id. 

1797.  Where  in  support  of  a  motion  to 
amend  his  preliminary  statement  a  party  al- 
leges that  at  the  time  it  was  made  he  thought 
the  claims  were  limited  to  the  structure  shown 
in  his  drawing  and  did  not  discover  that  they 
were  capable  of  a  broader  construction  until 
after  a  decision  was  rendered  on  a  motion  to 
dissolve,  Held,  that  such  a  mistake  is  one  of 
law  and  not  of  fact  and  constitutes  no  ground 
for  permitting  the  amendment.  Ryder  v. 
White,  C.  D.  1909,  U:>  O.  G  76.^ 

1798.  Where  a  party  has  had  access  to  the 
preliminary  statement  of  his  opponent,  he 
will  not  be  permitted  to  amend  his  statement 
to  change  the  date  of  conception  or  of  reduc- 
tion to  practice  from  a  date  subsequent  to  that 
alleged  by  his  opponent  to  one  prior  to  such 
date  unless  most  satisfactory  reasons  are 
given  in  explanation  of  the  facts  necessitating 
such  amendment  and  of  the  delay  in  bringing 
a  motion  to  amend.    Id. 

1799.  Where  from  the  showing  to  amend  a 
preliminary  statement  brought  by  the  senior 
party  after  the  junior  parties  had  taken  their 
testimony-in-chief  it  appeared  that  at  the  time 
the  preliminary  statement  was  executed  there 
was  doubt  as  to  its  correctness,  but  that  no 
thorough  search  was  made  to  discover  evi- 
dence of  an  earlier  disclosure,  Held,  that  the 
motion  to  amend  was  properly  denied.  Whit- 
all  v.  Gillespie  v.  Blair,  171  O.  G.  744. 

(c)  Inspection  of. 

1800.  A  preliminary  statement  having  been 
filed  by  a  party  through  his  regularly-appoint- 
ed attorney  and  opened,  a  second  preliminary 
statement  filed  through  another  attorney  will 
not  be  opened  at  the  instance  of  the  other 
party,  it  appearing  that  it  was  not  intended 
that  the  second  statement  should  be  filed. 
Converse  et  al.  v.  Kerst,  C.  D.  1898,  84  O.  G. 
1146. 


1801.  After  preliminary  statements  are  filed 
and  approved  they  will  not  be  sealed  up  so 
that  motions  for  dissolution  may  be  made  be- 
fore they  are  open  to  the  inspection  of  the  op- 
posing parties.  Whipple  v.  Sharp,  C.  D.  1903, 
98  O.  G.  22&. 

1802.  Where  the  junior  party's  statement 
fails  to  overcome  the  filing  date  of  the  senior 
party,  the  preliminary  statement  of  the  senior 
party  should  remain  sealed  and  should  be 
placed  in  the  confidential  archives  of  the  of- 
fice and  should  not  be  open  to  inspection 
either  before  or  after  the  grant  of  the  patent. 
In  re  Bacon,  C.  D.  1902,  99  O.  G.  861. 

(d)  Delay  in  Filing. 

1803.  Where  a  party  files  a  motion  one  day 
before  his  time  for  filing  his  preliminary  state- 
ment expires,  and  thereby  indirectly  obtains 
an  extension  of  time  to  which  he  was  not 
otherwise  entitled.  Held,  that  if  after  the  mo- 
tion is  decided  he  fails  to  file  his  statement 
within  the  one  day  remaining  of  his  time  it  is 
his  own  fault,  and  he  has  no  right  to  com- 
plain if  he  is  held  strictly  to  his  rights.  Whip- 
l)k-  v.  Sharp,  C.  D.  1902,  98  O.  G.  225. 

1804.  Where  an  inventor  refuses  to  file  a 
preliminary  statement  and  the  records  show 
that  the  assignee  was  diligent  in  endeavoring 
to  obtain  a  statement  from  the  inventor.  Held, 
that  a  statement  made  by  the  assignee  should 
be  accepted  even  though  filed  shortly  after  the 
expiration  of  the  time  for  filing  preliminary 
statements.  Reynolds  v.  Bean,  C.  D.  1902, 
100  O.  G.  1763. 

1805.  Where  a  motion  is  brought  to  extend 
the  time  for  filing  preliminary  statements  and 
no  definite  period  is  specified  in  said  motion. 
Held,  that  to  grant  the  motion  would  place 
the  interference  in  a  state  of  indefinite  suspen- 
sion, and  for  this  reason  the  motion  should 
be  denied.  No  interference  should  be  sus- 
pended for  an  indefinite  period.  Keech  v. 
Birmingham,  C.  D.  1902,  101  O.  G.  2825. 

1806.  Delays  in  the  grant  of  a  patent  affect 
not  merely  the  interests  of  the  parties,  but 
also  the  interests  of  the  public,  and  as  the 
representative  of  the  public  the  office  is  not 
bound  to  approve  delays  merely  because  the 
parties  consent.  Sponsel  v.  Darling,  C.  D. 
1903,  105  O.  G.  498. 

1807.  Where  by  stipulation  a  party  is  given 
three  months  within  which  to  file  a  prelim- 
inary statement,  but  fails  to  file  it  and  allows 
judgment  to  be  entered  against  him  and  there- 


INTERFERENCE,  XXXI,   (e). 


315 


after  makes  a  motion  to  vacate  the  judgment 
and  to  be  permitted  to  tile  a  statement  alleg- 
ing merely  that  he  was  too  busy  to  prepare  it 
sooner,  Held,  that  the  motion  will  be  denied. 
Fowler  V.  Boyce  v.  Temple  and  (ioodrum  v. 
Dyson   v.  McBerty,  C.  U.   1903,  107  O.  G.  543. 

1808.  Where  a  motion  to  vacate  a  judgment 
of  priority  is  not  based  upon  newly-discovered 
evidence,  the  question  of  primary  importance 
is  why  the  facts  were  not  sooner  presented 
by  proper  motion.     Id. 

1809.  Where  the  motion  to  amend  was  not 
brought  for  nearly  two  months  after  the  orig- 
inal statement  was  tiled  and  no  explanation 
was  given  as  to  the  cause  of  the  long  delay, 
Held,  that  this  is  another  reason  why  the 
motion  should  be  denied.  Brown  v.  Cutler 
V.  Keeney,  C.  D.  1903,  104  O.  G.  1896. 

1810.  Where  a  motion  to  amend  a  prelim- 
inary statement  is  brought  after  the  testimony 
of  the  opposing  party  has  been  taken,  it  is 
always  a  suspicious  circumstance,  and  the 
showing  in  support  of  such  a  motion  is  to  be 
carefully  scrutinized.  Pope  and  Mims  v.  Mc- 
Lean, C.  D.  1903,  104  O.  G.  2147. 

1811.  Where  it  is  said  that  the  original 
statement  was  carefully  prepared  after  due 
consultation  with  parties  who  were  thought 
to  know  the  facts  and  that  it  was  not  deter- 
mined to  file  a  motion  to  amend  until  after 
consultation  with  certain  witnesses  just  prior 
to  the  taking  of  testimony  and  it  appears  that 
these  witnesses  could  have  been  consulted 
earlier.  Held,  not  to  constitute  such  a  showing 
as  would  warrant  the  amendment  in  tola  of 
the  original  preliminary  statement.     Id. 

1812.  Where  party  bases  a  motion  to  amend 
his  preliminary  statement  upon  the  discovery 
of  a  sketch,  but  it  appears  that  he  did  not 
disclose  it  to  his  attorney  or  take  any  steps 
to  amend  for  more  than  a  month  after  dis- 
covering it,  during  which  time  the  opposing 
party  look  his  testimony.  Held,  that  the  mo- 
tion will  be  denied.  Andrew  v.  Nilson,  C.  D. 
1903,   10.5   O.  G.   2059. 

1813.  Where  a  party  asks  for  an  extension 
of  time  for  tiling  preliminary  statements  and 
it  appears  that  the  notice  of  interference  was 
delayed  in  reaching  him  and  he  moved  prompt- 
ly after  receiving  notice  and  is  not  seeking  to 
make  his  statement  after  learning  his  oppo- 
nent's dates.  Held,  that  the  request  will  be 
granted.  Doble  v.  Eckart  v.  Henry,  Jr.,  C. 
D.   1904,   110  O.   G.   604. 

1814.  Where  it  appeacs  that  an  applicant 
was   reasonably   diligent   in   his   endeavors   to 


obtain  the  data  necessary  to  make  a  complete 
preliminary  statement  and  that  it  was  not  pos- 
sible to  tile  a  complete  statement  until  nine 
days  after  the  time  set  had  expired.  Held, 
that  the  statement,  though  liled  late,  should 
be  accepted.  Charlton  v.  Sheldon,  C.  D.  1904 
111  O.  G.  2492. 

1815.  Delay  in  bringing  a  motion  to  amend 
a  preliminary  statement  will  not  be  excused 
merely  because  negotiations  were  pending  be- 
tween the  parties  to  the  interference  looking 
to  the  settlement  of  the  case.  Bradley  v.  Mig- 
gett,  C.  D.  1910,  150  O.  G.  1042. 

(c)    Testimony  at   I'ariance. 

1816.  Where  testimony  was  introduced  to 
prove  things  alleged  to  have  been  done  prior 
to  the  dates  set  up  in  a  preliminary  statement 
Held,  that  such  testimony  cannot  be  regarded 
as  having  any  weight.  *Id.  Bader  v.  Vajen, 
C.  D.    1899,  328,  87  O.   G.   1235. 

1817.  The  rule  of  the  patent  office  pre- 
scribing that  "the  parties  will  be  strictly  held 
in  their  proofs  to  the  dates  set  up"  in  their 
preliminary  statements  is  in  accordance  with 
right,  reason,  and  with  the  principles  of  jus- 
tice, for  otherwise  parties  might  be  misled  to 
their  detriment.    *Id. 

1818.  Where  a  party  to  an  interference  took 
testimony  to  prove  a  reduction  to  practice  of 
his  invention  at  a  date  prior  to  that  set  up  in 
his  preliminary  statement.  Held,  that  said  tes- 
timony without  amendment  to  the  preliminary 
statement  duly  made  by  the  authority  of  the 
commissioner  of  patents  was  inadmissible  and 
entitled  to  no  consideration.  (Colhoun  v. 
Hodgson,  C.  D.  1895,  122,  70  O.  G.  276.) 
*Cross  V.  Phillips,  C.  D.  1899,  87  O.  G.  1399. 

1819.  The  suggested  possibility  that  the  of- 
fice may  throw  out  of  consideration  entirely 
evidence  of  an  earlier  date  of  invention  than 
that  alleged  in  the  preliminary  statement  and 
so  may  not  accord  to  a  party  even  the  date  al- 
leged. Held,  not  alone  a  sufficient  ground  upon 
which  to  permit  an  amendment  to  the  state- 
ment, since  to  so  hold  would  virtually  nullify 
the  rule  recpiiring  diligence.  The  statement 
would  then  have  no  useful  purpose  or  effect, 
since  in  all  cases  it  would  be  changed  to  con- 
form to  the  testimony.  Miehle  v.  Read,  C.  D. 
1899,  89  O.  G.  354. 

1820.  .\  party  is  confined  in  his  proofs  to 
the  dates  set  up  in  his  preliminary  statement 
as  to  conception  and  disclosure,  and  evidence 
tending  to  establish   an  earlier  date  is   inad- 


316 


INTERFERENCE,  XXXI,   (e). 


missible.  (Cross  v.  Phillips  C.  D.  1899,  342, 
87  O.  G.  1399.)  Funk  v.  Matteson  v.  Haines, 
C.  D.  1902,  100  O.  G.  1J63. 

1821.  If  amendments  to  preliminary  state- 
ments were  permitted  merely  to  make  them 
conform  to  the  facts  shown  by  the  evidence, 
the  rule  requiring  preliminary  statements 
might  as  well  be  abolished.  Woodward  v. 
Kennedy,  104  O.  G.  1393. 

1822.  Where  a  motion  to  amend  a  prelim- 
inary statement  is  not  brought  promptly  after 
the  discovery  of  the  error  it  will  be  denied. 
Brown  v.  Keeney,  C.  D.  1903,  105  O.  G.  2G0. 

1823.  The  fact  that  in  the  testimony  a  party 
makes  no  attempt  whatever  to  support  the 
allegation  of  his  preliminary  statement  as  to 
the  dates  indicates  a  reprehensible  looseness 
of  assertion  on  his  part  and  tends  to  discredit 
him.  Schaffer  v.  Dolan,  C.  D.  1904,  108  O.  G. 
214G. 

1824.  Where  the  evidence  on  behalf  of  a 
party  to  an  interference  shows  that  the  inven- 
tion was  made  at  a  date  later  than  that  al- 
leged in  the  preliminary  statement.  Held,  that 
the  evidence  is  not  to  be  disregarded  because 
of  the  variance  from  the  statement.  *Herman 
V.  Fullman,  C.  D.  1904,  109  O.  G.  288. 

1825.  Where  the  dates  proved  are  later  than 
those  alleged  in  the  preliminary  statement  no 
harm  or  prejudice  is  caused  to  the  opposing 
party,  and  since  it  is  a  general  rule  that  no 
attention  will  be  paid  to  technical  objections 
which  have  caused  no  substantial  injury.  Held, 
that  the  evidence  will  not  be  disregarded.    *Id. 

1826.  Where  the  facts  established  by  the 
testimony  are  so  much  at  variance  with  the 
allegations  in  a  preliminary  statement  as  to 
make  it  evident  that  the  statement  was  made 
without  due  regard  to  the  facts.  Held,  that 
such  "looseness  of  assertion  in  the  preliminary 
statement  tends  to  discredit"  the  party  filing 
such  statement.  (Shaffer  v.  Dolan,  ante,  592, 
108  O.  G.  2146.)  Miles  V.  Todd,  C.  D.  1904, 
112  O.  G.  1479. 

1827.  Where  a  contestant  alleges  in  his  pre- 
liminary statement  that  he  made  a  model  on  a 
certain  date.  Held,  that  he  is  restricted  to  the 
allegation  in  his  statement  and  that  there  is 
no  foundation  to  introduce  testimony  of  re- 
duction to  practice  upon  this  date.  Basch  v. 
Ilanmiond,  C.  D.  1904,  113  O.  G.  551. 

1828.  Where  a  party  presents  evidence  of 
completion  of  the  invention  prior  to  the  date 
to  which  he  is  restricted  by  his  preliminary 
statement,  Held,  that  such  evidence  is  entitled 
to   some  consideration   upon   the  question   of 


diligence  as  tending  to  show  that  he  had  some 
reason  to  be  satisfied  with  the  practicability 
of  his  device.  Hammond  v.  Basch,  C.  D. 
1905,  115  O.  G.  804. 

1829.  It  is  essentia!  in  interference  proceed- 
ings that  preliminary  statements  made  by  the 
respective  parties  without  knowledge  of  their 
opponents'  cases  should  not  be  disregarded 
when  the  proofs  are  taken.  Fowler  v.  Boyce, 
C.  D.  1905,  118  O.  G.  2534. 

1830.  Where  a  party  has  been  refused  per- 
mission to  put  back  his  dates  as  set  out  in 
his  preliminary  statement  after  seeing  his  ad- 
versary's dates,  any  attempt  to  prove  the  ear- 
lier dates  is  contrary  to  the  rules  of  the  pat- 
ent office  and  to  the  general  rules  applicable 
to  pleading  in  courts  of  law.  *FowIer  v.  Mc- 
Berty,  C.  D.  1906,  121  O.  G.  1015. 

1831.  Where  a  party  in  order  to  prevail  de- 
pends upon  earlier  dates  than  those  alleged 
in  his  preliminary  statement  and  permission 
to  amend  the  statement  to  set  out  said  earlier 
dates  has  been  refused.  Held,  that  testimony 
relating  to  such  earlier  dates  must  be  disre- 
garded.    *Id. 

1832.  Where  the  junior  party  is  limited  by 
his  preliminary  statement  to  date  subsequent 
to  the  opposing  party's  record  date,  there  is  no 
good  reason  for  examining  the  testimony  of 
such  junior  party  attempting  to  prove  dates 
earlier  than  those  set  up  in  such  preliminary 
statement  where  permission  to  amend  the  pre- 
liminary statement  was  asked  and  refused. 
*Fowler  v.  Boyce,  C.  D.  1906,  122  O.  G.  1726. 

1833.  Where  leave  to  amend  a  preliminary 
statement  is  asked  and  refused  by  the  patent 
office,  testimony  tending  to  establish  dates  ear- 
lier than  those  alleged  cannot  be  considered 
on  the  question  of  priority,  even  with  the  con- 
sent of  counsel,  unless  expressly  approved  by 
the  commissioner  of  patents  or  his  represen- 
tatives.    *Id. 

1834.  Cases  may  often  arise  where  the  in- 
terest of  the  parties  and  the  public  will  be  best 
subserved  by  permitting  dates  earlier  than 
those  set  forth  in  preliminary  statements  to 
be  proved.  It  should,  however,  be  done  under 
the  supervision  of  and  with  the  approval  of 
the  patent  office.    *Id. 

1835.  Testimony  tending  to  establish  dates 
earlier  than  those  alleged  in  the  preliminary 
statement  will  not  be  considered  either  by  the 
tribunals  of  the  patent  office  or  by  the  court 
of  appeals  on  appeal  from  the  commissioner 
of  patents  unless  timely  amendment  of  such 
statement   is  made  and   the  court   is  without 


INTERFERENCE,  XXXI,  (f). 


317 


power  to  consider  such  testimony  where  leave 
to  amend  is  asked  and  refused.  *Lowrie  v. 
Ta.vlor  and  Taylor,  C.  D.  1906,  123  O.  G.  1663. 

1836.  A  party  is  not  called  upon  to  rebut 
any  testimony  of  his  opponent  tending  to  es- 
tablish dates  earlier  than  those  set  up  in  the 
opposing  party's  preliminary  statement.     *Id. 

1837.  Where  the  preliminary  statement  of 
a  party  alleges  than  an  "experimental"  de- 
vice was  constructed  in  January,  1901,  and 
no  date  of  reduction  to  practice  is  given,  such 
party  will  not  be  restricted  to  the  date  of  his 
application  for  his  reduction  to  practice  where 
no  objection  was  made  to  the  statement  on 
the  ground  that  it  was  indefinite.  (Hammond 
V.  Basch,  C.  D.  190.5,  615,  115  O.  G.  804,  24 
App.  D.  C.  469,  distinguished.)  *Burson  v. 
Vogcl,  C.   D.   1907,  127  O.   G.  2393. 

1838.  Where  a  party  gave  notice  at  the  con- 
clusion of  the  taking  of  his  testimony  that  he 
proposed  to  bring  a  motion  to  amend  his  pre- 
liminary statement  to  conform  to  his  proofs, 
but  failed  to  bring  the  motion  until  after  the 
testimony  of  the  opposing  party  was  taken 
and  filed,  although  the  error  to  be  corrected 
by  such  amendment  was  known  to  him  at 
least  two  months  before  notice  of  the  proposed 
amendment  was  given,  Held,  that  amendment 
will  not  be  permitted,  as  no  excuse  is  offered 
for  the  delay,  and  it  does  not  appear  that  the 
evidence  on  which  the  motion  was  based  was 
not  accessible  or  would  not  have  been  dis- 
covered before  preparing  the  original  state- 
ment had  proper  care  and  diligence  been  ex- 
ercised. Green  v.  Farley,  C.  D.  1908,  132  O. 
G.  235. 

1839.  Where  the  preliminary  statement  of  a 
parly  alleges  reduction  to  practice  in  January, 
1005,  evidence  showing  the  construction  of  an 
alleged  model  in  189:"  cannot  be  accepted  as 
proving  an  earlier  date  of  reduction  to  prac- 
tice. Phillips  v.  Sensenich,  C.  D.  1908,  132  O. 
G.  677. 

1840.  Where  the  allegations  made  by  an 
applicant  in  his  preliminary  statement  and 
in  atfidavits  filed  during  the  ex  parte  prosecu- 
tion of  his  application  are  not  at  all  supported 
by  the  testimony  offered  on  his  behalf  in  the 
interference.  Held,  that  this  variance  tends  to 
discredit  the  value  of  the  testimony.  Barnes 
V.  Swartwout,  C.  D.  1910,  If.l  O.  G.  1045. 

(f)  Extension  nf  Time. 

1841.  When  a  motion  is  brought  for  a  defi- 
nite extension  of  time   for  filing  preliminary 


statements  and  the  request  is  a  reasonable  one. 
Held,  that  the  examiner  of  interferences  did 
not  exceed  the  discretion  given  him  by  the 
rules  in  granting  the  motion,  although  there 
was  no  notice  of  service  of  such  motion.  The 
denial  of  such  a  request  would  be  warranted 
only  in  an  extraordinary  case.  Bailey  v.  Davis, 
C.  D.  190.!,  102  O.  G.  819. 

1842.  Where  a  party  makes  a  motion  for  an 
extension  of  time  for  filing  his  preliminary 
statement  and  such  motion  is  made  within  the 
time  originally  allowed  for  filing  the  state- 
ment, but  is  not  served  on  his  opponent,  the 
examiner  of  interferences  may  in  his  discre- 
tion dispense  with  notice  of  service  of  the 
motion.  Quick  v.  McGec,  C.  D.  1903,  107  O. 
G.  1376. 

1843.  Where  a  party  is  unable  to  prepare 
his  preliminary  statement  within  the  time 
fixed,  it  is  his  duty  to  present  the  facts  to  the 
office  and  ask  for  an  extension  of  time  be- 
fore he  is  in  default  or  as  soon  as  possible. 
Fowler  v.  Boyce  v.  Temple  and  Goodrum  v. 
Dyson  v.  McBerty,  C.  D.  1903,  107  O.  G.  543. 

1844.  Where  a  party  through  carelessness  or 
lack  of  attention  supposed  that  a  notice  of 
interference  which  he  received  related  to  one 
case  in  which  he  did  not  wish  to  file  a  pre- 
liminary statement  and  after  his  time  had  ex- 
pired he  discovered  that  it  related  to  another 
case  which  he  wished  to  contest  and  he  asked 
that  he  be  permitted  to  file  a  statement.  Held, 
that  his  motion  was  properly  denied.  Hart- 
ley V.   Mills,  C.  D.  1904,  110  O.  G.  2236. 

1845.  Parties  will  not  be  relieved  of  the  ef- 
fects of  their  negligence  and  carelessness  in 
the  matter  of  preparing  preliminary  state- 
ments.    Id. 

1846.  Held,  that  the  question  of  extension 
of  times  for  filing  preliminary  statements  is 
left  wholly  within  the  discretion  of  the  ex- 
aminer of  interferences,  and  from  his  decision 
upon  these  matters  no  appeals  will  lie.  Ohnier 
V.  Neth  and  Tamplin,  C.  D.  190.5,  lis  O.  G. 
16S6. 

1847.  Where  in  the  opinion  of  the  appli- 
cants the  decision  of  the  examiner  of  inter- 
ferences upon  the  question  of  extension  of 
times  for  filing  preliminary  statements  would 
involve  hardships  upon  them,  an  appeal  may 
be  allowed  by  the  commissioner;  but  in  all 
such  cases  the  decision  of  the  examiner  of 
interferences  must  be  complied  with  until 
such  appeal  is  allowed.    Id. 

1848.  Where  the  time  for  filing  prelim- 
inary  statements   had   been    extended   several 


318 


INTERFERENCE,  XXXII. 


months  in  view  of  the  mental  condition  of 
one  of  the  parties,  Held,  that  a  motion  for 
further  extension  was  properly  denied  where 
the  only  showing  in  support  of  the  motion  is 
the  affidavit  of  a  physician  stating  that  in  his 
opinion  the  apphcant  will  in  a  few  months  be 
sufficiently  recovered  to  be  reliable  as  to  his 
recollection  of  past  occurrences.  Churchill 
v.  Goodwin,  C.  D.  1908.  132  O.  G.  18,!8. 

1849.  Permission  to  file  a  preliminary  state- 
ment will  not  be  granted  when  filed  nearly 
four  months  after  the  expiration  of  the  period 
allowed  for  such  action  and  after  the  granting 
of  two  extensions  of  time  for  the  taking  of 
testimony  where  it  appears  that  applicant's 
counsel  notified  the  assignee  of  an  undivided 
half  interest  of  the  interference  and  asked 
him  to  secure  from  the  applicant  the  informa- 
tion necessary  to  make  a  preliminary  state- 
ment and  that  said  counsel  addressed  a  letter 
to  applicant  advising  him  about  the  prelim- 
inary statement,  which  presumably  was  deliv- 
ered, as  it  was  not  returned.  Whether  appli- 
cant had  actual  notice  or  not,  the  failure  to 
obtain  the  necessary  data  by  counsel  or  by  the 
assignee  was  negligence  with  which  applicant 
is  chargeable.  Anderson  v.  Peck,  C.  D.  1908. 
133  O.  G.  229. 

1850.  The  question  of  the  extension  of  times 
for  filing  preliminary  statements  will  be  left 
wholly  within  the  discretion  of  the  examiner 
of  interferences,  and  no  appeal  will  lie  from 
his  decisions  thereon.  Lukaszewske  v.  Cole, 
C.  D.  1908,  134  O.  G.  1050. 

1851.  Judgment  of  priority  was  rendered 
against  C.  because  of  his  failure  to  file  a 
preliminary  statement  within  the  time  set. 
Held,  that  the  extension  and  limitation  of 
time  within  which  a  party  to  an  interference 
shall  file  his  preliminary  statement  is  within 
the  discretion  of  the  commissioner,  and  his 
refusal  to  extend  such  time  is  not  subject  to 
review  by  the  court  of  appeals  of  the  District 
of  Columbia  unless  it  clearly  appears  from  the 
record  that  he  has  abused  his  discretion. 
*Churchil!  v.  Goodwin,  C.  D.  1909,  141  O.  G. 
568. 

XXXII.    P.\TUNTEE. 

1852.  Where  an  applicant  has  adopted  the 
claims  of  a  patent,  in  any  subsequent  interfer- 
ence in  which  such  claims  constitute  the  issue 
they  must  be  construed  to  have  the  meaning 
which  the  patentee  intended  them  to  have. 
Latham  v.  Force  and  Parenteau,  C.  D.  1898, 
82  O.  G.  1690. 


1853.  In  an  interference  between  an  appli- 
cant and  a  patentee  in  which  the  issue  is  the 
same  claim  in  both  cases  the  applicant  will  not 
be  permitted  to  force  upon  the  issue  a  con- 
struction whereby  the  patent  will  be  rendered 
invalid  if  any  other  construction  is  practi- 
cable.    Id. 

1854.  While  there  is  no  interference  in  fact 
between  Park's  application  and  Davis's  patent, 
yet  in  view  of  the  fact  that  the  interference 
has  proceeded  to  final  hearing  and  that  Davis 
is  a  patentee  whose  patent  cannot  be  recalled 
by  the  patent  office.  Held,  that  it  is  best  not 
to  direct  that  the  interference  be  dissolved, 
but  to  award  priority  on  the  issue  in  contro- 
versy to  Park.  Park  v.  Davis,  C.  D.  1898,  84 
O.  G.  146. 

1855.  So  long  as  the  claims  of  an  applicant 
stand  rejected  they  cannot  be  placed  in  inter- 
ference with  similar  claims  of  a  patent,  al- 
though that  patent  was  granted  during  the 
pending  of  the  application.  Ex  parte  Russell, 
C.  D.  1898,  84  O.  G.  2021. 

1856.  After  reviewing  the  testimony.  Held, 
that  the  explanation  of  Dickey  as  to  delay  in 
applying  for  a  patent,  while  plausible,  was 
not  satisfactory ;  but  the  proofs  show  that  he 
was  the  first  inventor,  and  priority  awarded 
to  him  over  the  patentee,  Fleming.  *Dickey 
v.  Fleming,  C.  D.  1898,  83  O.  G.  1348. 

1857.  Where  two  applications  were  pending 
at  the  same  time  and  one  went  to  patent  hav- 
ing claims  that  the  other  did  not  contain, 
which  claims  were  subsequently  inserted  in 
the  application  remaining  in  the  office,  and 
an  interference  was  demanded  with  the  patent, 
upon  petition  from  the  examiner  requiring 
that  an  afl5davit  should  be  filed  under  Rule  94 
(2)  before  the  interference  would  be  declared, 
Held,  that  in  view  of  Rule  9fi,  which  requires 
an  examiner  to  notify  one  party  of  the  claims 
made  by  the  other,  the  patent  was  inadvertent- 
ly allowed,  and  the  applicant  should  not  be 
prejudiced  by  the  fact  that  the  examiner  over- 
looked or  ignored  Rule  96.  Ex  parte  Tizley, 
C.   D.   1899,  89  O.  G.  2259. 

1858.  Held,  further,  that  had  the  examiner 
observed  the  rule  he  would  not  have  re- 
quired an  affidavit  under  Rule  94  (2),  but 
would  have  declared  the  interference  under 
section  1  of  that  rule.  In  such  a  case  as  this 
the  second  section  of  the  rule  does  not  apply, 
and  the  interference  should  be  declared  and 
the  rights  of  the  parties  determined  on  the 
same  ground  as  if  both  were  applicants.     Id. 


INTERFERENCE,  XXXII. 


319 


1859.  A  petition  from  the  examiner's  re- 
fusal to  declare  an  interference  between  the 
apphcant's  case  and  a  patent  granted  to  an- 
other on  the  ground  that  the  claims  do  not 
conflict  dismissed,  since  the  applicant  cannot 
be  regarded  as  injured  by  the  action.  Ex 
parte  Gibboney,  C.  D.  JQOS,  10.5  O.  G.  976. 

1860.  Where  the  office  allows  the  claims 
made  by  the  applicant,  he  has  no  good  ground 
for  complaint  merely  because  he  does  not 
acquiesce  in  the  reasons  which  influence  the 
office  to  grant  his  request  for  a  patent.  He 
cannot  appeal  from  a  favorable  decision.     Id. 

1861.  Where  the  only  effect  of  a  favorable 
decision  on  a  motion  to  dissolve  would  be 
to  cast  a  cloud  on  a  patent,  such  motion  should 
not  be  transmitted.  Bellows  v.  King,  C.  D. 
1903,  105  O.  G.  997. 

1862.  Where  it  appeared  that  B.  was  a  pat- 
entee and  K.  an  applicant  for  reissue  and  K. 
having  copied  certain  claims  in  B.'s  patent 
brought  a  motion  to  dissolve  an  interference 
as  to  these  claims  on  the  ground  that  they 
were  not  patentable.  Held,  that  such  motion 
should  not  be  transmitted  to  the  primary  ex- 
aminer.    Id. 

1863.  The  real  question  which  the  oflice  de- 
sired to  determine  in  instituting  the  interfer- 
ence between  B.  and  K.  is  whether  K.  is  en- 
titled to  a  patent,  and  if  K.  on  his  own  ad- 
mission is  not  entitled  to  a  patent  the  very 
purpose  of  the  interference  fails.     Id. 

1864.  Where  the  application  of  O.  on  which 
a  patent  issued  was  copending  with  a  joint 
application  of  two  parties,  one  of  which  filed 
a  sole  application  after  the  issue  of  a  patent 
for  a  different  species  from  that  covered  by 
the  joint  application,  and  the  circumstances 
arc  such  that  the  claim  made  in  the  joint  ap- 
plication might  have  been  suggested  to  O.  and 
in  the  event  of  declaring  an  interference  there- 
on the  joint  applicants  would  have  obtained 
knowledge  of  the  pendency  of  O.'s  applica- 
tion, Held,  that  the  fact  that  such  interfer- 
ence was  not  declared  furnishes  no  foundation 
for  the  sole  applicant's  contention  that  the 
patent  was  irregularly  issued.  Quist  v.  Os- 
trom,  C.  D.  1903,  106  O.  G.  1501. 

1865.  A  distinction  must  be  made  between 
a  case  where  a  party's  patent  was  regularly 
granted  while  the  opposing  party's  application 
was  forfeited  and  a  case  where  the  patent  was 
granted  while  the  opposing  party's  application 
was  pending,  but  contained  no  claim  corre- 
sponding to  the  issue.     (Christensen  v.  Noyes, 


C.  D.  I'j'oo,  301,  90  O.  G.  223,  distinguished.) 
Lowny  v.  Spoon,  C.  D.  1904,  110  O.  G.  858. 

1866.  Where  an  applicant  who  is  in  inter- 
ference with  a  patentee  makes  a  motion  for 
dissolution  on  the  ground  that  the  issue  is 
not  patentable,  Held,  that  the  motion  will  not 
be  transmitted  to  the  examiner,  since  the  only 
effect  of  it  would  be  to  cast  a  cloud  upon  the 
patent.  Robins,  Jr.  v.  Titus  and  Titus,  C.  D. 
1904,  110  O.  G.  310. 

1867.  Where  an  interference  is  declared 
between  a  patent  and  an  application  and  the 
patentee  files  a  motion  for  dissolution  within 
the  time  fixed  by  the  rule  and  it  is  in  proper 
form.  Held,  that  the  motion  should  be  trans- 
mitted to  the  primary  examiner  for  decision. 
(Bellows  V.  King,  C.  D.  1903,  328,  106  O.  G. 
997,  distinguished.)  Fickinger  and  Blake  v. 
Hulett,  C.  D.  1904,   110  O.  G.  8.-.9. 

1868.  A  motion  for  dissolution  of  an  inter- 
ference filed  by  a  patentee  is  not  to  be  re- 
fused consideration  upon  the  suggestion  that 
it  may  cast  a  cloud  on  the  patent,  since  the 
moving  party  is  the  one  chiefly  interested  in 
that  matter.    Id. 

1869.  Where  Hallberg  is  a  patentee  and 
Hull,  an  applicant  who  has  copied  certain 
claims  from  the  patent,  brought  a  motion  to 
dissolve  the  interference  on  the  ground  that 
Hallberg  has  no  right  to  make  the  claims. 
Held,  that  the  motion  should  be  transmitted. 
Hull  V.  Hallberg,  C.  D.  1904,  110  O.  G.  1428. 

1870.  Where  an  interference  is  declared  be- 
tween a  patentee  and  an  applicant,  the  real 
question  which  the  office  desires  to  determine 
is  the  right  of  the  applicant  to  a  patent,  and 
if  that  right  appears  on  the  face  of  the  papers 
there  is  no  necessity  for  continuing  the  inter- 
ference.    Id. 

1871.  Where  an  interference  is  declared  be- 
tween a  patentee  and  an  applicant  whose  ap- 
plication is  filed  after  the  grant  of  the  patent, 
Held,  that  upon  a  motion  to  dissolve  by  the 
applicant  the  burden  will  be  upon  the  moving 
party  to  show  beyond  a  reasonable  doubt  that 
his  motion  should  prevail.     Id. 

1872.  Where  one  of  the  parties  to  an  inter- 
ference is  a  patentee  and  the  applicant  brings 
a  motion  to  dissolve  the  interference  on  the 
ground  that  the  issue  is  not  patentable.  Held. 
that  the  office  is  justified  in  accepting  the  ap- 
plicant's contention  that  his  claims  are  not 
patentable,  and  his  conduct  is  such  as  to 
estop  him  from  hereafter  insisting  upon  his 
right  to  the  claims  of  the  issue.  Robins  v. 
Titus  and  Titus,  C.  D.  1904,  111  O.  G.  584. 


320 


INTEKl'KRENCE,  XXXIII,  (a). 


1873.  Where  it  appears  that  one  of  the 
parties  to  an  interference  is  a  patentee  and 
the  applicant  brings  a  motion  to  dissolve  the 
interference  on  the  ground  that  the  issue  is 
not  patentable,  Held,  that  the  interference 
should  be  dissolved  and  the  application  re- 
manded to  the  primarj'  examiner  for  c.r  ['arte 
action.    Id. 

1874.  Where  one  of  the  parties  to  an  inter- 
ference is  a  patentee  and  the  applicant  brings 
a  motion  to  transmit  a  motion  to  dissolve  on 
the  ground  that  the  issue  is  not  patentable, 
the  examiner  of  interferences  should  refer 
the  case  to  the  commissioner,  under  Rule  l:i6, 
and  call  attention  to  the  fact  that  the  applicant 
contends  in  his  motion  that  the  issue  is  not 
patentable.  Weissenthanncr  v.  Golstein,  C. 
D.  inn4,  111  O.  G.  810. 

1875.  Where  one  of  the  parties  to  an  inter- 
ference is  a  patentee  and  the  applicant  brings 
a  motion  to  dissolve  on  the  ground  that  the 
issue  is  not  patentable,  Held,  that  the  inter- 
ference will  be  dissolved,  and  the  applicant 
will  thereafter  be  regarded  as  estopped  from 
insisting  upon  the  claims.     Id. 

1876.  Where  an  applicant  copies  claims  of 
a  patent  for  the  purpose  of  provoking  an  in- 
terference, but  when  these  claims  are  attempt- 
ed to  be  read  upon  the  construction  illustrated 
by  the  applicant  the  meaning  of  the  w'ords  has 
to  be  forced  and  constrained,  and  even  then 
it  is  impossible  to  read  them  upon  his  con- 
struction. Held,  that  such  claims  embody  new 
matter  and  are  not  patentable  to  the  appli- 
cant. Ex  parte  Dilg.  C.  D.  1904,  113  O.  G. 
547. 

1877.  Where  an  applicant  copies  the  claim 
of  a  patent  for  the  purpose  of  provoking  an 
interference.  Held,  that  if  there  is  any  doubt 
as  to  the  meaning  of  the  issue  it  shall  be  con- 
strued in  the  light  of  the  disclosure  in  the 
patent.  Funk  and  Mickcl  v.  Whitely,  C.  D. 
!!)(».-,,  114  O.  G.  471. 

1878.  Where  two  applications  are  pending 
contemporaneously  and  one  goes  to  patent. 
Held,  that  an  interference  may  be  declared 
between  the  patent  and  the  application  without 
calling  upon  the  applicant  for  an  afifidavit  as 
to  prior  invention,  under  Rule  94.  Ex  parte 
Simonds,  C.  D.  1905,  114  O.  G.  1544. 

1879.  Held,  that  an  interference  should  not 
be  declared  between  a  pending  application  and 
an  unexpired  patent  when  the  claims  corre- 
sponding to  the  proposed  issue  are  under  final 
rejection.  Ex  parte  Dukes,  C.  D.  1905,  115 
O.  G.  803. 


1880.  Where  an  applicant  adopts  a  claim 
of  a  patent  for  the  purpose  of  procuring  an 
interference,  Held,  that  the  meaning  of  the 
issue  is  to  be  determined  by  the  specification 
of  that  patent.  *Funk  et  al.  v.  Whitely,  C.  D. 
1905,  112  O.  G.  280. 

1881.  ,\  patentee  whose  patent  issues  while 
the  application  of  another  party  for  the  same 
invention  is  pending  in  the  patent  office  ac- 
quires as  against  that  other  party  no  rights 
by  the  issuance  of  the  patent.  DeFerranti  v. 
Lindmark,  C.  D.  1908,  134  O.  G.  515. 

1888.  Where  an  applicant  makes  claims 
identical  with  those  of  a  patent  and  the  ex- 
aminer holds  that  when  construed  broadly 
enough  to  read  upon  the  applicant's  device  the 
claims  are  unpatentable.  Held,  that  this  is  in 
eflfect  a  holding  that  applicant  has  no  right 
to  make  the  claims,  and  a  request  for  inter- 
ference was  properly  denied  until  the  question 
of  patentability  of  the  claims  to  him  had  been 
settled.  Ex  parte  Riddle,  C.  D.  1909,  145  O. 
G.    1021. 

1883.  A  motion  to  dissolve  alleging  that  the 
counts  have  different  meanings  in  the  two 
cases  and  that  R.  has  no  right  to  make  the 
claims.  Held,  properly  transmitted,  notwith- 
standing the  fact  that  R.  is  a  patentee.  Blood 
V.  Ross,  C.  D.  1910,  161  O.  G.  267. 

1884.  In  an  interference  involving  a  pat- 
entee and  an  applicant  a  motion  to  dissolve 
brought  by  the  applicant  and  alleging  that  if 
the  counts  be  construed  broadly  enough  to 
read  on  both  cases  they  are  unpatentable,  Held, 
properly  refused  transmission.     Id. 

XXXIII.  Priority. 

(a)  In  General. 

1885.  Although  priority  of  invention  is 
awarded  to  D.  over  F.,  yet  it  is  not  to  be 
understood  by  the  decision  in  awarding  prior- 
ity to  D.  that  he  is  entitled  to  a  patent  for 
his  invention,  for  from  the  statements  of  the 
commissioner  and  the  board  of  examiners  the 
inference  to  be  drawn  would  seem  to  be  that 
D.'s  device  is  found  to  be  wanting  in  patent- 
ability and  therefore  that  the  declaration  of 
interference  was  based  upon  mistake  or  in- 
advertence. *Dodge  V.  Fowler,  C.  D.  1898,  82 
O.  G.  595. 

1886.  Motion  to  define  the  status  of  the 
parties  as  to  seniority  in  advance  of  final 
hearing  denied.  Converse  et  al.  v.  Kerst,  C. 
D.  1898,  84  O.  G.  1146. 


INTERFERENCE,  XXXIII,  (a). 


321 


1887.  The  question  of  the  exercise  of  rea- 
sonable diligence  in  adapting  and  perfecting 
the  invention,  and  also  the  question  of  aban- 
donment, from  long-settled  practice  are  prop- 
er to  be  considered  and  determined  in  deciding 
upon  the  principal  question  of  priority  of  in- 
vention. *Christcnsen  v.  Noyes,  C.  D.  1900, 
90  O.  G.  227. 

1888.  Between  rival  inventors,  the  date  of 
the  invention  in  issue  is  fixed  at  the  time  at 
which  a  complete  and  intelligible  embodiment 
by  which  those  skilled  in  the  art  can  under- 
stand it  is  presented,  but  it  would  also  appear 
to  be  settled  that  the  date  of  an  invention  may 
be  prior  to  the  time  the  invention  is  embodied 
in  a  form  capable  of  being  patented.     *Id. 

1889.  In  an  application  for  a  patent  relating 
to  machinery,  the  invention  may  be  exhibited 
as  well  in  a  drawing  as  in  a  model,  so  as  to 
lay  the  foundation  of  a  claim  to  priority,  if 
such  drawing  be  sufficiently  plain  to  enable 
those  skilled  in  the  art  to  understand  it.     *Id. 

1890.  Where  the  appellees  were  the  first  to 
conceive  the  invention  and  were  the  first  by 
three  days  to  file  their  application.  Held,  that 
they  are  entitled  to  the  award  of  priority  of 
invention  and  the  decision  of  the  assistant 
commissioner  affirmed.  *Ostergren  et  al.  v. 
Tripler,  C.  D.  1901,  9.-)  O.  G.  837. 

1891.  Where  S.  alleges  the  earlier  dates  of 
conception  and  reduction  to  practice,  but  the 
evidence  shows  that  his  first  machines  were 
unsuccessful  and  that  he  did  not  construct  a 
satisfactory  machine  until  after  he  had  seen 
M.'s  invention.  Held,  that  the  decision  award- 
ing priority  to  M.  must  be  affirmed.  *Swihart 
v.   Mauldin.  C.   D.  1902,  99  O.  G.  2322. 

1892.  Held,  that  the  testimony  in  behalf  of 
McKnight,  the  junior  party,  fails  to  establish 
a  conception  of  the  invention  prior  to  the  date 
of  filing  of  the  application  by  Pohle  and 
Croasdale,  the  senior  party,  and  that  therefore 
priority  of  invention  should  be  awarded  to 
Pohle  and  Croasdale.  McKnight  v.  Pohle  and 
Croasdale,  C.  D.  1903,  lO.")  O.  G.  493. 

1893.  When  McKnight  alleges  a  conception 
of  a  specific  invention  prior  to  the  date  of 
filing  by  him  of  an  application  for  a  patent 
covering  the  broad  invention  and  no  mention 
of  the  specific  invention  appears  in  the  record 
of  the  application  prior  to  an  admitted  disclo- 
sure to  him  of  the  specific  invention  by  the 
opposing  parties  when  an  amendment  is  filed 
by  him  relating  to  the  specific  invention.  Held. 
that  these  circumstances  are  alone  sufficient, 
unless   explained,    to   warrant    the   conclusion 

21 


that   McKnight  never   independently   invented 
the  specific  invention  of  the  issue.     Id. 

1894.  Held,  that  the  junior  party,  Harris, 
has  failed  to  show  a  conception  of  the  inven- 
tion before  his  opponent's  filing  date  and  that 
priority  of  invention  was  properly  awarded  to 
Stern  and  Lotz.  *Harris  v.  Stern  and  Lotz, 
C.  D.  1903,  lOf)  O.  G.  746. 

1895.  Where  neither  party  proves  actual 
reduction  to  practice  of  the  invention,  but  the 
junior  party.  Greenwood,  was  the  first  to  con- 
ceive the  invention  and  disclose  it  to  the 
senior  party  before  his  application  was  filed. 
Held,  that  the  junior  party  must  be  regarded 
as  the  first  inventor.  *Greenwood  v.  Dover, 
C.  D.  1904,  109  O.  G.  2172. 

1896.  Where  T.  admits  that  he  did  not  con- 
ceive the  invention  in  issue  until  after  he  had 
seen  D.'s  invention  as  disclosed  in  D.'s  appli- 
cation. Held,  that  T.  cannot  be  adjudged  the 
prior  inventor  upon  the  contention  that  D.'s 
application  does  not  disclose  the  issue.  The 
contention,  if  sound,  warrants  dissolution,  not 
judgment.  Jenner  v.  Dickinson  v.  Thibodran, 
C.  D.  190.5,  116  O.  G.  1181. 

1897.  If  party  cannot  establish  priority  of 
invention  over  opponent,  he  is  not  entitled  to 
patent,  and  whether  the  opponent  is  entitled 
to  one  is  question  for  ex  parte  considera- 
tion by  the  office.  Id.  Gurneiffet,  Benoit  and 
Nicault  V.  Wictorsohn,  117  O.  G.  1492. 

1898.  Where  the  testimony  of  the  witnesses 
on  the  part  of  Bliss  was  given  long  after  the 
event  and  is  by  no  means  satisfactory.  Held, 
that  priority  should  be  awarded  to  McElroy. 
Bliss  V.  McElroy,  C.  D.  1906,  122  O.  G.  2687. 

1899.  While  the  award  of  priority  by  the 
examiner  of  interferences  is  ordinarily  a 
ground  for  rejecting  claims  of  the  unsuccess- 
ful party  by  the  primary  examiner,  it  is  a 
different  question  from  that  of  the  patenta- 
bility of  the  claims,  requires  the  consideration 
of  entirely  different  subject-matter,  and  gives 
rise  to  a  different  class  of  appeals.  Cheney  v. 
Venn,  C.  D.  1906,  12.5  O.  G.  1703. 

1900.  Where  the  examiner  of  interferences 
awarded  priority  of  invention  to  one  party  on 
the  ground  that  the  application  of  his  oppo- 
nent fails  to  show  an  operative  device.  Held. 
that  the  operativeness  of  an  applicant's  de- 
vice affects  his  right  to  make  the  claim  and 
that  the  action  of  the  examiner  of  interfer- 
ences was  in  accord  with  the  rules  and  deci- 
sions. Greenawalt  v.  Mark,  C.  D.  1907,  126 
O.  G.  1063. 


322 


INTERFERENCE,   XXXIII,    (b). 


1901.  The  decision  of  the  examiner  of  in- 
terferences is  not  a  rejection  of  the  claims 
under  section  4903.  Revised  Statutes,  although 
it  may  form  a  basis  for  such  rejection  by  the 
primary  examiner  under  Rule  132.     Id. 

1902.  Where  neither  the  testimony  presented 
by  S.  nor  that  offered  in  behalf  of  D.  satis- 
factorily establishes  conception  of  the  inven- 
tion in  issue,  Held,  that  each  party  must  be 
restricted  to  the  date  of  filing  of  his  applica- 
tion for  conception  and  constructive  reduc- 
tion to  practice,  and  since  D.  was  the  first  to 
file,  priority  of  invention  must  be  awarded  to 
him.  Sherwood  v.  Drewsen,  C.  D.  1907,  130 
O.  G.  657. 

1903.  Appellants  built  in  a  foreign  country 
a  machine  embodying  the  invention  in  issue, 
which  was  explained  to  an  agent  who  came  to 
this  country.  Held,  that  even  if  this  agent 
remembered  what  was  explained  to  him  such 
knowledge  on  his  part,  in  the  absence  of  dis- 
closure to  others  or  reduction  to  practice  by 
himself  within  a  reasonable  time,  would  not 
be  equivalent  to  an  introduction  of  the  inven- 
tion into  this  country.  *Gueniffet,  Benoit, 
and  Nicault  v.  Wictorsohn,  C.  D.  1908,  134 
O.  G.  779. 

1904.  No  appeal  lies  from  a  favorable  deci- 
sion of  the  examiner  of  interferences  upon  the 
sufficiency  of  the  showing  in  support  of  a  mo- 
tion to  take  testimony  on  the  question  of  the 
operativeness  of  another  party's  device.  Mar- 
tin v.  Goodrum  v.  Dyson  v.  Lattig  and  Good- 
rum,  C.  D.  1908,  134  O.  G.  1297. 

1905.  Where  in  an  intsrference  between  sev- 
eral parties  the  preliminary  statement  of  the 
junior  party  fails  to  overcome  the  filing  date 
of  the  senior  party,  but  does  overcome  the 
filing  date  of  an  intermediate  party,  and  such 
junior  party  raises  the  question  of  the  opera- 
tiveness of  the  senior  party's  device  and  is 
entitled  to  argue  such  a  question  at  final  hear- 
ing. Held,  that  it  is  proper  to  assign  such 
junior  party  time  to  take  testimony  on  the 
question  of  priority  and  also,  upon  sufficient 
showing,  upon  the  question  of  the  operative- 
ness of  the  senior  party's  device.  All  ques- 
tions relating  to  priority  should  be  tried  out 
in  one  proceeding  and  not  piecemeal.     Id. 

1906.  Where  one  of  the  parties  to  an  inter- 
ference added  the  claims  in  issue  by  amend- 
ment without  a  supplemental  oath,  the  court 
of  appeals  would  not  be  justified  in  awarding 
priority  to  the  opposing  party  because  of  such 
failure.  The  most  that  the  court  could  do 
under  the  circumstances  would  be  to  remand 


the  proceeding,  in  order  that  a  supplemental 
oath  may  be  made  and  the  matter  renewed. 
♦Phillips  V.  Sensenich,  C.  D.  1908,  134  O.  G. 
1806. 

1907.  Where  the  evidence  fails  to  show  any 
activity  on  the  part  of  S.  from  July,  1903,  to 
December,  1906,  when  he  filed  his  application, 
and  in  the  meantime  C.  enters  the  field 
and  gives  the  public  the  benefit  of  his 
discovery  by  manufacturing  several  hun- 
dred devices  embodying  the  invention,  in 
order  to  prevail  S.  must  prove  his  case  beyond 
a  reasonable  doubt.  (Warner  v.  Smith,  C. 
D.  1898,  .517,  84  O.  G.  311,  13  App.  D.  C. 
111.)  »Schmidt  V.  Clark,  C.  D.  1909,  138  O. 
G.  768. 

1908.  A  would-be  inventor  frequently  has  a 
nebulous  and  general  idea  of  a  result  which 
he  wishes  to  accomplish  and  possibly  a  gen- 
eral idea  of  means  to  accomplish  that  result, 
but,  being  unable  to  give  his  ideas  practical 
form,  allows  them  to  slumber.  Upon  learning 
that  another  has  successfully  worked  out  such 
ideas  the  mists  of  uncertainty  are  immediate- 
ly dissipated,  vagueness  takes  definite  form, 
and  the  would-be  inventor  becomes  in  his  own 
mind  the  actual  inventor  and  acts  accordingly. 
The  danger  and  opportunity  for  fraud  or  mis- 
take in  such  cases  are  so  great  that  the  proof 
should  be  very  clear  and  very  convincing  to 
warrant  an  award  to  the  dilatory  party.    *Id. 

(b)  Foreign  Patents. 

1909.  Appert  took  no  testimony,  but  relied 
upon  a  French  patent  dated  October  19,  1893, 
which  was  issued  and  published  on  January 
12,  1894.  Schmertz  proved  conception  on 
January  10,  1894,  and  reduction  to  practice  on 
January  17,  1894.  Held,  that  Appert's  date 
of  invention  is  January  12,  1894,  the  date  of 
the  publication  of  his  foreign  patent,  and 
as  there  was  no  delay  on  Schmertz's  part  be- 
tween the  date  of  his  conception  and  the  date 
of  his  reduction  to  practice  priority  is  awarded 
to  Schmertz.  Schmertz  v.  Appert,  C.  D.  1898, 
83  O.  G.  1511. 

1910.  It  is  the  settled  rule  of  the  office  that 
it  is  the  date  of  the  publication  of  the  foreign 
patent  and  not  the  date  of  the  application 
therefor  that  controls  in  interference  proceed- 
ings. (De  Ferranti  v.  Westinghouse,  Jr.,  C. 
D.  1890,  114,  52  O.  G.  457;  Appert  v.  Parker, 
C.  D.  1896,  5,  74  O.  G.  1587.)  This  is  also  the 
rule  of  the  courts.  (Am.  Bell  Telephone  Co. 
V.  Cushman  et  al.,  C.  D.  1893,  546,  65  O.  G. 


INTERFERENCE,  XXXIII,  (b). 


323 


135.)  The  case  of  Hanifen  v.  Godshalk  (C. 
D.  1897,  375,  79  O.  G.  510)  seems  to  hold  the 
contrary;  but  the  weight  of  authority  is  clear- 
ly as  first  above  stated.     Id. 

1911.  Held,  that  Triplcr  did  not  invent  the 
process  and  apparatus  for  liquefying  air  until 
after  Linde  had  obtained  a  foreign  patent 
upon  it  in  June,  1895,  and  therefore  priority 
awarded  to  Linde.  Tripler  v.  Linde,  C.  D. 
1902,  101  O.  G.  2288. 

1912.  The  popular  belief  that  Tripler  was 
the  first  to  make  liquid  air  is  entitled  to  no 
weight  in  this  proceedings,  since  it  is  based 
upon  what  was  done  by  Tripler  after  Linde 
had  obtained  a  foreign  patent  on  the  inven- 
tion.   Id. 

1913.  Where  the  subject-matter  of  T.'s 
earlier  application  had  been  patented  by  him 
abroad  and  in  his  oath  to  his  present  appli- 
cation he  alleged  that  he  had  obtained  no  for- 
eign patent  upon  the  present  invention,  Held, 
that  this  shows  that  T.  did  not  regard  the  two 
as  the  same  and  that  the  claim  that  the  foreign 
patent  discloses  the  invention  was  an  after- 
thought.    Id. 

1914.  Where  B.  establishes  a  conception  of 
the  invention  of  the  issue  on  April  24,  1900,  a 
reduction  to  practice  on  July  24,  1900,  and 
it  appears  that  he  was  diligent  in  reducing  the 
invention  to  practice,  and  R.  rests  his  case  on 
a  French  patent  granted  to  him  July  18,  1900, 
on  an  application  filed  April  2,  1900,  Held,  that 

B.  is  the  prior  inventor.     Rousseau  v.  Brown, 

C.  D.  1903,  103  O.  G.  659. 

1915.  Where  the  application  in  this  coun- 
try was  filed  more  than  twelve  months  after 
the  application  abroad,  Held,  that  the  appli- 
cant cannot  in  interference  obtain  the  benefit 
of  his  foreign  filing  date  under  section  4887, 
Revised  Statutes,  as  amended.  Muller  v.  Lau- 
ber,  C.  D.  1903,  106  O.  G.  2016. 

1916.  The  second  clause  of  section  4887 
does  not  merely  establish  a  new  rule  of  evi- 
dence, but  confers  upon  applicants  a  distinct 
right  which  they  did  not  possess  before,  and 
therefore  it  is  not  to  be  given  a  retroactive 
effect.     Id. 

1917.  The  amendment  to  section  4887  does 
not  enable  the  applicant  to  prove  the  filing 
of  his  foreign  application  by  evidence  of  a 
different  character,  but  attaches  a  different 
legal  effect  to  the  act  itself.  To  give  it  a  ret- 
roactive effect  might  disturb  vested  rights. 
Id. 

1918.  Since  the  office  is  not  final  in  interfer- 
ences and  since  no  court  has  ruled  upon  the 


question  whether  section  4887,  Revised  Stat- 
utes, as  amended  March  3,  1903,  is  retroactive, 
the  office  should  not  exclude  evidence  under 
that  section,  because,  in  its  opinion,  the  amend- 
ment to  the  law  does  not  apply  to  cases  filed 
before  its  passage.     Id. 

1919.  Where  a  party  whose  application  was 
filed  before  the  act  of  March  3,  1903,  amend- 
ing section  4887,  Revised  Statutes,  moves  to 
take  testimony  in  England  to  prove  the  filing 
of  an  English  application  within  one  year  be- 
fore his  application  here,  Held,  that  the  mo- 
tion should  be  granted,  so  that  he  may,  if  de- 
sired, contest  the  question  as  to  the  compe- 
tency of  the  evidence  by  appeal  to  the  court 
of  appeals.     Id. 

1920.  The  second  clause  of  section  4887, 
Revised  Statutes,  conferring  upon  applicants 
the  benefit  of  the  date  of  foreign  applications 
filed  within  twelve  months  before  the  appli- 
cation here,  applies  only  to  applications  filed 
after  the  amendment  of  March  3,  1903.  Stiff 
v.  Galbraith,  C.  D.  1903,  107  O.  G.  2532. 

1921.  Where  the  date  and  contents  of  a 
foreign  patent  are  proved,  the  burden  is  upon 
the  party  against  whom  it  is  used  to  show  that 
it  was  not  published  or  open  to  public  inspec- 
tion on  the  date  which  it  bears.  Robin  v. 
Muller  and  Bonnet,  C.  D.  1904,  113  O.  G.  2506. 

1922.  Where  the  senior  party  moves  for 
judgment  on  the  record  and  his  record  date 
is  prior  to  the  date  of  introduction  of  the  in- 
vention into  this  country  set  up  in  the  pre- 
liminary statement  of  his  opponent.  Held,  that 
judgment  will  not  be  delayed  solely  that  the 
junior  party  may  take  testimony  concerning 
a  foreign  application  which  in  the  opinion  of 
the  office  cannot  affect  the  result.  Brown  v. 
Lindmark,  C.  D.  1904,  109  O.  G.  1071. 

- 1923.  Where  B.'s  preliminary  statement  goes 
back  of  L.'s  record  date  only  by  reference  to 
foreign  applications  and  B.'s  domestic  ap- 
plication was  filed  prior  to  the  act  of  March 
3,  1903,  Held,  that  judgment  will  not  be  de- 
layed solely  that  B.  may  take  testimony  con- 
cerning the  foreign  applications.  Stiff  v.  Gal- 
braith, C.  D.  1903,  515,  107  O.  G.  2532,  dis- 
tinguished.    Id. 

1924.  Where  the  proofs  of  the  junior  party 
to  an  interference  are  insufficient  to  overcome 
the  date  of  a  foreign  patent  granted  to  the 
senior  party,  the  question  whether  a  foreign 
patent  granted  to  such  senior  party  stands  as 
a  bar  to  the  allowance  of  his  United  States  ap- 
plication will  be  left  for  ex  parte  considera- 
tion after  the  termination  of  the  interference 


324 


INTERFERENCE,  XXXIII,  (c),  (d). 


Gueniffet,  Benoit,  and  Nicault  v.  Wictorsohn, 
C.  D.   1907,  131  O.  G.  1685. 

1925.  W.  obtained  a  French  patent  on  Sep- 
tember 25,  1900.  The  earliest  foreign  filing 
date  of  the  opposing  party  was  subsequent  to 
this  date,  and  the  evidence  did  not  establish 
an  introduction  into  this  country  by  said  party 
prior  thereto.  Held,  that  priority  of  invention 
was  properly  awarded  to  W.  *Gueniffet,  Be- 
noit, and  Nicault  v.  Wictorsohn,  C.  D.  1908, 
134  O.  G.  779. 

(c)  Foreign  Applications. 

1926.  The  international  convention  for  the 
protection  of  industrial  property  is  not  ef- 
fective to  give  to  an  applicant  in  this  coun- 
try the  benefit  of  priority  from  the  date  of 
his  foreign  application.  Butterworth  v.  Boral 
and  Kymer  v.  Ecob,  C.  D.  1901,  193,  97  O.  G. 
1596.  Rousseau  v.  Brown,  C.  D.  1903,  103  O. 
G.  659. 

1927.  Held,  that  the  testimony  on  behalf 
of  Tripler  fails  to  show  that  he  made  the  in- 
vention in  liquefying  air  prior  to  the  date 
of  this  application,  and  since  Linde  had  filed 
his  application  before  that  time  Linde  is  the 
first  inventor.  Decision  of  commissioner  of 
patents  (C.  D.  1902,  444,  101  O.  G.  2288)  af- 
firmed. *Tripler  v.  Linde,  C.  D.  1903,  102  O. 
G.   1207. 

1928.  Where  in  the  oath  to  his  application 
Tripler  alleged  that  he  had  obtained  no  for- 
eign patents  upon  the  invention  and  in  the 
interference  he  subsequently  claimed  that  an 
English  patent  granted  to  him  is  for  that  in- 
vention. Held,  that  the  claim  is  an  after- 
thought and  cannot  be  maintained  without  an 
admission  of  deliberate  fraud  and  wilful  per- 
jury.   *Id. 

1929.  Lender  the  second  clause  of  section 
4887  of  the  Revised  Statutes  as  amended 
March  3,  1903,  an  application  for  patent  in  the 
United  States  is  not  entitled  to  the  date  of 
an  application  filed  by  the  applicant  in  a  for- 
eign country  prior  to  March  3,  1903,  although 
the  United  States  application  was  filed  after 
this  date.  De  Ferranti  v.  Lindmark,  C.  D. 
1007,   129  O.   G.   1610. 

1930.  Since  both  France  and  the  United 
States  had  adhered  to  the  international  con- 
vention for  the  protection  of  industrial  prop- 
erty. Held,  priority  was  properly  awarded  to 
L.  when  it  appeared  that  his  French  applica- 
tion was  filed  prior  to  any  date  which  could  be 
awarded  to  W.  Latour  v.  Winter  and  Eich- 
berg,  C.  D.  1910,  156  O.  G.  537. 


1931.  Subsequently  to  the  adherence  of 
France  and  the  United  States  to  the  interna- 
tional convention  for  the  protection  of  indus- 
trial property  and  less  than  twelve  months 
prior  to  the  filing  of  his  application  involved 
in  interference  L.  had  filed  an  application  for 
patent  for  the  same  invention  in  France. 
Held,  that  in  the  absence  of  proof  that  France 
did  not  "afford  the  same  privileges  to  citizens 
of  the  L'nited  States  in  the  sense  contemplated 
by  section  4887,  R.  S.,"  L.  was  entitled  to 
the  benefit  of  the  date  of  filing  his  French  ap- 
plication. *Winter  and  Eichberg  v.  Latour, 
C.  D.  1910,  157  O.  G.  209. 

1932.  W.,  who  filed  an  application  for  pat- 
ent in  this  country  on  March  7,  1903,  had  filed 
an  application  for  patent  for  the  same  inven- 
tion in  Germany  on  January  14,  1903.  Ger- 
many did  not  adhere  to  the  international  con- 
vention for  the  protection  of  industrial  prop- 
erty till  May  1,  1903.  Held,  that  W.  is  not 
entitled  to  the  filing  date  of  his  German  appli- 
cation as  a  date  of  constructive  reduction  to 
practice.    *Id. 

1933.  Where  it  was  contended  that  inasmuch 
as  Dicke's  German  application  subsequently 
became  abandoned  it  cannot  avail  Dicke  as  a 
constructive  reduction  to  practice,  Held,  "We 
perceive  no  reason  why  Dicke's  German  appli- 
cation, being  substantially  identical  with  the 
present  application,  should  not  be  held  under 
the  statute  to  constitute  a  constructive  reduc- 
tion to  practice,  since  had  it  been  filed  here  it 
would  have  entitled  him  to  a  patent."  ♦Whit- 
man v.  Hearnc  et  al.,  C.  D.  1910,  156  O.  G. 
1068. 

1934.  L..  the  senior  party,  field,  entitled  to 
an  award  of  priority,  since  neither  the  prior 
application  relied  upon  by  C.  nor  the  British 
application  of  De  F.  discloses  the  invention 
in  issue.  Antis  v.  De  Ferranti  v.  Lindmark, 
C.  D.  1911,  171  O.  G.  215. 

(d)  Prior  Conception  and  Reduction. 

1935.  Held,  that  the  evidence  establishes  the 
fact  that  Fullman  reduced  the  invention  to 
practice  before  Herman's  date  of  conception 
and  reduction  to  practice,  and  therefore  the 
decision  awarding  priority  of  invention  to 
Fullman  must  be  affirmed.  *Herman  v.  Full- 
man,  C.  D.  1904,  109  O.  G.  288. 

1936.  Held,  that  the  testimony  shows  that 
Dean  was  the  first  to  conceive  the  invention, 
and  since  he  was  the  first  to  reduce  to  prac- 
tice by  filing  his  application  he  is  to  be  re- 


INTERFERENCE,  XXXIII,  (e),  1. 


335 


garded  as  the  first  inventor.    Furman  v.  Dean, 
C.  D.  1904,  111  O.  G.  1366. 

1937.  Held,  that  as  the  testimony  presented 
by  L.  fails  to  establish  that  he  had  a  concep- 
tion of  the  invention  prior  to  the  date  on 
which  H.  filed  his  application,  H.  is  entitled 
to  the  award  of  priority  of  invention.  Lavery 
V.  Heene,  C.  D.  1905,  115  O.  G.  801. 

1938.  Held,  that  H.  should  be  awarded  pri- 
ority of  invention  as  he  is  not  only  the  first  to 
reduce  the  invention  to  practice,  but  also  the 
first  to  conceive.  Id. 

1939.  Held,  that  the  appellee  Voight  had 
conceived  and  disclosed  the  invention  and  re- 
duced it  to  practice  by  May  6,  1902,  whereas 
there  is  no  satisfactory  proof  in  the  record 
that  at  any  time  before  May  26,  1902,  the  ap- 
pellant Hope  had  a  conception  of  the  inven- 
tion. The  decision  appealed  from  awarding 
priority  of  invention  to  Voight  affirmed. 
♦Hope,  Jr.  V.  Voight,  C.  D.  1905,  115  O.  G. 
1585. 

1940.  Where  Dickinson  made  and  used  his 
machine  before  Thibodeau's  date  of  concep- 
tion and  that  machine  operated  successfully, 
although  it  was  not  so  perfect  as  Thibodeau's 
machine,  Held  that  Dickinson  is  the  first  in- 
ventor. *Jenner  v.  Dickinson,  C.  D.  1905,  117 
O.  G.  600. 

1941.  Held,  that  Wageley  and  Stocke  are 
original  inventors  and  that  they  reduced  the 
invention  to  practice  before  any  date  which 
can  be  awarded  Schroeder  for  conception. 
Sehroeder  v.  Wageley  and  Stocke,  C.  D.  1905, 
118  O.  G.  268. 

1942.  Where  it  is  established  that  W.  was 
the  first  to  conceive  and  the  first  to  reduce 
to  practice,  Held,  that  he  is  the  prior  inventor. 
Funk  and  Mickle  v.  Whitely,  C.  D.  1905,  114 
O.  G.  971. 

1943.  Where  first  tangible  evidence  of  con- 
ception by  F.  was  dated  August,  1901,  and 
reduction  to  practice  by  F.  prior  to  his  ap- 
plication date  of  July  18,  1902,  was  not  es- 
tablished, and  where  M.'s  application  was  filed 
January  24,  1902,  and  M.  has  established  con- 
ception as  early  as  May,  1901,  Held,  that  pri- 
ority of  invention  must  be  awarded  to  M.  as 
the  first  to  reduce  to  practice  and  the  first  to 
conceive  the  invention.  Fowler  v.  McBerty, 
C.  D.  1905,  118  O.  G.  2535. 

1944.  Where  Fowler  is  limited  by  his  pre- 
liminary statement  to  a  disclosure  and  reduc- 
tion to  practice  subsequent  to  Boyce's  record 
date,  Held,  that  priority  should  be  awarded 


to  Boyce.     *Fowler  v.  Boyce,  C.  D.  1906,  121 
O.  G.   1014. 

1945.  Held,  that  the  appellant  had  not  dis- 
charged the  burden  upon  him  of  satisfactorily 
establishing  conception  of  his  invention  prior 
to  the  filing  of  the  appellee's  application  and 
that  the  decision  appealed  from  should  be  af- 
firmed. *Ball  V.  Flora,  C.  D.  1900,  121  O.  G. 
2608. 

1946.  The  evidence  considered  and  Held,  to 
establish  that  Mclntyre,  who  was  the  last  to 
conceive  the  invention  in  issue,  did  not  re- 
duce the  same  to  practice  prior  to  Perry's 
filing  date  and  that  the  latter  was  therefore 
entitled  to  an  award  of  priority.  Mclntyre 
v.  Perry,  C.  D.  1911,  170  O.  G.  703. 

(e)  Questionable  Diligence. 
1.  In  General. 

1947.  The  question  of  diligence  cannot  be 
determined  by  any  general  rule  applicable  to 
all  cases,  but  necessarily  depends  upon  the 
special  circumstances  of  each  case  as  it  arises. 
♦McCormick  v.  Cleal,  C.  D.  1898,  83  O.  G. 
1514. 

1948.  There  is  no  general  rule  of  what  con- 
stitutes due  diligence,  that  being  a  question 
to  be  determined  by  all  the  facts  and  sur- 
rounding circumstances  in  the  particular  case. 
Kasson  v.  Hetherington,  C.  D.  1899,  88  O.  G. 
1157. 

1949.  No  hard  and  fast  rule  can  be  laid 
down  as  to  what  constitutes  diligence.  What 
is  or  is  not  diligence  in  a  given  case  must 
depend  upon  its  special  facts  and  circum- 
stances. Some  indulgence  is  generally  ex- 
tended to  an  inventor  who  is  engaged  in  a 
bona  fide  attempt  to  perfect  his  invention. 
(McCormick  v.  Cleal,  C.  D.  1898,  492,  83  O.  G. 
1514,  cited.)  *De  Wallace  v.  Scott  et  al.,  C. 
D.  1899,  88  O.  G.  1704. 

1950.  The  diligence  required  of  an  inventor 
is  diligence  rather  in  the  reduction  of  his  in- 
vention to  practice  than  in  application  to  the 
patent  office  or  in  manufacturing  his  device 
for  public  use.  *01iver  v.  Felbel,  C.  D.  1902, 
100  O.  G.  2384. 

1951.  By  a  reduction  to  practice  a  party's 
rights  are  protected,  and  it  is  not  necessary 
thereafter  to  use  the  same  amount  of  diligence 
in  putting  the  invention  upon  the  market  as  is 
necessary  in  a  reduction  to  practice  by  one 
first  to  conceive  but  the  last  to  reduce  to 
practice.  Felbel  v.  Oliver,  C.  D.  1902,  100  O. 
G.  2175. 


326 


INTERFERENCE,  XXXIII.   (e),  2,  3. 


1952.  When  reduction  to  practice  by  the 
first  inventor  is  shown,  his  right  to  a  patent  is 
not  barred  by  delay  thereafter  unless  there  be 
some  circumstance  of  concealment,  suppres- 
sion, or  abandonment  of  the  invention.  Oli- 
ver V.  Felbel,  C.  D.  1902,  100  O.  G.  2384. 

1953.  There  is  no  hard  and  fast  rule  by 
which  to  determine  the  question  of  due  dili- 
gence. In  other  words,  there  is  no  general 
rule  of  what  constitutes  due  diligence,  that 
being  a  question  to  be  determined  by  all  the 
facts  and  surrounding  circumstances  in  the 
particular  case.  *0'Connell  v.  Schmidt,  C. 
D.   1906,  122  O.  G.  2065. 

2.  In  Filing  Application. 

1954.  It  is  greatly  to  the  interest  of  the  pub- 
lic that  long  delay  unexplained  between  the 
time  of  the  alleged  invention  and  the  applica- 
tion for  patent  when  other  inventors  have  en- 
tered the  same  field  and  other  rights  have  ac- 
crued should  be  held  to  bar  stale  claims  of 
priority.  (Mason  v.  Hepburn,  C.  D.  1898,  510, 
84  O.  G.  147;  Warner  v.  Smith,  C.  D.  1898, 
517,  84  O.  G.  311.)  *Fefel  v.  Stocker,  C.  D. 
1901,  94  O.  G.  433. 

1955.  Inventors  striving  honestly,  in  good 
faith,  and  with  due  diligence  to  perfect  their 
inventions,  instead  of  engaging  in  a  race  of 
diligence  to  reach  the  patent  office  with  crude 
and  probably  inoperative  devices,  should  be 
commended  for  their  delay  rather  than  be 
charged  with  laches ;  but  there  is  sometimes 
a  tendency  to  hold  back  applications  for  pat- 
ents in  order  to  circumvent  rival  claimants 
and  to  prolong  the  life  of  the  monopolies  pre- 
viously granted,  which  tendency  should  be  re- 
buked whenever  it  is  possible  to  do  so.    *Id. 

1956.  Where  for  a  period  of  more  than  two 
years  L.  knew  that  the  device  was  being  man- 
ufactured and  sold  by  A.,  and  that  A.  was 
involved  in  a  controversy  with  another  party 
in  regard  to  the  rights  to  the  invention,  but 
during  all  of  that  time  L.  failed  to  assert  his 
right  to  the  invention.  Held,  that  this  course  of 
inaction  is  not  in  accordance  with  the  ordi- 
nary rules  that  govern  human  conduct  ♦Lloyd 
v.  Antisdel,  C.  D.  1901,  95  O.  G.  1645. 

1957.  Unexplained  delay  in  applying  for  a 
patent  is  a  circumstance  of  considerable  sig- 
nificance when  considered  in  connection  with 
other  circumstances  tending  to  discredit  the 
applicant's  claims.  *Sendelbach  v.  Gillette, 
C  D.  1904,  109  O.  G.  276. 

1958.  Where  R.  did  not  file  an  application 
for  a  patent  disclosing  the  combination  of  ele- 


ments set  forth  in  the  issue  until  nearly  two 
years  after  the  date  of  his  alleged  actual  re- 
duction to  practice,  but  during  that  two  years 
filed  an  application  for  a  patent  for  an  inven- 
tion which  lacks  one  of  the  most  essential 
elements  of  the  combination.  Held,  that  the 
fact  that  this  essential  element  was  not  dis- 
closed in  the  application  which  he  first  filed 
is  very  significant  if  he  had,  in  fact,  succeeded 
in  reducing  the  invention  to  practice,  as  al- 
leged. Robinson  v.  Seelinger,  C.  D.  1905,  114 
O.  G.  262. 

1959.  Where  an  allegation  is  made  of  an 
actual  reduction  to  practice  and  it  is  shown 
by  the  record  that  an  application  was  subse- 
quently filed,  the  disclosure  of  which  lacked 
one  of  the  most  essential  elements  of  the 
issue,  and  that  the  application  involved  in  this 
interference,  which  discloses  all  the  elements 
of  the  issue,  was  not  filed  until  eighteen  months 
after  the  first  application  and  twenty-three 
months  after  the  date  of  alleged  reduction  to 
practice.  Held,  that  the  testimony  which  is 
presented  to  establish  the  actual  reduction  to 
practice  should  be  examined  with  care.    Id. 

1960.  Where  Jenner  claims  to  have  con- 
ceived the  invention  in  1809,  but  the  testimony 
on  his  behalf  is  full  of  inconsistencies  and  con- 
tradictions, and  it  appears  that  he  waited 
three  years  before  filing  his  application  and 
during  that  time  kept  his  machine  concealed 
under  a  heap  of  rubbish,  although  there  was 
a  demand  in  the  trade  for  such  an  invention, 
Held,  that  he  has  not  established  his  case. 
•Jenner  v.  Dickinson,  C.  D.  1905,  117  O.  G. 
600. 

1961.  Where  Jenner  saw  a  notice  of  Dickin- 
son's invention  in  1900  and  did  not  file  his 
own  application  for  patent  until  he  was  in- 
duced to  do  so  by  Hildreth  in  1902,  Held, 
that  no  value  can  be  attached  to  testimony  on 
his  behalf  that  he  made  the  invention  in  1899. 
*Id. 

1962.  The  inventor  is  entitled  to  a  reason- 
able time  to  perfect  his  invention  before  ap- 
plying for  a  patent,  and  what  is  a  reasonable 
time  is  dependent  upon  the  circumstances  of 
the  particular  case.  *Mead  v.  Davis  and  Var- 
ney,  C.  D.  1908,  136  O.  G.  2001. 

3.  In   Reduction  to  Practice. 

1963.  The  burden  of  proof  is  not  only  upon 
a  junior  applicant  to  show  priority  of  inven- 
tion, but  he  must  also  show  that  he  has  used 
reasonable   diligence   in    developing   and   per- 


INTERFERENCE,  XXXIII,  (e),  3. 


327 


fecting  his  invention,  for  in  such  cases  mere 
conception  without  actual  reduction  to  prac- 
tice within  a  reasonable  time  amounts  to 
nothing.  *Hunter  v.  Stikeman,  C.  D.  1898, 
85  O.  G.  610. 

1964.  While  circumstances  such  as  poverty, 
sickness,  etc.,  tend  to  excuse  delay  in  reducing 
an  invention  to  practice,  they  will  not  justify 
indefinite  postponement  of  action  for  a  period 
of  years,  for  to  allow  them  to  have  that  ef- 
fect would  be  in  many  cases  to  close  entirely 
the  field  of  invention  against  competition  and 
to  nullify  the  purposes  of  the  patent  law. 
*Griffin  V.  Swenson,  C.  D.  1899,  89  O.  G.  919. 

1965.  Where  an  inventor  interested  a  third 
party  to  co-operate  with  him  in  exploiting  and 
testing  an  invention  and  procuring  a  patent 
therefor,  but  without  any  steps  whatever  being 
taken  toward  the  object  in  view  beyond  the 
mere  determination  to  have  the  invention 
tested  at  some  time.  Held,  that  such  unde- 
veloped intentions  unaccompanied  by  any  ac- 
tion cannot  be  held  to  be  due  diligence  on  the 
part  of  the  inventor.    *Id. 

1966.  Neither  the  delay  that  is  proper  in  one 
case  nor  the  diligence  that  is  due  in  the 
other  can  in  the  absence  of  any  statutory  lim- 
itation of  time  in  this  regard  be  measured  by 
any  arbitrary  standard.  It  has  been  repeated- 
ly held  that  the  question  of  due  diligence  is 
one  to  be  determined  in  each  case  by  its  own 
circumstances.     *Id. 

1967.  While  less  harm  is  done  and  the  pol- 
icy of  the  law  better  promoted  by  a  rigid 
insistence  upon  the  requirement  of  diligence 
than  by  laxity  in  the  encouragement  of  delay, 
it  does  not  seem  that  the  rule  of  diligence 
should  be  pushed  to  a  harsh  and  unreasonable 
extent.  What  the  law  requires  is  reasonable, 
not  extraordinary,  activity.    *Id. 

1968.  For  the  reasons  assigned  the  commis- 
sioner's decision,  cause  No.  116  (65  MS.  Dec, 
196),  affirmed  and  judgment  of  priority  of 
invention  awarded  to  appellee ;  but  his  deci- 
sion in  cause  No.  117  (56  MS.  Dec,  191),  re- 
versed and  judgment  of  priority  awarded  to 
appellant.    *Id. 

1969.  Prior  conception  without  prior  re- 
duction to  practice  will  not  avail  unless  there 
has  been  diligence  in  the  elaboration  of  the 
idea  looking  toward  reduction  to  practice. 
♦Silverman  v.  Hendrickson,  C.  D.  1902,  99 
O.  G.  1171. 

1970.  The  allegation  on  behalf  of  S.  that 
he   reduced   the   invention   to   practice   in   the 


summer   of   1897   does   not   show   that  he   re- 
duced it  to  practice  before  June  9.    *Id. 

1971.  The  diligence  or  lack  of  diligence  on 
the  part  of  the  first  to  reduce  to  practice  is 
immaterial,  since  he  is  prima  facie  the  first  in- 
ventor. His  right  to  a  patent  can  be  overcome 
only  by  showing  prior  conception  connected 
with  reduction  to  practice  by  diligence.  Paul 
V.  Johnson,  C.  D.  1903,  106  O.  G.  2013. 

1972.  Where  sickness  is  alleged  as  the  ex- 
cuse for  delay  in  reducing  to  practice  or  filing 
an  application.  Held,  that  it  must  constitute 
a  continued  disability  such  as  would  excuse 
diligence  during  the  entire  period  when  dili- 
gence was  required  to  be  exercised.    *Id. 

1973.  Where  neither  party  actually  reduced 
the  invention  to  practice,  Held,  that  the  senior 
party,  being  the  first  to  conceive,  is  entitled 
to  the  award  of  priority  of  invention.  *Fur- 
man  v.  Dean,  C.  D.  1905,  114  O.  G.  1552. 

1974.  When  the  lapse  of  time  between  H.'s 
conception  and  his  date  of  reduction  to  prac- 
tice would  be  fatal  if  unexplained,  but  his 
delay  is  claimed  to  have  been  caused  by  an  in- 
fringement suit  and  the  same  suit  is  relied 
upon  by  B.  to  explain  delay,  Held,  that  B.  is 
in  no  condition  to  take  advantage  of  the  omis- 
sion to  show  what  there  was  in  that  suit  to 
excuse  delay  in  the  matter  of  this  invention. 
Hammond  v.  Basch,  C.  D.  1905,  115  O.  G. 
804. 

1975.  In  order  to  bring  his  case  within  the 
doctrine  of  those  cases  where  inventors  were 
considered  diligent  who  postponed  the  com- 
pletion of  their  inventions  in  order  to  complete 
other  devices  intimately  connected  therewith, 
a  party  must  produce  evidence  that  his  inven- 
tion is  not  useful  except  in  connection  with 
the  devices  in  whose  favor  the  delay  was 
made.  Failing  to  do  so,  his  opponent  is  re- 
lieved from  the  duty  of  producing  evidence  to 
the  contrary,  and  the  party  connot  thereafter 
rely  upon  the  absence  of  such  evidence  to  the 
contrary  to  support  the  contention  that  the  in- 
vention was  not  otherwise  useful.  TurnbuU 
V.  Curtis,  C.  D.  1906,  120  O.  G.  2442. 

1976.  There  is  no  arbitrary  rule  or  stand- 
ard by  which  diligence  may  be  measured.  The 
sole  object  of  the  law  being  to  mete  out  the 
fullest  measure  of  justice,  each  case  must  be 
considered  and  decided  in  the  light  of  the  cir- 
cumstances of  that  case.  The  nature  of  the 
invention,  the  situation  of  the  inventor,  the 
length  of  time  intervening  between  concep- 
tion and  reduction  to  practice,  the  character 
and  reasonableness  of  the  inventor's  testimony 


328 


INTERFERENCE,  XXXIII,   (e),  4,   ({),  1. 


and  that  of  liis  witnesses,  are  all  Important 
factors  in  determining  the  question  of  dili- 
gence. 'Woods  V.  Poor,  C.  D.  l'J07,  130  O. 
G.  1313. 

1977.  "The  question  of  diligence  is  one  de- 
pending upon  the  facts  in  each  case.  What  is 
reasonable  time  in  one  case  may,  under  the 
circumstances,  be  unreasonable  in  another. 
The  courts  will  grant  great  latitude  when  the 
inventor  has  been  delayed  by  reason  of  cir- 
cumstances over  which  he  has  no  control ;  but 
where  the  delay  is  caused  by  the  negligence 
of  the  inventor,  or  for  a  manifest  ulterior  pur- 
pose no  leniency  whatever  should  be  extend- 
ed." *Nelson  v.  Faucette,  C.  D.  1909,  143  O. 
G.  1348. 

1978.  The  question  of  what  constitutes  due 
diligence  in  reducing  an  invention  to  practice 
must  depend  upon  the  circumstances  of  each 
case  and  cannot  be  determined  by  a  mere  com- 
putation of  time.  *Storer  v.  Barr,  C.  D.  1910, 
l->2  O.  G.  231. 

4.  In  Prosecuting  Application. 

1979.  Where  it  was  contended  that  a  party 
was  not  diligent  in  the  prosecution  of  his  ap- 
plication in  the  office,  Held,  that  this  has  no 
bearing  on  the  question  of  priority,  since  his 
rights  became  fixed  by  the  filing  of  his  appli- 
cation, and  they  could  not  be  lost  and  become 
vested  in  others  by  mere  delay  on  his  part  in 
their  prosecution.  Miehle  v.  Read,  C.  D.  1901, 
96  O.  G.  426. 

1980.  Alleged  delays  in  prosecuting  the  ap- 
plication in  the  patent  office  cannot  operate  as 
a  forfeiture  of  the  applicant's  rights  so  long 
as  he  complies  with  the  law  fixing  the  time  for 
action  on  his  part.  Osborn  v.  Hotsapillar, 
C.   D.   1903,   102   O.   G.   296. 

1981.  It  cannot  be  said  that  a  party  has 
wilfully  or  unreasonably  delayed  giving  the 
invention  to  the  public  so  long  as  he  has  an 
application  for  it  pending  in  the  patent  office. 
Osborn  v.  Austin,  C.  D.  1903,  102  O.  G.  1781. 

(f)  Held  Diligent. 
1.  In  General. 

1982.  Cleal's  conception  and  reduction  to 
practice  is  the  date  of  his  application,  July 
6,  1894.  McCormick  prepared  two  applica- 
tions for  patent  in  February,  1894.  One  he 
filed  on  March  5,  1894,  for  what  is  called  "ma- 
chine No.  4."  The  other  application,  the  one 
involved    in    this    interference,    under    which 


"machine  No.  3"  had  been  begun  but  laid 
aside  for  No.  4,  was  not  filed  until  October  6, 
1894.  On  April  8,  1894,  he  began  "machine 
No.  5,"  which  contained  the  locking  mechan- 
ism of  No.  4  and  differs  from  the  mechanism 
of  the  issue  merely  in  the  time  of  the  opera- 
tion of  the  two  sets  of  keys,  in  the  issue  the 
department-key  being  first  pressed  and  the 
cash-key  thereby  unlocked,  while  in  machines 
Nos.  4  and  5  the  cash-keys  are  first  pressed 
and  the  department-keys  thereby  unlocked. 
Held,  that  machine  No.  3  fell  short  of  being 
a  reduction  to  practice;  but  as,  judging  by 
McCormick's  actions,  he  neither  saw  the  su- 
periority of  one  mode  of  operation  over  the 
other  at  the  time  he  was  working  on  the  ma- 
chines nor  apprehended  that  there  was  a  sub- 
stantial difference  between  the  functions  of 
the  mechanism  in  merely  reversing  the  time 
of  the  locking  action  upon  the  distinct  sets  of 
keys,  the  locking  device  being  the  important 
improvement,  and  he  appreciating  its  value, 
through  he  may  have  been  mistaken  as  to  the 
most  advantageous  mode  of  its  operation  and 
may  also  for  a  time  have  supposed  that  it 
was  the  same  invention  when  operated  re- 
versely, also  Held,  that  under  such  circum- 
stances what  McCormick  was  doing  during 
the  eight  months  from  the  date  of  preparing 
his  application  to  the  filing  of  it  in  the  patent 
office  was  not  unreasonable  delay,  and  priority 
awarded  to  him  over  Cleal.  *McCormick  v. 
Cleal,  C.  D.  1898,  83  O.  G.  1514. 

1983.  Where  Roe  conceived  the  invention  in 
November,  1898,  made  a  machine  embodying 
it  in  August,  1899,  and  operated  it  at  that  time 
in  such  manner  as  to  show  its  practicability, 
and  in  March,  1900,  first  used  it  in  a  mill  and 
made  the  first  commercial  test  of  it.  Held, 
that  he  is  entitled  to  the  decision  on  priority 
as  against  Hanson,  who  conceived  in  April, 
1899,  and  reduced  to  practice  in  July,  1899. 
*Roe  V.  Hanson,  C.  D.  1902,  99  O.  G.  2550. 

1984.  Where  Roe  conceived  the  invention  in 
November,  1898,  completed  drawings  in  April, 
1899,  and  then  commenced  work  on  a  ma- 
chine which  was  completed  in  August,  1899, 
and  it  appears  that  he  was  a  very  busy  man 
and  devoted  all  of  the  time  that  he  could 
spare  to  work  upon  this  invention.  Held,  that 
he  was  not  lacking  in  diligence.    *Id. 

1985.  Where  Roe  completed  his  machine  in 
August,  1899,  and  wished  to  place  it  in  the 
sawmill  which  he  was  then  building  for  his 
company,  but  was  not  permitted  to  do  so, 
and  where  he  placed  it  in  the  next  mill  built 


INTERFERENCE,  XXXIII,  (f),  2. 


329 


in  March,  1900,  Held,  that  there  was  no  un- 
reasonable delay  by  him  in  making  commer- 
cial use  of  his  invention.     *Id. 

1986.  A  party  does  not  forfeit  his  rights 
by  a  failure  to  manufacture  and  put  on  the 
market  devices  embodying  his  invention  after 
he  has  filed  an  application  for  a  patent  upon 
it.  Osborn  v.  Hotsapillar,  C.  D.  1903,  102  O. 
G.  296. 

1987.  Held,  that  the  date  of  execution  of 
the  application  is  evidence  of  activity  of  the 
inventor  at  that  time.  Briggs  v.  Lillie  v.  Cook 
V.  Jones  and  Taylor,  C.  D.  1903,  116  O.  G. 
871. 

1988.  Where  the  evidence  showed  activity 
up  to  within  one  month  of  the  filing  of  the 
application,  Held,  that  the  party  would  not 
fail  to  prevail  for  lack  of  diligence.     Id. 

2.  In  Filing  Application. 

1989.  It  is  a  settled  principle  in  practice  as 
well  as  in  reason  that  forbearance  to  apply 
for  a  patent  during  the  progress  of  experi- 
ments and  until  the  party  has  perfected  his 
invention  and  tested  its  value  by  practical 
experiment  affords  no  ground  for  presumption 
of  abandonment,  nor  should  such  delay  oper- 
ate in  any  way  to  the  prejudice  of  the  in- 
ventor or  to  his  right  to  obtain  a  patent  for 
his  invention,  certainly  not  as  against  a  sub- 
sequent or  junior  inventor.  *Christensen  v. 
Noyes,  C.  D.  1900,  90  O.  G.  227. 

1990.  Mere  forbearance  to  apply  for  a  pat- 
ent during  the  progress  of  experiments  and 
until  the  party  has  perfected  his  invention  and 
tested  its  value  affords  no  ground  for  pre- 
suming abandonment.  *Christensen  v.  Noyes, 
C.  D.  1900,  90  O.  G.  237. 

1991.  W.  filed  an  application  in  April,  1896, 
disclosing  a  collar  attached  to  the  heel  of  a 
knitting-machine  needle  and  inserted  between 
its  limbs  and  so  bent  around  it  as  to  form  the 
letter  S.  What  he  actually  disclosed  to  his 
attorney,  and  that  upon  which  the  application 
was  based,  was  a  collar  in  shape  of  the  figure 
8.  In  February,  1897,  N.  filed  an  application  in 
which  he  claimed  both  the  S  form  and  the  8 
form  indifferently.  Two  successive  interfer- 
ences were  then  declared,  both  of  which  were 
dissolved  on  N.'s  motions  that  there  was  no 
interference  in  fact.  W.'s  application  became 
a  patent  in  August,  1898.  In  June,  1898,  he 
filed  the  application  which  is  now  in  interfer- 
ence with  the  application  of  N.  N.'s  earliest 
date  of   conception   is  October,   1896,   and  of 


reduction  to  practice  January,  1897.  Held, 
that  under  the  circumstances  W.  should  not 
be  charged  with  laches  in  filing  the  applica- 
tion involved,  as  the  greater  part  of  the  delay 
was  due  not  to  his  inaction,  but  to  the  course 
of  action  of  the  patent  office,  and  being  first 
to  conceive  and  reasonably  diligent  in  con- 
structive reduction  to  practice  he  is  entitled 
to  an  award  of  priority.  *Newton  v.  Wood- 
ward, C.  D.  1900,  93  O.  G.  2319. 

1992.  Held,  further,  that  it  was  only  when 
t  was  finally  determined  by  the  patent  office 

that  the  S-shaped  device  and  the  8-shaped  de- 
vice were  distinct  inventions  and  equally  pat- 
entable that  it  became  incumbent  upon  W.  to 
take  steps  for  the  protection  of  his  invention 
as  he  had  actually  made  it.  He  is  not  charge- 
able with  any  want  of  due  diligence  when  he 
acquiesced  in  the  decisions  of  the  patent  of- 
fice.   *Id. 

1993.  Where  it  is  clearly  established  that  D. 
reduced  the  broad  invention  to  practice.  Held, 
that  his  taking  out  two  patents  on  improved 
constructions,  which  he  erroneously  consid- 
ered covered  the  broad  invention,  cannot  de- 
feat his  right  to  a  patent  for  the  broad  or 
original  construction.  Double  v.  Mills,  C.  D. 
1904,  112  O.  G.  1747. 

1994.  Held,  that  D.  reduced  the  invention  to 
practice  before  M.  conceived  of  the  invention, 
and  that  therefore  D.  is  the  prior  inventor. 
Id. 

1995.  Where  C.  is  a  patentee  and  is  re- 
stricted to  his  application  date  for  a  con- 
ception and  a  reduction  to  practice,  and  there 
is  ample  testimony  in  behalf  of  K.  to  establish 
the  fact  that  he  actually  reduced  the  invention 
to  practice  and  caused  the  invention  to  be 
used  a  few  months  prior  to  C's  application 
date,  and  that  C.  was  employed  by  K.  at 
that  time  and  had  ample  opportunity  to  be- 
come acquainted  with  the  process,  and  work 
of  K.,  Held,  that  K.  should  be  awarded  pri- 
ority of  invention,  notwithstanding  the  fact 
that  no  sufficient  cause  is  shown  for  K.'s  delay 
in  making  application  for  a  patent  until  after 
he  has  seen  C's  patent.  *Corner  v.  Kyle,  C. 
D.  1905,  114  O.  G.  2092. 

1996.  Held,  that  C.  was  entitled  to  an  award 
of  priority  over  J.  and  T.  by  reason  of  an 
earlier  conception  of  the  invention,  coupled 
with  due  diligence,  extending  from  a  time  be- 
fore the  only  date  established  for  J.  and  T. 
to  the  filing  of  C's  application.  *Jones  and 
Taylor  v.  Cooke,  C  D.  1905,  117  O.  G.  1493. 


330 


INTERFERENCE,  XXXIII,  (f),  2. 


1997.  The  following  acts  held  to  show  due 
diligence  throughout  the  period  covered  by 
the  dates  given  ;  Opened  correspondence  with 
attorney  in  March,  1902 ;  sent  check  for  pre- 
liminary examination  on  2-lth  of  same  month; 
sent  check  for  drawings  on  April  2,  1902 ; 
swore  to  the  application  for  patent  upon  May 
12,  1902,  and  filed  the  same  on  June  11,  1902. 
*Id. 

1998.  Where  there  was  a  failure  to  explain 
the  reason  why  the  application  attested  on 
May  12,  1902,  and  returned  to  the  patent  so- 
licitor was  not  filed  before  June  11,  Held, 
considering  all  the  evidence  relating  to  the 
occupation  and  means  of  the  applicant  and 
his  diligence  in  the  employment  and  payment 
of  his  solicitor,  with  whom  he  had  not  the  op- 
portunity of  meeting,  and  the  very  short  time 
which  was  suffered  to  elapse,  that  it  shows 
sufficient  diligence  to  entitle  him  to  the  benefit 
of  his  earlier  conception.     ♦Id. 

1999.  Where  the  junior  party  establishes 
conception  of  the  invention  as  early  as  Oc- 
tober 31,  1903,  and  files  his  application  on  Jan- 
uary 29,  1904,  and  the  senior  party  stands  on 
his  record  date  of  November  28,  1903,  for  a 
conception  and  reduction  to  practice,  and  the 
record  shows  that  there  was  doubt  as  to  the 
successful  and  practical  construction  of  the 
device,  and  the  junior  party,  after  conceiving 
and  disclosing  his  invention  sought  and  ob- 
tained expert  opinion  on  that  subject  before 
filing  his  application,  and  as  the  whole  period 
of  delay  was  less  than  three  months  and  the 
inventor  was  an  active  business  man  engaged 
with  other  matters,  Held,  that  he  was  reason- 
ably diligent  and  should  be  awarded  priority 
of  invention.  Green  v.  Benners,  C.  D.  1905, 
117  O.  G.  2631. 

2000.  Where  two  years  elapsed  between  a 
party's  alleged  reduction  to  practice  and  the 
filing  of  his  application  for  a  patent,  during 
which  interval  his  rival  entered  the  field  and 
secured  a  patent,  Held,  that  such  delay  stand- 
ing by  itself  does  not  constitute  an  abandon- 
ment of  his  rights  to  a  patent  based  on  pri- 
ority of  invention.  *Rolfe  v.  Hoffman,  C.  D. 
1906,  121   O.   G.  1350. 

2001.  Where  two  years  elapsed  between  an 
alleged  reduction  to  practice  and  the  filing  of 
an  application  for  patent.  Held,  that  neither 
abandonment  nor  forfeiture  of  a  right  to  re- 
ceive a  patent  can  be  presumed,  but  must  be 
proved.     ♦Id. 

2002.  Where  O'Connell  conceived  and  em- 
bodied the  invention  in  a  model  which  was  al- 


most a  reduction  to  practice,  and  had  it  been 
connected  up  and  tested  would  have  been  a 
reduction  to  practice,  prior  to  the  date  when 
his  rival  conceived  and  constructively  reduced 
to  practice  by  filing  his  application,  and  where 
at  the  time  his  rival  entered  the  field  O'Con- 
nell was  urging  that  the  invention  be  accepted 
and  patented,  and  although  his  application  was 
not  filed  until  a  few  days  over  five  months 
after  that  of  his  rival  the  application  was  pre- 
pared and  executed  a  month  before  filing,  and 
where  although  O'Connell  might  have  had  his 
working  model  tested  in  the  intervening  time 
it  would  not,  according  to  his  witnesses,  ex- 
pert in  the  art,  have  given  them  any  more 
knowledge  of  the  invention.  Held,  that  there 
is  no  rule  which  under  these  circumstances  re- 
quires an  inventor  to  rush  to  the  patent  of- 
fice in  order  to  preserve  his  rights  as  the  first 
inventor.  ♦O'Connell  v.  Schmid,  C.  D.  1906, 
122  O.  G.  2065. 

2003.  Where  an  inventor  immediately  after 
reducing  his  invention  to  practice  was  sent 
by  his  employer  from  a  large  city  to  a  com- 
paratively small  town  on  work  which  it  was 
supposed  would  require  about  sixty  days,  after 
which  the  inventor  expected  to  return  to  the 
city  and  file  his  application,  but  because  of 
unforseen  delays  the  work  was  not  completed 
for  about  four  months,  and  after  his  return 
to  the  city  he  took  immediate  steps  to  file  his 
application.  Held,  that  he  was  not  lacking  in 
diligence,  especially  in  view  of  the  additional 
circumstance  that  his  invention  related  to  a 
highly  technical  art,  a  knowledge  of  which 
he  understood  was  not  possessed  by  the  at- 
torneys in  the  town  where  he  was  then  lo- 
cated. Dunbar  v.  Schellenger,  C.  D.  1906, 
125  O.  G.  348. 

2004.  Where  the  reduction  to  practice  of  the 
invention  was  clearly  established,  a  delay  of 
two  and  a  half  years  in  filing  the  application 
therefor  is  not  sufficient  to  destroy  the  weight 
of  proof  of  actual  reduction  to  practice,  es- 
pecially where  it  appears  that  drawings  show- 
ing substantially  the  same  construction  as  the 
original  device  were  sent  to  applicant's  attor- 
neys more  than  a  year  before  the  application 
was  filed  and  before  any  one  else  had  entered 
the  field.  ♦Seeberger  v.  Russell,  C.  D.  1906, 
121  O.  G.  2328. 

2005.  Where  Poe,  who  was  the  first  to  con- 
ceive, but  the  last  to  constructively  reduce  to 
practice,  was  diligent  at  the  time  Scharf  en- 
tered the  field  and  the  delay  of  three  months 
between  this  time  and  the  filing  of  his  appli- 


INTERFERENCE,  XXXIII,  (f),  3. 


331 


cation  was  due  to  no  inaction  on  the  part  of 
Poe,  but  the  fact  that  the  attorney  for  his 
assignee,  who  was  particularly  skilled  in  the 
art  and  prepared  all  its  patent  applications, 
was  delayed  by  other  work  which  had  accumu- 
lated because  of  his  sickness,  and  the  testimony 
shows  that  there  was  no  intentional  delay  upon 
his  part  in  the  preparation  of  Poe's  applica- 
tion. Held,  that  Poe  was  not  lacking  in  dili- 
gence. Poe  V.  Scharf,  C.  D.  1907,  130  O.  G. 
1309. 

2006.  After  reduction  to  practice  of  an  in- 
vention a  mere  delay  of  the  inventor  in  apply- 
ing for  a  patent,  in  the  absence  of  concealment, 
abandonment,  or  suppression,  will  not  prevent 
the  inventor  from  getting  a  patent  based  upon 
priority  of  invention.  *Rose  v.  Clifford  and 
Newell  et  al.,  C.  D.  1908,  135  O.  G.  1361. 

3.  In  Reduction  to   Practice. 

2007.  De  Wallace  had  a  complete  conception 
of  the  invention  on  December  1,  1896,  when  he 
employed  a  skilled  mechanic  to  embody  his 
ideas  in  a  working  machine.  Scott  et  al. 
proved  conception  on  December  8,  1896,  and 
reduced  the  invention  to  practice  prior  to  re- 
duction to  practice  by  De  Wallace.  Held,  that 
as  De  Wallace  was  actually  engaged  in  his 
efforts  to  reduce  the  invention  to  practice 
when  Scott  et  al.  entered  the  field,  and  as  his 
delay  in  reducing  to  practice  was  not  unrea- 
sonable under  all  the  circumstances  disclosed 
by  the  evidence,  priority  should  be  awarded 
to  De  Wallace  over  Scott  et  al.  (Decision 
of  the  Commissioner,  Scott  et  al.  v.  De  Wal- 
lace, 66  MS.  Dec,  30,  overruled.)  *De  Wal- 
lace V.  Scott  et  al.,  C.  D.  1899,  88  O.  G.  1704. 

2008.  W.  filed  an  application  on  April  13, 
1896,  which  was  put  in  interference  on  April 
20,  1897,  with  an  application  of  N.  filed  Febru- 
ary 16,  1897.  W.  actually  reduced  the  inven- 
tion to  practice  three  months  after  the  filing 
date  of  N.  That  interference  was  dissolved 
on  October  18,  1897,  by  the  assistant  commis- 
sioner, reversing  the  action  of  the  examiner 
refusing  to  dissolve.  W.  then  filed  an  amend- 
ment and  a  new  interference  was  declared, 
which  was  also  dissolved  by  the  assistant  com- 
missioner on  June  1,  1898,  reversing  the  ex- 
aminer. W.  then  filed  a  new  application  on 
June  13,  1898,  and  the  present  interference 
was  declared.  Held,  that  under  this  state  of 
facts,  leaving  out  of  consideration  W.'s  actual 
reduction  to  practice  and  relying  upon  his  con- 
structive reduction,  as  indicated  by  the  second 


application,  he  cannot  be  charged  with  laches 

in  reducing  the  invention  to  practice,  and  pri- 
ority is  awarded  to  him.  Woodward  v.  New- 
ton, C.  D.  1900,  92  O.  G.  381. 

2009.  E.  conceived  the  invention  of  the  issue 
in  March,  1897.  It  was  to  be  an  attachment 
to  a  complicated  machine.  He  began  to  build 
the  full-sized  machine,  but  put  on  it  another 
and  cheaper  attachment  having  the  same  gen- 
eral purpose  instead  of  one  of  the  issue.  Find- 
ing the  machine  worked  as  a  whole,  he  then, 
in  March,  1898,  put  on  the  preferred  and  more 
expensive  form — that  of  the  issue.  Held,  that 
E.  used  reasonable  diligence  in  perfecting  his 
invention  and  is  entitled  to  priority  over  C, 
who  conceived  in  .'Kugust,  1897,  and  completed 
his  machine  in  February,  1898.  *Christensen 
v.  Ellis,  C.  D.  1901,  94  O.  G.  2561. 

2010.  Where  E.  first  developed  his  general 
improvements,  but  in  making  his  first  machine 
added  the  separate  card  attachment  instead 
of  the  autographic-roll  mechanism  of  the  issue. 
Held,  under  the  circumstances  shown  by  the 
evidence  that  this  was  done  with  no  intention 
to  abandon  the  autographic  roll,  but  upon  the 
suggestion  of  his  backer  to  save  expense.  *Id. 

2011.  Where  H.  was  first  to  conceive  the 
invention  defined  in  all  the  counts  and  the 
first  to  reduce  the  invention  to  practice  as  to 
all  the  counts  save  one  and  exercised  due  dil- 
igence in  reducing  to  practice  the  invention 
defined  in  the  remaining  count.  Held,  that  pri- 
ority of  invention  as  to  all  the  counts  should 
be  awarded  to  H.  Slaughter  v.  Halle,  C.  D. 
1902,  99  O.  G.  2771. 

2012.  Whoever  first  perfects  a  machine  is 
entitled  to  the  patent  therefor  and  is  the  real 
inventor,  although  others  may  have  previously 
had  the  idea  and  made  some  experiments  to- 
ward putting  it  in  practice,  subject,  however, 
to  this  qualification,  that  if  the  party  who  con- 
ceives the  invention  was  at  the  time  of  a 
second  invention  by  another  party  using  rea- 
sonable diligence  in  perfecting  the  same  he  is 
entitled  to  be  recognized  as  the  first  inventor, 
although  the  second  to  conceive  may  have 
been  the  first  to  reduce  to  practice,  either  ac- 
tual or  constructive,  (.^gawam  Co.  v.  Jordan, 
7  Wall.  583.)  *Funk  v.  Matteson  v.  Haines, 
C.  D.  1902,  100  O.  G.  1764. 

2013.  It  is  a  fundamental  principle  of  patent 
law  that  the  first  to  reduce  to  practice  is  prima 
facie  the  first  inventor  and  entitled  to  a  pat- 
ent, and  he  can  be  deprived  of  that  right  only 
by  showing  that  some  one  else  was  first  to 


333 


INTERFERENCE,  XXXIII,  (f),  3. 


conceive  the  invention  and  exercised  diligence 
thereafter  in  perfecting  it.    *Id. 

2014.  There  is  no  requirement  of  law  for 
the  exercise  of  diligence  on  the  part  of  the 
first  to  reduce  to  practice,  and  no  lack  of 
diligence  can  be  imputed  to  him,  since  he  was, 
in  fact,  the  first  to  give  the  invention  to  the 
public  by  a  reduction  to  practice.  The  com- 
parative diligence  of  the  parties  is  not  ma- 
terial.   *Id. 

2015.  Where  H.  is  the  first  to  conceive  and 
first  to  reduce  to  practice  the  invention  of 
some  of  the  counts  and  though  first  to  con- 
ceive and  last  to  reduce  to  practice  the  inven- 
tion of  the  remaining  counts  was  diligent  in 
reducing  that  invention  to  practice,  Held,  that 
H.  is  the  prior  inventor  as  to  all  the  counts. 
♦Hillard  v.  Brooks,  C.  D.  1904,  111  O.  G.  302. 

2016.  Where  T.  was  the  first  to  conceive, 
but  was  later  than  B.  in  reduction  to  prac- 
tice and  was  lacking  in  diligence,  and  P.  was 
the  last  to  conceive  and  the  last  to  reduce  to 
practice.  Held,  that  B.  is  entitled  to  judgment 
as  the  first  inventor.  Trufant  v.  Prindle  v. 
Brown,  C.  D.  1904,  111  O.  G.  103.5. 

2017.  Held,  that  as  from  the  whole  record 
presented  in  behalf  of  S.  it  is  shown  that  he 
was  the  first  to  conceive  and  though  last  to 
reduce  to  practice  was  diligent  in  so  doing 
from  a  time  just  previous  to  the  entry  of  L. 
and  S.  into  the  field,  S.  is  entitled  to  the  award 
of  priority  of  invention.  Scott  v.  Laas  and 
Sponenburg,  C.  D.  1905,  118  O.  G.  1367. 

2018.  Where  an  inventor  retained  an  attor- 
ney residing  in  another  city  to  prepare  a  pat- 
ent application  covering  a  voting-machine,  and 
after  a  large  amount  of  correspondence  the 
attorney  requested  the  inventor  to  make  and 
send  to  him  a  model  for  use  in  preparing  the 
application,  and  the  inventor  decided  to  make 
a  complete  machine  instead  of  a  model  and 
undertook  its  construction  himself,  being 
financially  unable  to  bear  the  great  expense 
of  having  it  built  by  others,  but  when  the  ma- 
chine was  partially  completed,  realizing  that 
its  construction  would  involve  great  delay, 
discontinued  work  thereon  and  in  response 
to  his  attorney's  repeated  request  made  a 
model.  Held,  that  the  inventor's  attempt  to 
build  a  complete  machine  was  a  commendable 
effort  to  complete  his  invention  and  that  the 
delay  caused  thereby  did  not  constitute  laches. 
♦Davis  V.  Garrett,  C.  D.  1906,  123  O.  G.  1991. 

2019.  Where  Fowler  conceived  and  disclosed 
in  August  and  was  last  to  reduce  to  practice, 


Held,  that  McBerty,  who  was  the  first  to  con- 
ceive and  who  reduced  to  practice  in  the 
following  January,  was  reasonably  diligent. 
Fowler  v.  McBerty,  C.  D.  1906,  121  O.  G.  1915. 

2020.  Where  on  October  24,  1903,  twenty- 
three  days  after  his  conception  of  the  inven- 
tion, Woods  left  the  company  by  which  he 
had  been  employed  to  embark  in  business  on 
his  own  account,  and  during  this  period  had 
made  a  blackboard  drawing  of  the  invention 
and  frequently  discussed  with  one  Jacob,  who 
was  skilled  in  the  art,  the  possibility  of  over- 
coming certain  criticisms,  and  where  after 
establishing  his  own  business  he  employed 
said  Jacob  and  resumed  the  consideration  of 
these  defects,  and  while  he  did  not  eventually 
modify  his  device,  but  filed  his  application 
January  27,  1904,  Held,  he  was  not  lacking  in 
diligence,  and  priority  was  awarded  to  him 
over  Poor,  who  reduced  his  invention  to  prac- 
tice by  filing  his  application  December  17, 
1903.  *Woods  V.  Poor,  C.  D.  1907,  130  O.  G. 
1313. 

2021.  Where  the  inventor  of  an  apparatus 
for  supporting  insulating  overhead-trolley  con- 
ductors which  are  utilized  for  supplying  high- 
voltage  energy  to  high-speed  alternating-cur- 
rent electric  railways  is  not  in  a  position  to 
make  an  actual  test  of  his  invention,  and  the 
company  which  employs  him  is  likewise  not 
in  a  position  to  make  such  a  test,  he  cannot  be 
held  lacking  in  diligence  in  reducing  his  in- 
vention to  practice  between  March,  1904,  and 
December  2,  1904,  where  he  approached  a 
railway  company  in  March  and  endeavored 
to  have  his  invention  tried  out,  ordered  an  in- 
sulator which  was  one  of  the  essential  fea- 
tures of  the  apparatus  and  received  the  same 
in  October,  procured  a  visit  from  the  officers 
of  another  electric  railway  company  in  Sep- 
tember, and  early  in  December  attached  a 
crude  apparatus  to  the  fence  in  the  factory 
yard  to  see  how  it  would  appear  and  operate. 
*.Mead  v.  Davis  and  \'arney,  C.  D.  1908,  136 
O.  G.  2001. 

2022.  Where  it  appeared  that  W.  I.  Ohmer 
had  a  conception  of  the  invention  which  he 
disclosed  to  Neth  and  Tamplin  in  1902  and 
prior  to  January,  1903,  had  caused  an  em- 
bodiment of  this  invention  in  working  plans 
and  drawings,  but  did  not  reduce  the  inven- 
tion to  practice  until  February,  1903,  and  it 
is  shown  that  John  F.  Ohmer  reduced  the 
invention  to  practice  in  January,  1903,  Held, 
that  it  cannot  be  successfully  held  that  W.  I. 


INTERFERENCE,  XXXIII,  (g),  1. 


333 


Ohmer  was  lacking  in  reasonable  diligence  in 
reducing  his  invention  to  practice,  when  it 
is  considered  that  a  complicated  and  difficult 
piece  of  mechanism  was  constructed  in  four 
months.  *Neth  and  Tamplin  v.  Ohmer,  and 
Ohmer  v.  Ohmer,  C.  D.  1908,  135  O.  G.  662. 

2023.  Where  the  junior  party  had  disclosed 
the  invention  to  several  persons  and  had  or- 
dered tools  to  manufacture  the  same  prior  to 
the  entry  of  the  senior  party  into  the  field  and 
in  a  few  months  thereafter  actually  sold  a 
small  number  which  was  followed  a  few 
months  later  by  the  manufacture  and  sale  of 
large  numbers  of  such  devices,  Held,  that  he 
was  diligent  in  reducing  his  invention  to  prac- 
tice. *Davis  v.  Horton,  C.  D.  1908,  136  O.  G. 
1768. 

2024.  Evidence  considered  and  Held,  to 
show  that  C,  who  was  the  first  to  conceive 
the  invention  in  issue,  was  exercising  due  dil- 
igence in  reducing  it  to  practice  at  the  time 
S.  entered  the  field  and  subsequently  thereto. 
*Scott  and  Scott,  executors  of  the  estate  of 
Walter  Scott,  deceased  v.  Cruse,  C.  D.  1910, 
154  O.  G.  252. 

2025.  Evidence  considered  and  Held,  to  es- 
tablish that  Schartow,  who  was  the  first  to 
conceive  the  invention  in  issue,  was  reasonably 
diligent  in  reducing  the  same  to  practice  and 
was  therefore  entitled  to  an  award  of  prior- 
ity. *  Schartow  v.  Schleicher,  C.  D.  1910,  156 
O.  G.  800. 

2026.  H.  conceived  the  invention  in  issue 
in  the  early  part  of  1902,  made  and  tested  a 
machine  embodying  this  issue  in  England  in 
the  fall  of  the  year,  and  filed  his  application 
on  December  4,  1902.  According  to  the  tes- 
timony of  N.  he  conceived  the  invention  in 
1901  and  disclosed  it  to  his  employers;  but 
nothing  was  done  with  it  until  H.'s  machine 
was  shown  to  them  in  December,  1902,  when 
he  was  instructed  to  prepare  working  draw- 
ings. These  were  not  completed  until  May, 
1903,  and  N.'s  application  was  filed  September 
21,  1903.  Held,  that  N.  was  lacking  in  dili- 
gence in  reducing  the  invention  to  practice. 
*Norling  v.  Hayes,  C.  D.  1911,  166  O.  G.  1282. 

2027.  Evidence  considered  and  Held,  to  es- 
tablish that  R.,  who  was  the  first  to  conceive 
the  invention  in  issue,  but  the  last  to  reduce  it 
to  practice,  was  reasonably  diligent  in  reduc- 
ing the  same  to  practice  from  the  time  of  his 
conception  and  that  priority  was  properly 
awarded  him.  Rowe  v.  Brinkmann,  C.  D. 
1911,  172  O.  G.  1090. 


(g)  Not  Held  Diligent. 
1.  In  General. 

2028.  A  mistake  by  a  party  in  supposing 
that  the  invention  was  covered  by  a  prior 
patent  granted  to  him  cannot  under  any  known 
principle  of  law  be  considered  a  good  excuse 
for  delay  in  perfecting  the  invention  or  filing 
an  application  covering  the  same.  Under  the 
circumstances  of  this  case  the  applicant  is, 
furthermore,  chargeable  with  the  knowledge 
possessed  by  his  agent  or  attorney  as  to  the 
scope  of  the  former  patent.  *PIatt  v.  Ship- 
ley, C.  D.  1898,  82  O.  G.  461. 

2029.  Where  the  testimony  shows  beyond 
a  reasoaable  doubt  that  Kelly  conceived  the 
invention  in  1894  and  had  a  machine  embody- 
ing it  made  during  1895,  prior  to  any  date 
proven  by  F>Tin,  but  thereafter  did  nothing 
but  experiment  with  it  and  make  changes  in 
it  until  he  was  stirred  to  greater  activity  by 
the  grant  of  Fynn's  patent.  Held,  that  Fynn  is 
the  prior  inventor.  Kelly  v.  Flynn,  C.  D.  1900, 
92  O.  G.  1233. 

2030.  Where  Austin  claims  to  have  con- 
ceived the  invention  in  February,  1895,  but 
laid  it  aside  and  was  doing  nothing  when 
Johnson  and  Fry  entered  the  field  in  June, 
]S9J,  although  he  was  able  to  reduce  the  in- 
vention to  practice  either  actually  by  making 
the  device  or  constructively  by  filing  an  ap- 
plication at  any  time  he  desired,  Held,  that  he 
was  lacking  in  diligence.  *Austin  v.  John- 
son et  al.,  C.  D.  1901,  95  O.  G.  2685. 

2031.  Where  it  is  shown  that  Miehle  had 
a  conception  of  the  invention  in  June,  but  did 
nothing  in  regard  to  it  until  after  Read  en- 
tered the  field  and  filed  his  application  in  the 
following  December,  Held,  that  Miehle  did 
not  exercise  diligence  and  that  the  decision  of 
the  commissioner  of  patents  in  favor  of  Read 
should  be  affirmed.  *Miehle  v.  Read,  C.  D. 
1901,  96  O.  G.  426. 

2032.  Where  the  only  excuse  given  for 
delay  is  that  the  party  was  engaged  in  other 
things  which  required  his  attention,  and  it  ap- 
pears that  he  might  at  any  time  have  had  an 
application  for  a  patent  filed  by  devoting  two 
hours  to  a  conference  with  his  attorney.  Held, 
that  he  was  lacking  in  diligence.    *Id. 

2033.  Where  a  party  claims  to  have  had  a 
complete  knowledge  of  a  process  involving  the 
use  of  bacterial  food  and  had  one  form  of 
such  food.  Held,  that  his  failure  to  practically 
use  the  process   for  several  years  is  not  to 


334 


INTERFERENCE,  XXXIII,  (g),  1. 


be  excused  upon  the  allegation  that  he  was 
trying  to  find  a  food  which  could  be  obtained 
at  all  seasons.  Petrie  v.  De  Schweinitz,  C.  D. 
1902,  99  O.  G.  446. 

2034.  Where  H.  claims  to  have  conceived 
the  invention  in  July,  1899,  and  did  nothing 
further  with  the  invention  for  one  year  and 
nine  months  later,  during  which  time  his  op- 
ponent made  the  invention.  Held,  that  he  was 
lacking  in  diligence  and  priority  must  be 
awarded  to  his  opponent.  *Harris  v.  Stern 
and  Lotz,  C.  D.  1903,  105  O.  G.  746. 

2035.  Where  B.  has  shown  beyond  doubt 
that  he  had  actually  reduced  the  invention  to 
practice  and  there  is  no  evidence  of  any  ac- 
tions on  his  part  to  warrant  the  conclusion 
that  he  had  abandoned  his  invention  or  that 
he  had  lost  his  rights  under  the  doctrine  of 
equitable  estoppel  and  there  is  no  action  on 
the  part  of  B.  to  warrant  the  conclusion  that 
the  machine  which  he  constructed  was  an 
abandoned  experiment  and  not  a  reduction  to 
practice.  Held,  that  B.  is  the  prior  inventor. 
Brooks  V.  Hillard,  C.  D.  1903,  106  O.  G.  1237. 

2036.  Where  a  party  could  test  the  inven- 
tion or  file  an  application  at  any  time,  Held, 
that  the  making  of  drawings  which  were  then 
locked  up  in  his  desk  cannot  be  considered 
an  act  of  diligence  in  perfecting  the  inven- 
tion. Paul  V.  Johnson,  C.  D.  1903,  106  O.  G. 
2013. 

2037.  Where  the  invention  in  controversy 
relates  to  thermostats.  Held,  that  the  efforts  of 
the  inventor  in  regard  to  other  thermostatic 
devices  cannot  be  considered  diligence  in  per- 
fecting the  particular  one  in  controversy.     Id. 

2038.  Where  a  complete  conception  is  es- 
tablished and  as  an  excuse  for  inactivity  in 
perfecting  an  invention  it  is  claimed  that  no 
one  could  be  found  who  was  qualified  to  con- 
struct the  requisite  parts  of  the  device  and 
willing  to  do  the  actual  work,  and  it  appears 
that  the  inventor  could  have  obtained  a  con- 
structive reduction  to  practice  by  filing  his 
application  in  the  patent  office,  and  as  the  very 
fact  of  his  inability  to  get  any  one  to  do  the 
work  for  him  should  have  dictated  the  pro- 
priety of  diligence  in  making  such  application. 
Held,  that  the  inventor  was  not  diligent.  *Rob- 
inson  v.  Copeland,  C.  D.  1904,  112  O.  G.  501. 

2039.  Where  an  inventor  is  very  busy  in 
other  directions.  Held,  to  be  no  excuse  for 
inactivity,  which  allows  the  intervention  of 
others  in  the  field  of  invention  and  the  per- 
fection of  their  enterprises.     *Id. 


2040.  The  party  first  to  conceive  but  last 
to  reduce  to  practice  must  show  diligence  in 
perfecting  the  invention  mechanically,  and  it 
is  not  sufficient  to  show  that  efforts  were  made 
to  exploit  commercially  the  business  in  which 
the  invention  might  be  used.  Seeberger  v. 
Dodge,  C.  D.  1904,  113  O.  G.  1415. 

2041.  One  having  the  first  complete  concep- 
tion of  an  invention  cannot  hold  the  field 
against  all  comers  by  diligent  efforts  merely  to 
organize  and  procure  sufficient  capital  to  en- 
gage in  the  manufacture  of  his  device  or 
mechanism  for  commercial  purposes.  This  is 
a  different  thing  from  diligence  in  actual  re- 
duction to  practice.  *Seeberger  v.  Dodge,  C. 
D.  1905,  114  O.  G.  2382. 

2042.  When  an  assignee  of  an  invention 
neglects  cither  to  cause  an  actual  reduction  to 
practice  of  the  same  when  a  complete  model 
has  been  submitted  to  him  by  the  inventor  or 
to  cause  an  application  for  a  patent  to  be  filed 
and  the  inventor  takes  no  active  steps  in  either 
direction.  Held,  that  some  one  interested  must 
be  diligent,  and  the  inventor  cannot  excuse  his 
lack  of  diligence  by  shifting  the  responsibil- 
ity to  the  assignee,  who  was  admittedly  not 
diligent.  O'Connell  v.  Schmidt,  C.  D.  1905, 
118  O.  G.  588. 

2043.  Diligence  in  attempting  to  secure  cap- 
ital to  engage  in  the  manufacture  of  the  de- 
vice or  to  exploit  the  invention  is  not  the 
diligence  in  reducing  to  practice  required  of 
the  first  to  conceive,  but  the  last  to  reduce  to 
practice,  in  order  to  hold  the  field.  *Laas  v. 
Sponenberg  v.  Scott,  C.  D.  1906,  122  O.  G. 
352. 

2044.  The  conceiver  of  an  invention  whose 
financial  condition  is  such  as  to  excuse  him 
from  any  attempt  unaided  to  actually  reduce 
the  invention  to  practice  must,  if  he  would 
hold  the  field,  enlist  the  aid  of  others  in  ac- 
tual reduction  to  practice  or  file  an  applica- 
tion for  patent.  TurnbuU  v.  Curtis,  C.  D. 
1906,  120  O.  G.  2442. 

2045.  Where  a  party  was  in  straitened  finan- 
cial condition,  but  his  efforts  during  the  period 
of  delay  in  reducing  to  practice  were  directed 
toward  commercial  exploitation  of  his  inven- 
tions generally,  rather  than  toward  securing 
the  construction  of  the  machine  in  issue  or 
toward  filing  an  application  for  patent  there- 
on. Held,  that  he  was  not  reasonably  diligent 
Id. 

2046.  Where  G.  and  B.  slept  on  their  rights 
and  for  more  than  five  years  failed  to  bring 
their   invention   to   a  complete   and   operative 


INTERFERENCE,  XXXIII,  (g),  2. 


335 


form.  Held,  that  by  their  laches  they  lost 
rights  which  for  a  long  time  they  little  valued 
and  which  they  cannot  now  successfully  as- 
sert *Achman  and  Brown  v.  Hinson,  C.  D. 
1906,  122  O.  G.  731. 

2047.  A.  conceived  the  invention  in  July, 
1902,  and  endeavored  to  make  the  same  in  his 
own  shop  and  to  have  the  same  made  by  an- 
other in  the  latter  part  of  the  year,  but  failed 
on  account  of  lack  of  proper  machinery.  In 
the  early  part  of  January,  1903,  he  applied  to 
a  company  by  which  W.,  the  opposing  party, 
was  employed  and  unsuccessfully  endeavored 
to  make  some  arrangements  with  them  to  man- 
ufacture the  device.  In  April  or  May,  1903, 
he  applied  to  another  company,  who  made  the 
device  some  months  later.  He  filed  his  ap- 
plication December  14,  1903.  W.  entered  the 
field  in  the  latter  part  of  January,  1903,  after 
A.'s  visit  to  his  company,  and  filed  his  appli- 
cation March  27,  1903,  on  which  a  patent  was 
granted  May  26,  1903.  Held,  that  W.  is  en- 
titled to  the  award  of  priority,  as  A.  was  not 
diligent.  *Anderson  v.  Wells,  C.  D.  1906,  122 
O.  G.  3014. 

2048.  Howell  conceived  the  invention  in  the 
spring  of  1900  and  made  a  model  in  April, 
1900,  which  he  immediately  showed  to  the 
typewriter-manufacturing  company  for  whose 
use  the  improvement  was  primarily  intended. 
He  requested  the  company  to  adopt  the  in- 
vention, but  they  did  not  agree  to  do  so. 
After  this  nothing  was  done  by  the  inventor 
until  December,  1900,  except  to  call  the  atten- 
tion of  one  of  the  company's  officers  during 
the  summer  of  1900  to  the  fact  that  nothing 
had  been  done  with  the  invention.  In  the 
meantime,  in  September,  1900,  Hess  conceived 
the  invention.  Held,  that  Howell  was  lacking 
in  diligence.  Howell  v.  Hess,  C.  D.  1906,  122 
O.  G.  2393. 

2.  In  Filing  Application. 

2049.  Where  an  inventor  is  guilty  of  laches 
in  putting  aside  a  machine  for  eleven  years 
after  it  was  perfected  and  tested,  he  is  estop- 
ped by  such  laches  from  receiving  a  patent 
by  reason  of  the  entrance  into  the  same  field 
of  a  rival  inventor  who  reduced  the  invention 
to  practice,  obtained  a  patent,  placed  the  in- 
vention on  the  market,  and  gave  to  the  world 
the  knowledge  and  use  of  such  invention. 
Mower  v.  Crisp  and  Copeland,  C.  D.  1898,  83 
O.  G.  155. 

2050.  While  M.  was  the  first  to  reduce  to 
practice  and  therefore  entitled  to  an  award  of 


priority,  j'et  on  account  of  laches  in  applying 
for  a  patent  he  is  not  entitled  to  a  patent, 
and  the  examiner  directed  to  reject  the  claims 
of  M.  involved  in  the  interference  after  final 
award  of  priority.     Id. 

2051.  Where  it  was  shown  that  the  one  to 
first  conceive  of  the  invention  did  not  have 
the  money  with  which  to  actually  reduce  it 
to  practice,  but  there  was  nothing  to  show 
that  he  could  not  have  filed  an  application 
which  would  have  been  a  constructive  reduc- 
tion to  practice  and  would  have  given  him  the 
benefits  of  an  actual  reduction.  Held,  that 
there  was  no  excuse  for  delay  and  priority 
awarded  to  the  second  to  conceive.  Kasson 
V.  Hetherington,  C.  D.  1899,  88  O.  G.  1157. 

2052.  Where  a  party  claims  to  have  been  in 
possession  of  the  invention  and  to  have  con- 
sulted his  attorney  in  1896  to  see  whether  he 
was  infringing  upon  any  rights.  Held,  that  his 
delay  for  nearly  two  years  thereafter  before 
filing  his  application  is  a  remarkable  circum- 
stance and  tends  to  throw  discredit  upon  his 
whole  story  in  regard  to  the  date  of  his  al- 
leged invention.  *Nielson  v.  Bradshaw,  C.  D. 
1900,  91  O.  G.  644. 

2053.  Where  two  joint  inventors  executed 
an  application  on  July  1,  1896,  which  was  not 
filed  until  May  26,  1867,  more  than  nine 
months  after  the  application  of  the  se- 
nior party  was  filed,  and  the  excuse 
given  for  the  delay  was  that  one  of  the  joint 
inventors  went  abroad  the  latter  part  of  July 
and  before  he  returned  the  company  with 
which  he  was  connected  made  an  assignment ; 
that  the  other  joint  inventor  was  not  in  a  situ- 
ation, financially,  to  go  on  with  the  case  and 
to  pay  the  attorney's  fees  until  after  the  other 
joint  inventor  had  returned  from  abroad. 
Held,  that  it  is  not  consistent  with  the  general 
allegation  of  poverty  that  one  of  the  joint 
inventors  after  the  application  had  been  pre- 
pared could  afford  to  embark  upon  a  long 
tiavel  and  to  remain  absent  for  several  months 
in  a  foreign  country,  which  required  the  ex- 
penditure of  a  considerable  amount  of  money, 
and  the  excuse  for  the  delay  is  not  satisfac- 
tory, especially  where  there  is  no  explanation 
why  some  small  part  of  the  money  so  ex- 
pended could  not  have  been  applied  in  filing 
the  application  in  the  patent  office.  *Jackson 
et  al.  V.  Knapp,  C.  D.  1900,  91  O.  G.  1034. 

2054.  It  is  an  easy  thing  to  allege  that  it  was 
the  want  of  financial  means  to  pay  the  fees 
attending  the  application  that  produced  the 
delay  in  making  it,  and  it  is  sometimes  a  dif- 


336 


INTERFERENCE,  XXXIII,  (g),  2. 


ficult  thing  to  do  to  disprove  the  truth  of 
such  reason  assigned ;  but  where  the  delay 
and  the  circumstances  attending  it  give  rise 
to  the  presumption  of  negligence  the  onus  of 
proof  is  upon  the  party  charged  with  the 
delay,  and  it  is  incumbent  upon  him  to  repel 
such  presumption  by  clear  and  definite  proof. 
♦Id. 

2055.  The  bare  assertion  of  inability  to  pay 
the  expenses  of  an  application  for  a  patent 
will  not  suffice  to  excuse  the  party  charged 
with  negligence  to  prevent  the  effect  of  delay 
when  the  question  of  due  diligence  becomes 
important  in  determining  the  question  of  right 
as  between  such  party  and  another  who  has 
been  diligent  and  prior  in  point  of  time  in 
coming  into  the  patent  office  for  a  patent, 
though  he  may  be  subsequent  in  conception 
and  perfecting  his  invention.    *Id. 

2056.  The  mere  statement  that  a  party  was 
unable  to  pay  the  expenses  of  an  application, 
without  showing  the  special  facts  and  circum- 
stances that  rendered  him  unable,  will  not  do. 
The  special  facts  should  be  shown  and  not 
mere  general  conclusions,  which  may  have 
been  wholly  unjustified  by  the  facts.     *Id. 

2057.  The  proof  offered  in  this  case  to  re- 
lieve appellants  of  the  charge  of  negligence  is 
the  same  as  that  offered  in  the  case  of  Jack- 
son et  al.  v.  Knapp,  ante,  281,  91  O.  G.  1034, 
and  for  the  same  reason  that  was  held  in 
that  case — that  the  appellants  had  not  by  suf- 
ficient proof  relieved  themselves  of  the  con- 
sequence of  their  delay  and  neglect — the  de- 
cision of  the  commissionter  of  patents  award- 
ing priority  to  their  opponents  is  affirmed. 
♦Jackson  et  al.  v.  Getz  et  al.,  C.  D.  1900,  91 
O.  G.  lorifi. 

2058.  Where  the  appellant  took  out  seven 
patents  on  other  inventions  after  the  alleged 
reduction  to  practice  before  he  filed  his  pres- 
ent application.  Held,  that  his  delay  and  ap- 
parent indifference  in  regard  to  an  application 
until  after  he  saw  the  patent  of  the  appellee 
are  significant.  ♦Kelly  v.  Fynn,  C.  D.  1900, 
93  O.  G.  1237. 

2059.  Where  the  applicant  alleged  that  he 
made  the  invention  in  1892  yet  he  did  not 
apply  for  a  patent  until  189S,  after  his  oppo- 
nent had  obtained  a  patent,  and  in  the  interim 
he  had  filed  several  other  applications.  Held, 
that  it  is  reasonable  to  suppose  that  if  appli- 
cant had  in  his  possession  the  invention  at  the 
time  alleged  he  would  have  applied  for  a  pat- 
ent earlier  and  not  have  held  the  invention 
unprotected  for  more  than  five  years  and  until 


after  another  had  applied  for  and  obtained  a 
patent  for  the  same  thing.  ♦Locke  v.  Bock, 
C.  D.  1900,  399,  93  O.  G.  1722. 

2060.  Where  S.  was  engaged  in  the  special 
work  of  devising  means  to  remedy  imperfec- 
tions in  scales  of  the  class  in  controversy, 
having  taken  out  several  patents  upon  that 
line,  and  where  he  claims  to  have  completed 
the  particular  invention  in  issue,  Held,  that  his 
failure  to  apply  for  a  patent  until  six  months 
after  he  had  seen  M.'s  device  is  peculiarly 
significant.  ♦Swihart  v.  Mauldin,  C.  D.  1902, 
99  O.  G.  2322. 

2061.  Where  W.  conceived  the  invention  in 
IS'.u,  constructively  reduced  it  to  practice  by 
filing  his  application  in  1890,  and  in  the  mean- 
time did  nothing  with  it  save  to  try  to  get  a 
few  persons  with  means  interested  in  it,  and 
where  D.  conceived  in  May,  1898,  and  reduced 
to  practice  a  few  months  thereafter.  Held, 
that  D.  is  the  first  inventor.  ♦Wyman  v.  Don- 
nelly, C.  D.  1903,  104  O.  G.  310. 

2062.  Where  a  machine  embodying  the  in- 
vention was  too  expensive  for  W.  to  build 
and  he  did  nothing  with  the  invention  for  five 
years  after  his  conception  except  make  a  few 
efforts  to  enlist  the  interest  of  men  of  cap- 
ital, although  he  was  able  to  file  an  applica- 
tion for  a  patent  at  any  time.  Held,  tliat  he 
was  lacking  in  diligence.     *Id. 

2063.  Where  D.  was  the  first  to  conceive 
but  the  last  to  reduce  to  practice  and  delayed 
filing  his  application  for  a  period  of  two 
years,  during  which  time  T.  obtained  his  pat- 
ent. Held,  That  T.  is  to  be  regarded  as  the 
inventor.  *Dashiell  v.  Tasker,  C.  D.  1903,  103 
O.  G.  2174. 

2064.  Where  Talbot  claims  to  have  been  in 
possession  of  the  invention  for  ten  years,  but 
made  no  effort  to  patent  it,  although  he  pat- 
ented other  processes,  and  where  he  ridiculed 
Monell's  process  as  impractical  and  after  the 
grant  of  Monell's  patent  he  copied  it  and 
secured  an  interference.  Held,  that  his  claim 
as  the  prior  inventor  is  discredited.  ♦Talbot 
V.  Monell,  C.  D.  1904,  109  O.  G.  280. 

2065.  Where  Paul  had  a  conception  of  the 
invention  so  complete  and  definite  in  1891 
that  he  could  have  given  the  necessary  in- 
formation from  which  an  application  for  pat- 
ent could  have  been  prepared.  Held,  that  there 
was  no  reason  or  necessity  for  delaying  the 
application  until  1896,  and  that  his  delay  shows 
a  lack  of  diligence.  *Paul  v.  Johnson,  C.  D. 
1904,  109  O.   G.   807. 


INTERFERENCE,  XXXIII,  (g),  2. 


337 


2066.  Where  during  the  period  of  delay 
when  Paul  says  he  was  unable  to  do  anything 
it  appears  that  he  filed  applications  relating 
to  other  inventions,  Held,  that  his  claim  that 
the   delay   was   unavoidable   is   not   sustained. 

*Id. 

2067.  Where  in  excuse  of  delay  in  filing  an 
application  a  party  urges  that  he  could  not 
come  to  terms  with  the  company  and  that  as 
their  employee,  constructing  the  machine  at 
their  expense,  it  was  proper  that  he  should 
not  apply  for  patent  on  his  own  account.  Held, 
these  reasons  for  delay  insufficient,  as  not  show- 
ing why  an  understanding  with  the  company 
could  not  have  been  reached,  as  involving 
mere  business  considerations  and  not  circum- 
stances of  a  compelling  nature,  and  as  not 
proved,  in  that  they  depend  upon  the  unsup- 
ported assertions  of  the  party.  Paul  v.  Hess, 
C.  D.  1904,  113  O.  G.  847. 

2068.  Where  S.  conceived  the  invention  in 
1S9.T  or  1896  and  reduced  it  to  practice  by 
building  a  machine  from  September,  1898,  to 
June,  1899,  and  in  the  meantime  did  nothing 
toward  testing  the  invention  or  filing  an  ap- 
plication, and  where  D.  filed  his  application 
in  January,  1898,  Held.  D.  is  the  first  inventor. 
Seeberger  v.  Dodge,  C.  D.  1904,  113  O.  G. 
141.5. 

2069.  Where  neither  party  actually  reduces 
an  invention  to  practice  and  all  that  each  has 
done  is  to  conceive  of  an  invention  and  file 
an  application,  Held,  that  while  weeks  and 
months  and  perhaps  even  years  may  not 
count  for  much  in  the  race  of  diligence  be- 
tween rival  inventors  when  the  time  is  to  be 
applied  to  the  actual  reduction  to  practice  of 
a  complicated  invention,  whose  operativeness 
it  is  required  to  prove  by  laborious  experi- 
ment, yet  an  unexplained  delay  by  the  first 
conceiver  in  merely  filing  an  application  for 
a  patent  warrants  the  granting  of  the  patent 
to  a  more  diligent  opponent.  *Ritter  v.  Kra- 
kau  and  Connor,  C.  D.  1905,  114  O.  G.  1553. 

2070.  Where  S.  conceived  the  invention  in 
May,  1895,  and  had  such  complete  drawings 
made  in  the  summer  of  1896  that  he  could 
have  filed  an  application  for  patent  at  that 
time,  but  did  not  do  so  or  reduce  the  inven- 
tion to  actual  practice  until  after  D.  filed  his 
application  in  January,  1898,  Held,  that  S. 
was  lacking  in  diligence.  *Seeberger  v.  Dodge, 
C.   D.   1905,  114  O.  G.  2382. 

2071.  Granting  that  actual  reduction  to 
practice   is   preferable  to   that   which    is   con- 

22 


structive  merely,  as  more  to  the  interest  of 
the  public,  and  that  reasonable  indulgence 
ought  to  be  extended  to  one  pursuing  that 
course  in  good  faith,  yet  when  the  construc- 
tion of  an  experimental  device  involves  so 
great  cost  and  risk  that  an  inventor,  though 
possessed  of  sufficient  means,  may  well  hesi- 
tate to  undertake  the  same  entirely  at  his 
own  expense,  due  diligence  requires  that  he 
should  then  attempt  to  secure  his  right  and 
promote  the  public  interest  by  filing  an  appli- 
cation for  patent.     *Id. 

2072.  Where  an  inventor  relies  upon  the 
constructive  reduction  to  practice  established 
by  his  application,  and  upon  diligence,  coup- 
ling this  with  an  earlier  conception,  and 
urges  in  excuse  of  delay  in  filing  the  applica- 
tion that  he  could  not  come  to  terms  with 
the  company  at  whose  expense  the  invention 
had  been  made.  Held,  this  excuse  is  insuffi- 
cient, as  it  does  not  attempt  to  explain  why 
an  understanding  could  not  have  been  reached 
earlier  either  that  the  company  file  the  appli- 
cation or  allow  the  inventor  to  protect  the  in- 
vention himself.    *Id. 

2073.  Where  the  excuse  given  for  delay  in 
filing  application  for  patent  is  impossibility 
of  agreement  with  employers  concerning  the 
invention,  Held,  that  the  excuse  is  insufficient 
to  establish  diligence,  as  it  involves  business 
considerations  rather  than  circumstances  of 
a  compelling  nature.    *Id. 

2074.  Where  a  delay  in  filing  an  applica- 
tion is  due  to  the  business  convenience  of  the 
assignee  and  it  is  shown  that  during  that  delay 
the  assignee  filed  many  applications  for  other 
inventions,  Held,  that  the  delay  in  filing  the 
application  in  controversy  is  not  excused  and 
diligence  is  not  established  beyond  a  reason- 
able doubt.  Rolfe  v.  Hoffman,  C.  D.  1905, 
118  O.  G.  83.'5. 

2075.  The  contention  that  a  party  could 
not  file  his  application  earlier  than  he  did  is 
rebutted  by  the  fact  that  he  filed  or  caused  to 
be  filed  subsequent  to  his  conception  of  the 
invention  in  issue  and  prior  to  the  filing  of 
his  application  in  interference  applications  for 
patents  upon  six  other  inventions.  Turnbull 
V.  Curtis,  C.  D.  1906,  120  O.  G.  2442. 

2076.  It  is  to  be  presumed  that  an  invention 
which  is  contested  in  interference  proceedings 
is  a  valuable  asset  and  that  an  inventor  if 
without  other  means  can  ordinarily  draw  on 
this  source,  at  least  for  means  wherewith  to 
file  his  application.     If  he  fails  to  do  so,  he 


338 


INTERFERENCE,  XXXIII,  (g),  2. 


must  show  that  the  failure  was  unavoidable 
and  after  every  reasonable  effort  in  that  di- 
rection had  been  exerted.     Id. 

2077.  Where  during  his  more  than  three 
years  of  inaction  Turnbull  appli«d  for  six 
patents  for  other  inventions  and,  while  poor, 
had  the  available  means  to  make  an  applica- 
tion for  this  one,  Held,  that  his  lack  of  dili- 
gence could  not  be  excused  on  the  ground  of 
poverty.  *Id.  Turnbull  v.  Curtis,  C.  D.  1906, 
123   O.   G.   2312. 

2078.  Where  the  real  ground  of  delay,  as 
disclosed  by  the  evidence,  was  that  the  in- 
ventor thought  it  to  his  interest  to  withhold 
his  application  until  he  might  be  able  to  make 
an  advantageous  arrangement  with  some  per- 
son of  large  capital  for  the  exploitation  of  the 
invention,  Held,  that  such  an  excuse  for  lack 
of  diligence  is  insufficient.  (Seeberger  v. 
Dodge,  C.  D.  190.5,  603,  114  O.  G.  2382,  24 
App.  D.  C.  476,  485;  Wyman  v.  Donnelly,  C. 
D.  1903,  556,  104  O.  G.  310,  21  App.  D.  C.  81, 
87.)     *Id. 

2079.  A  delay  of  nearly  three  years  in  filing 
an  application  after  an  alleged  reduction  to 
practice  by  one  who  was  a  manufacturer  in 
the  art  to  which  the  invention  belonged  and 
who  had  full  knowledge  of  the  need  for  the 
invention  and  ample  means  for  making  im- 
provements outweighs  the  mere  oral  testimony 
of  witnesses  who  do  not  testify  clearly  and 
positively.  *Bourn  v.  Hill,  Jr.,  C.  D.  1906, 
123  O.  G.  1284. 

2080.  An  inventor  who  delays  the  filing  of 
an  application  for  more  than  two  years  and 
who  fails  to  take  any  other  steps  to  protect 
his  rights  is  lacking  in  diligence,  and  a  plea 
of  poverty  cannot  be  accepted  as  a  sufficient 
excuse  for  the  delay  where  it  appears  that  he 
was  possessed  of  sufficient  means  to  file  an 
application  for  another  invention  and  to  take 
out  foreign  patents  thereon.  Gibbons  v.  Peller, 
C.  D.  1906,  124  O.  G.  624. 

2081.  Where  a  claimant  to  the  inventorship 
of  a  device  sees  such  device  offered  for  sale 
in  the  open  market  and  at  the  time  makes  no 
claim  that  he  is  the  inventor  thereof  and  fails 
to  file  an  application  within  a  reasonable  time 
and  files  it  finally  only  at  the  solicitation  of 
another,  the  presumption  is  strong  that  he  did 
not  make  the  invention  at  the  time  claimed. 
Id. 

2082.  Where  an  inventor  after  an  alleged 
reduction  to  practice  of  his  invention  lays  it 
aside   for   five   years,   during   which   time   he 


files  several  domestic  and  foreign  applications 
and  develops  another  system  to  accomplish 
the  same  purpose  which  he  regards  as  su- 
perior, and  fails  to  file  an  application  until 
after  the  grant  of  a  patent  to  another  for 
the  same  invention  who  was  proceeding  in 
good  faith,  he  is  guilty  of  inexcusable  laches. 
*Bliss  V.  McElroy,  C.  D.  1907,  128  O.  G.  458. 

2083.  Where  McA.  conceived  the  invention 
in  the  summer  of  1903,  but  did  practically 
nothing  toward  reduction  to  practice  until 
April  21,  1904,  when  he  wrote  to  his  patent 
attorney  instructing  him  to  file  an  application, 
which  was  prepared  promptly  and  sent  to 
McA.,  but  was  not  filed  until  September  19, 
1904,  Held,  that  he  was  not  diligent  as  against 
M.,  who  entered  the  field  on  March  1,  1904. 
McXrthur  v.  Mygatt,  C.  D.  1908,  132  O.  G. 
1585. 

2084.  Where  it  appears  that  Kinsman  in- 
stalled mechanism  embracing  part  of  the  issue 
in  1890  which  was  experimental  in  its  nature 
and  found  to  be  unsuccessful,  and  immediate- 
ly thereafter  unsuccessfully  tested  a  second 
experimental  device,  and  in  1892  and  1893  in- 
stalled a  system  embodying  the  invention 
which  after  being  used  for  several  months 
was  taken  out  and  discarded,  and  no  further 
evidence  of  activity  on  the  part  of  Kinsman 
was  shown  prior  to  the  filing  of  his  applica- 
tion in  December,  1903,  which  was  subsequent 
to  the  time  Kintner  entered  the  field  and  re- 
duced the  invention  to  practice,  and  during 
this  time  Kinsman  was  active  in  experimenting 
with  other  forms  of  invention.  Held,  that  he 
was  lacking  in  diligence.  *Kinsman  v.  Kint- 
ner, C.  D.  1908,  136  O.  G.  1532. 

2085.  The  object  of  the  patent  laws  is  to 
foster  and  protect  invention  for  the  universal 
benefit  of  mankind,  and  while  every  presump- 
tion will  be  resolved  in  favor  of  the  inventor 
who  delays  filing  an  application  until  he  has 
perfected  his  invention,  the  object  of  the  law 
would  be  lost  to  view  should  we  permit  the 
displacement  of  an  inventor  who  has  given 
the  world  the  benefit  of  his  discovery  by  one 
who  has  permitted  his  invention  to  lie  dor- 
mant for  a  decade.    *Id. 

2086.  Where  the  appellant  established  con- 
ception and  disclosure  of  the  invention  in  the 
summer  of  1903,  but  took  no  steps  toward  re- 
ducing the  invention  to  practice  until  April 
21,  1904,  when  he  instructed  his  attorney  to 
prepare  an  application  for  patent,  which  was 
not,  however,  filed  until   September  19,  1904, 


INTERFERENCE,  XXXIII,  (g),  3. 


339 


while  his  opponents  entered  the  field  on  March 
1,  1904,  and  in  excuse  of  his  lack  of  diligence 
urged  that  his  financial  condition  was  such 
that  it  was  impossible  for  him  to  reduce  the 
invention  to  practice  earlier,  but  the  testimony 
showed  that  in  the  meantime  he  had  enlarged 
his  business  and  that  his  gross  income  amount- 
ed to  about  two  hundred  dollars  a  month, 
Held,  that  the  showing  is  insufficient  to  excuse 
the  appellant's  lack  of  diligence.  *McArthur 
V.  Mygatt,  C.  D.  1908,  136  O.  G.  661. 

3.  In  Reduction  to   Practice. 

2087.  The  decision  of  the  commissioner  of 
patents  awarding  priority  of  invention  to 
Shipley  and  Hyde  affirmed  for  the  reason  that 
although  Piatt  was  the  first  to  conceive  he 
was  the  last  to  reduce  the  invention  to  prac- 
tice and  did  not  use  due  diligence  in  such  re- 
duction to  practice.  *Platt  v.  Shipley  et  al., 
C.   D.   1898,  82  O.   G.  461. 

2088.  A  person  cannot  be  charged  in  law 
with  any  want  of  due  diligence  before  the  ad- 
vent of  a  rival  inventor  upon  the  field ;  but 
at  and  after  that  time  he  becomes  liable  to 
lose  the  benefit  of  his  previous  conception  un- 
less he  uses  due  diligence.  Delay  for  the 
purpose  of  the  elaboration  and  perfection  of 
a  crude  conception  may  well  be  commended ; 
but  it  will  not  be  excused  where  no  such  end 
is  in  view.    *Id. 

2089.  The  fact  that  a  party  does  not  know 
that  a  rival  has  entered  the  field  is  no  excuse 
for  delay,  since  the  risk  that  a  rival  may  ap- 
pear at  any  time  is  something  which  every  in- 
ventor is  bound  to  contemplate  and  to  antici- 
pate, and  in  this  lies  the  fundamental  reason 
for  the  requirement  of  due  diligence.    *Id. 

2090.  Although  F.  was  the  first  to  conceive, 
n.  was  the  first  to  reduce  to  practice,  and  as 
F.  did  not  use  due  diligence  in  perfecting  the 
invention.  Held,  that  D.  should  be  awarded 
priority.  Decision  of  the  commissioner  of 
patents  reversed.  *Dodge  v.  Fowler,  C.  D. 
1898,  82   O.   G.   595. 

2091.  Where  the  testimony  showed  that  F.'s 
delay  was  occasioned  only  by  the  fact  that 
some  one  to  whom  he  had  made  application 
refused  or  declined  at  the  time  to  construct  a 
machine  for  him.  Held,  that  if  such  a  cause 
were  allowed  to  excuse  total  inaction  in  re- 
gard to  the  invention  and  the  discarding  of  it 
for  the  time  for  other  and  more  immediately 
profitable  enterprises  it  is  difficult  to  see  why 


inaction  might  not  be  justified  forever  and 
all  rival  inventors  effectually  barred  out  of 
the  field  of  invention.     Id. 

2092.  Where  it  appeared  that  the  first  in- 
ventor to  conceive  could  have  completed  a 
drawing  in  a  short  time  after  it  was  begun, 
but  he  took  five  months  to  do  so  because  there 
was  no  hurry  for  it,  and  after  the  drawing 
was  finished  his  assignee  still  further  delayed 
for  one  year  and  four  months  in  reducing  the 
invention  to  practice  because  there  was  no 
hurry  to  reduce  it  to  practice,  as  it  was  not 
sooner  needed.  Held,  that  there  was  no  ex- 
cuse for  such  delay  and  priority  of  invention 
awarded  to  the  second  to  conceive  but  the 
first  to  reduce  to  practice.  Kasson  v.  Hether- 
ington,  C.  D.  1899,  88  O.  G.  1157. 

2093.  Diligence  cannot  wait  upon  the  con- 
venience or  business  arrangements  of  an  in- 
ventor or  his  company.  (Dailey  v.  Jones,  C. 
D.  1S94,  71,  67  O.  G.  1719,  cited.)     Id. 

2094.  Although  Marvel  was  the  first  to 
conceive,  he  did  not  show  reasonable  diligence 
in  reducing  his  invention  to  practice,  and 
Decker  having  conceived  and  reduced  to  prac- 
tice in  the  meantime.  Held,  that  the  decision 
of  the  commissioner  should  be  affirmed  and 
priority  awarded  to  Decker.  *Marvcl  v.  Deck- 
er et  al.,  C.  D.  1899,  86  O.  G.  348. 

2095.  The  decision  of  the  commissioner  of 
patents  holding  that  although  Cross  was  the 
first  to  conceive  the  invention  Phillips  was  the 
first  to  reduce  to  practice,  and  as  Cross  was 
not  reasonably  diligent  in  reducing  to  prac- 
tice priority  should  be  awarded  to  Phillips, 
affirmed.  *Cross  v.  Phillips,  C.  D.  1899,  87 
O.  G.  1399. 

2096.  Where  the  party  first  to  conceive  but 
the  last  to  reduce  to  practice  did  nothing  for 
nine  years  between  his  conception  and  reduc- 
tion to  practice  except  to  make  drawings  and 
talk  about  the  invention  occasionally  and  to 
urge  one  or  two  persons  "to  take  it  up,"  and 
in  the  meantime  had  taken  out  patents  on  the 
same  subject-matter.  Held,  that  there  is  no 
sufficient  excuse  offered  for  delay  in  reducing 
to  practice.  *Marvel  v.  Decker  et  al.,  C.  D. 
1899,   86  O.  G.  348. 

2097.  Where  it  is  admitted  that  G.  actually 
reduced  the  invention  to  practice  in  June, 
1897,  and  he  is  entitled  to  constructive  reduc- 
tion to  practice  by  filing  his  application  in 
August,  1897.  he  is  entitled  to  the  decision  on 
priority,  even  if  it  be  conceded  that  D.  had 
a  conception   of   tlie   invention   prior   to   that 


340 


INTERFERENCE,  XXXIII,  (g),  3. 


time,  since  D.  has  not  shown  an  actual  re- 
duction to  practice  at  any  time  or  diligence 
up  to  the  time  when  he  filed  his  application 
a  year  later.  *Darnell  v.  Grant,  C.  D.  1900, 
02  O.  G.  557. 

2098.  Where  D.  may  have  been  the  first 
to  conceive  the  invention,  but  G.  was  the  first 
by  a  year  to  reduce  it  to  practice  and  D.  did 
not  show  diligence  during  his  delay,  Held, 
that  the  decision  of  the  commissioner  of  pat- 
ents in  favor  of  G.  was  correct  and  will  be 
affirmed.    *Id. 

2099.  Where  S.  conceived  the  invention  in 
April,  1897,  but  did  not  reduce  it  to  practice 
until  November,  1899,  and  in  the  meantime 
devoted  his  energies  to  perfecting  a  machine 
for  easily  and  economically  applying  the  in- 
vention, whereas  K.  conceived  in  October, 
1898,  and  reduced  the  invention  to  practice 
in  April,  1899,  Held,  that  K.  is  to  be  regarded 
as  the  first  inventor,  and  therefore  the  deci- 
sion of  the  commissioner  of  patents  is  affirm- 
ed. *Stapleton  v.  Kinney,  C.  D.  1901,  96  O. 
G.  1432. 

2100.  Where  S.  had  a  conception  of  an  im- 
proved retaining  device  for  rubber  tires  and 
could  have  applied  it  to  practical  use  at  any 
time  by  means  then  well  known  in  the  art, 
although  such  means  was  crude  and  imperfect, 
but  instead  of  so  doing  he  devoted  his  time 
for  more  than  two  years  to  devising  a  simple 
and  economical  machine  for  applying  the  re- 
taining device,  Held,  that  he  did  not  exercise 
diligence  in  regard  to  the  retaining  device. 
*Id. 

2101.  Although  in  some  instances  a  device 
may  be  dependent  for  its  practical  use  upon 
the  invention  of  further  or  additional  mechan- 
ical appliances,  notwithstanding  the  fact  that 
the  two  devices  may  be  regarded  as  patent- 
ably  distinct  and  separate  in  the  patent  office 
and  in  such  case  a  pause  in  the  perfection  of 
one  would  be  excused  by  due  diligence  in  the 
completion  of  the  other.  Held,  that  this  is 
not  such  a  case.     *Id. 

2102.  Assuming  the  truth  of  the  statement 
contained  in  the  preliminary  statement  of  F. 
or  even  that  contained  in  his  testimony  as  to 
the  time  of  conception  of  the  invention,  the 
great  delay  in  attempting  to  complete  and  re- 
duce the  invention  to  practical  operation  is 
entirely  without  explanation  and  must  con- 
sequently give  rise  to  a  strong  presumption 
against  his  pretensions.  *Id.  Funk  v.  Matteson 
V.  Haines,  C.  D.  1902,  100  O.  G.  1764. 


2103.  Where  W.  conceived  the  invention  in 
1894  and  did  not  reduce  it  to  practice  or  file 
an  application  until  after  D.  completed  the  in- 
vention in  1898,  Held,  that  his  long  delay  can- 
not be  excused  by  the  fact  that  the  machine 
was  large  and  expensive  and  by  the  allegation 
that  he  was  not  financially  able  to  build  and 
test  the  machine.  Donnelly  v.  Wyman,  C.  D. 
1903,  103  O.  G.  657. 

2104.  Where  L.  reduced  the  invention  to 
practice  in  December,  1897,  and  at  that  time 
H.  was  doing  nothing  with  the  invention,  al- 
though he  claims  to  have  conceived  it  one 
year  before,  Held,  that  L.  is  the  first  inventor. 
Hallwood  V.  Lalor  v.  BockhofI,  C.  D.  1903, 
103  O.  G.  887. 

2105.  Where  H.  did  not  reduce  his  inven- 
tion to  practice  for  fifteen  months  after  his 
conception,  although  he  was  possessed  of 
ample  means  and  facilities,  and  he  gives  as 
an  excuse  that  he  was  busy  upon  other  more 
important  inventions.  Held,  that  he  was  lack- 
ing in  diligence.     Id. 

2106.  Where  H.  conceived  the  invention  in 
January,  1897,  and  did  nothing  with  it  until 
May,  1898,  although  possessed  of  ample  means 
and  facilities,  and  L.  reduced  the  invention  to 
practice  in  1897,  Held,  that  L.  must  be  regard- 
ed as  the  first  inventor  whether  or  not  he  was 
first  to  conceive.  *Hallwood  v.  Lalor,  C.  D. 
1903,  103  O.  G.  2173. 

2107.  Where  H.  claims  to  have  conceived 
the  invention  in  August,  1890,  and  did  not 
file  an  application  or  reduce  it  to  practice  for 
two  years  thereafter,  during  which  time  S. 
and  L.  entered  the  field.  Held,  that  he  was 
lacking  in  diligence  and  that  S.  and  L.  must 
be  regarded  as  the  first  inventors.  Harris  v. 
Stern  and  Lotz,  C.  D.  1903,  105  O.  G.  259. 

2108.  Where  the  senior  party  to  an  inter- 
ference takes  no  testimony,  but  relies  on  his 
record  date,  and  the  junior  party  proves  a  date 
of  conception  prior  to  this  date,  but  does  not 
show  that  he  was  exercising  diligence  in  re- 
ducing the  invention  to  practice  when  the 
senior  party  filed  his  application,  Held,  that 
the  senior  party  is  entitled  to  an  award  of 
priority.  Pihl  v.  Mersman,  C.  D.  1903,  106 
O.  G.  1775. 

2109.  Where  the  senior  party  filed  his  ap- 
plication on  June  28,  1901,  and  the  junior  party 
filed  July  8,  1901,  and  the  testimony  in  behalf 
of  the  junior  party  shows  he  had  a  concep- 
tion of  the  invention  as  early  as  January, 
1901,  but  it  does  not  show  that  he  took  any 


INTERFERENCE,  XXXIII,  (g),  3. 


341 


steps  after  that  time  toward  reducing  the  in- 
vention to  practice  until  after  the  date  of 
filing  of  the  senior  party,  Held,  that  the  senior 
party  is  the  prior  inventor.     Id. 

2110.  Where  an  inventor  might  have  pro- 
ceeded in  reducing  his  invention  to  practice, 
but  deliberately  withheld  from  that  course  be- 
cause he  was  not  at  liberty  to  do  so  by  rea- 
son of  a  certain  contract  into  which  he  had 
entered,  Held,  that  such  an  excuse  will  not 
justify  the  delay,  as  diligence  will  not  wait 
on  business  convenience.  Kasson  v.  Hether- 
ington,  C.  D.  1899,  143,  88  O.  G.  1157.  Wat- 
son V.  Thomas,  C.  D.  1903,  106  O.  G.  1776. 

2111.  Where  P.  conceived  the  invention  in 
1891  and  did  nothing  with  it  but  talk  of  it  and 
make  drawings  of  it  until  1896  and  where  J. 
entered  the  field  July,  1895,  and  was  the  first 
to  file  his  application.  Held,  that  J.  is  to  be 
regarded  as  the  first  inventor.  Paul  v.  John- 
son, C.  D.  1903,  196  O.  G.  2013. 

2112.  Where  P.  was  the  first  to  conceive 
and  the  last  to  reduce  to  practice  and  attempts 
to  e.xcuse  his  inactivity  at  the  time  that  J. 
entered  the  field  by  showing  that  he  was  in- 
capacitated by  illness,  but  it  appears  that  he 
was  doing  nothing  before  and  after  his  ill- 
ness. Held,  that  he  was  lacking  in  diligence. 
Id. 

2113.  Where  L.  claims  conception  in  March, 
1900,  and  reduction  to  practice  in  December, 
1900,  and  W.  proves  conception  and  reduction 
to  practice  in  July,  1900,  Held,  that  W.  must 
be  regarded  as  the  first  inventor  in  the  ab- 
sence of  a  showing  that  L.  was  diligently  en- 
gaged in  perfecting  his  invention.  Williams 
V.  Liberman,  C.  D.  1903,  107  O.  G.  832. 

2114.  Where  after  his  conception  L.  did 
nothing  with  the  invention  for  seven  months, 
during  which  time  he  made  machines  em- 
bodying substitute  constructions  and  applied 
for  a  patent  upon  one  of  them  and  intention- 
ally delayed  action  upon  the  invention  in  con- 
troversy, Held,  that  he  was  lacking  in  dili- 
gence.    Id. 

2115.  Held,  that  Watson  was  the  first  to 
conceive  the  invention  and  the  last  to  reduce 
to  practice  and  that  he  has  not  shown  that 
he  was  exercising  diligence.  The  decision  of 
the  commissioner  of  patents  awarding  prior- 
ity of  invention  to  Thomas  affirmed.  ♦Wat- 
son V.  Thomas,  C.  D.  1904,  108  O.  G.  1590. 

2116.  Where  the  inventor  who  was  first  to 
conceive  the  invention  produces  no  evidence 
whatever  of  any  action  on  his  part  to  reduce 


the  invention  to  practice  beyond  the  making 
of  some  working  drawings  and  a  blue-print 
from  them.  Held,  that  these  acts  cannot  be 
held  to  be  a  manifestation  of  due  diligence. 
*Id. 

2117.  Where  the  burden  is  upon  a  party  to 
show  diligence  between  his  conception  and  re- 
duction to  practice  and  his  proofs  leave  it  in 
doubt  whether  the  alleged  steps  taken  by 
him  were  before  or  after  his  opponent  entered 
the  field.  Held,  that  he  has  not  proved  dili- 
gence, and  the  decision  must  be  against  him. 
*Id. 

2118.  Held,  that  Paul  was  the  first  to  con- 
ceive the  invention,  but  was  the  last  to  reduce 
to  practice,  and  that  he  was  not  exercising  dil- 
igence when  Johnson  entered  the  field  and 
filed  his  application,  and  that  therefore  John- 
son is  to  be  regarded  as  the  inventor.  *Paul 
v.  Johnson,  C.  D.  1904,  109  O.  G.  807. 

2119.  Where  during  the  time  between  his 
conception  and  his  reduction  to  practice  Paul 
had  drawings  of  the  invention  made,  but  put 
them  to  no  use  and  locked  them  up  in  his 
desk,  Held,  not  to  constitute  diligence  in 
adapting  and  perfecting  the  invention.    *Id. 

2120.  Held,  that  Thomas  was  the  last  to 
conceive  the  invention,  but  the  first  to  reduce 
to  practice,  and  that  Trissell  was  not  exer- 
cising diligence  when  Thomas  entered  the 
held,  and  that  therefore  Thomas  is  to  be  re- 
garded as  the  first  inventor.  *TrisseIl  v. 
Thomas,  C.  D.  1904,  109  O.  G.  809. 

2121.  Held,  that  Liberman,  although  first 
to  conceive  the  invention,  was  the  last  to  re- 
duce it  to  practice  and  did  not  exercise  dili- 
gence in  perfecting  it,  and  that  therefore  the 
decision  in  favor  of  Williams  as  the  first  in- 
ventor is  right.  *Liberman  v.  Williams,  C.  D. 
1904,  109  O.  G.  1610. 

2122.  Where  Liberman  did  not  reduce  the 
invention  to  practice  for  nine  months  after  his 
conception  and  during  that  time  deliberately 
and  intentionally  put  it  aside  while  he  worked 
upon  other  inventions  in  the  same  art.  Held, 
that  he  was  lacking  in  diligence.    *Id. 

2123.  Assuming  that  L.  was  the  first  to  con- 
ceive, he  was  the  last  to  reduce  to  practice  and 
gives  no  satisfactory  reason  for  a  delay  of 
more  than  a  year  in  reducing  to  practice,  or 
at  le'ast  filing  his  application  for  patent,  and 
therefore  it  is  Held,  that  H.  is  to  be  regarded 
as  the  first  inventor.  *Lotterhand  v.  Hanson, 
C.  D.  1904,  110  O.  G.  861. 


343 


INTERFERENCE,  XXXIII.  (g),  3. 


2124.  To  delay  one  invention  for  the  sake 
of  another  projected  invention  to  be  used  in 
connection  with  it  and  which  might  never  be 
realized  cannot  be  construed  in  the  patent  law 
as  an  exercise  of  due  diligence.     *Id. 

2125.  Where  the  evidence  shows  that  C.  was 
the  first  to  conceive  of  the  invention  as  to 
counts  1,  2,  3,  and  5  of  the  issue,  and  though 
last  to  reduce  to  practice  he  was  diligent  in 
so  doing,  and  that  C.  was  first  to  reduce  to 
practice  the  invention  defined  in  counts  4  and 
6,  Held,  that  C.  is  the  prior  inventor  as  to  all 
the  counts,  because  McK.  though  first  to  con- 
ceive was  last  to  reduce  to  practice  the  inven- 
tion of  counts  4  and  6,  and  was  lacking  in  rea- 
sonable diligence.  Cummings  v.  McKenzie, 
C.  D.   1904,  110   O.  G.  1167. 

2126.  Where  the  invention  related  to  esca- 
lators and  S.  made  no  efforts  to  test  that  in- 
vention mechanically,  but  merely  tried  to  get 
investors  and  the  public  interested  in  the  esca- 
lator business,  Held,  that  he  was  lacking  in 
diligence.  Seeberger  v.  Dodge,  C.  D.  1904, 
113  O.  G.  1415. 

2127.  The  large  cost  which  would  be  in- 
volved in  building  and  testing  the  invention 
is  material  only  upon  the  theory  that  the  in- 
ventor could  not  afford  it,  and  where  it  ap- 
pears that  he  could  afford  it  his  failure  to 
test  the  invention  for  three  years  shows  a 
lack  of  diligence.     Id. 

2128.  Where  N.  is  the  second  to  conceive 
and  the  first  to  reduce  to  practice  and  O. 
though  first  to  conceive  fails  to  connect  his 
reduction  to  practice  by  reasonable  diligence, 
Held,  that  priority  of  invention  should  be 
awarded  to  N.  Ocumpaugh  v.  Norton,  C.  D. 
1904,  110  O.  G.  1723. 

2129.  When  an  inventor  is  first  to  conceive 
of  the  invention  of  the  issue  and  last  to  re- 
duce it  to  practice.  Held,  that  work  on  an- 
other independent  invention  while  the  work 
on  the  invention  of  the  issue  is  laid  aside  does 
not  constitute  a  reasonable  diligence  in  re- 
ducing the  invention  of  the  issue  to  practice. 
Robinson  v.  Copeland,  C.  D.  1904,  111  O.  G. 
579. 

2130.  Granting  that  H.  was  the  first  to  con- 
ceive, he  was  not  diligent  when  B.  entered  the 
field  and  reduced  to  practice ;  therefore,  Held, 
that  B.  is  the  prior  inventor.  Basch  v.  Ham- 
mond, C.  D.  1904,  113  O.  G.  551. 

2131.  Where  R.  is  the  first  to  conceive  and 
the  last  to  reduce  to  practice  and  is  lacking 
in  diligence  and  C.  during  R.'s  inactivity  enters 


the  field  and  reduces  to  practice,  Held,  that  C. 
is  the  first  inventor  and  entitled  to  the  award 
of  priority  of  invention.  Decision  of  com- 
missioner of  patents  affirmed.  (Ante,  257,  111 
O.  G.  579.)  *Robinson  v.  Copeland,  C.  D. 
1904,  112  O.  G.  501. 

2132.  Where  H.  claims  to  have  conceived  an 
invention  twelve  years  before  his  opponent  V. 
entered  the  field,  and  did  not  reduce  the  in- 
vention to  practice  until  several  months  after 
v.,  and  the  testimony  shows  that  H.  did  noth- 
ing during  that  twelve  years  but  make  experi- 
mental devices  and  models,  all  of  which  were 
thrown  in  the  scrap,  Held,  that  his  action  in 
throwing  these  alleged  prior  devices  in  the 
scrap-heap  is  a  good  indication  of  their  char- 
acter, and  as  it  is  obvious  that  no  great  amount 
of  labor  would  be  required  to  reduce  the 
invention  to  practice  by  constructing  a  full- 
sized  lock,  H.'s  delay  is  to  be  explained  by  the 
fact  that  he  was  making  no  real  effort  to  re- 
duce the  invention  to  practice.  Voight  v. 
Hope,  C.  D.  1905,  114  O.  G.  762. 

2133.  Held,  that  D.  was  the  first  to  reduce 
the  invention  to  practice,  and  is  to  be  regarded 
as  the  first  inventor,  because  of  a  lack  of  dili- 
gence on  the  part  of  S.  *Seeberger  v.  Dodge, 
C.  D.  1905,  114  O.  G.  2382. 

2134.  Since  S.  was  the  first  to  conceive,  but 
the  last  to  reduce  to  practice,  the  burden  is 
upon  him  to  show  that  immediately  before  D. 
entered  the  field  and  upon  that  date  he  was 
exercising  due  diligence  in  perfecting  his  in- 
vention and  attempting  to  reduce  it  to  actual 
practice.    *Id. 

2135.  Delay  by  an  inventor  in  reducing  his 
invention  to  practice  and  applying  for  a  pat- 
ent is  not  to  be  excused  because  of  his  sup- 
position that  a  prior  patent  owned  by  him 
was  sufficiently  broad  to  include  the  invention. 
*Id. 

2136.  Where  it  appears  that  for  at  least  a 
year  the  only  efforts  of  G.  toward  completing 
his  invention  consisted  in  more  or  less  de- 
sultory talk  about  his  invention,  indecisive  ef- 
forts to  get  his  invention  adopted  by  a  cor- 
poration, and  in  a  leisurely  manner  making 
drawings  of  the  device,  and  where  it  is  shown 
that  it  would  have  cost  but  little  to  have  ac- 
tually reduced  the  invention  to  practice  and 
to  have  made  proper  tests  and  that  he  was 
free  to  take  up  this  work  if  he  so  desired  and 
he  had  ample  means  to  have  at  least  filed  an 
application.  Held,  that  G.  was  not  in  the  ex- 
ercise of   reasonable   diligence   in   completing 


INTERFERENCE,  XXXIII,  (g),  3. 


343 


his  invention.     *GaIlagher,  Jr.  v.  Hien,  C.  D. 
1905,  115  O.  G.  1330. 

2137.  The  responsibility  for  the  lack  of  dil- 
igence by  a  minor  must  rest  upon  some  one 
and  cannot  be  suspended  during  his  minority, 
and  therefore  if  he  shifts  the  responsibility 
to  his  guardian  we  must  look  to  the  action 
of  the  guardian  to  determine  whether  there 
was  reasonable  diligence.     Id. 

2138.  Where  a  party  who  was  a  minor  seeks 
to  excuse  his  lack  of  diligence  in  perfecting 
the  invention  by  the  allegation  that  his  guar- 
dian would  not  permit  him  to  work  on  it. 
Held,  that  the  excuse  is  insufficient,  and  the 
opposing  party,  who  was  the  first  to  reduce 
the  invention  to  practice,  must  be  regarded 
as  the  first  inventor.  Fuller  v.  Jones,  C.  D. 
1905,   115   O.  G.  1066. 

2139.  A  minor  cannot  claim  the  benefit  of 
all  that  he  does  during  his  minority  and  at  the 
same  time  avoid  responsibility  for  all  that  he 
fails  to  do  in  regard  to  the  same  matter.    Id. 

2140.  Where  it  appeared  that  T.  had  no 
conception  of  the  invention  until  after  he 
had  seen  D.'s  machine,  and  J.  did  not  reduce 
the  invention  to  practice  until  after  reduction 
by  D.,  and  does  not  show  diligence  after  his 
alleged  earlier  conception,  Held,  that  D.  is 
the  first  inventor.  Jenner  v.  Dickinson  v.  Thi- 
bodeau,  C.  D.  1905,  116  O.  G.  1181. 

2141.  Where  an  invention  is  complete  in  it- 
self. Held,  that  lack  of  diligence  in  perfecting 
it  will  not  be  e.xcused  by  consuming  the  time 
between  conception  and  reduction  to  practice, 
in  attempting  to  make  other  improvements  to 
be  used  with  it.  Luby  v.  Taylor,  C.  D.  1905, 
118  O.  G.  835. 

2142.  Held,  that  Nilson  was  the  first  to  re- 
duce the  invention  to  practice  and  that  at  the 
time  he  entered  the  field  Andrews  was  not 
exercising  diligence  and  that  therefore  Nilson 
is  to  be  regarded  as  the  first  inventor.  An- 
drews V.  Nilson,  C.  D.  1905,  118  O.  G.  1363. 

2143.  When  F.  in  his  preliminary  statement 
alleged  reduction  to  practice  in  May  and  B.'s 
application  was  filed  in  March  of  the  same 
year  and  no  evidence  was  presented  to  show 
that  F.  was  diligent  in  reducing  to  practice 
from  a  time  prior  to  the  application  date  of 
B.,  Held,  that  F.  cannot  prevail.  Fowler  v. 
Beyer,  C.  D.  1905,  118  O.  G.  2534. 

2144.  Where  T.  conceived  the  invention  and 
made  drawings  and  a  model  more  than  three 
years  before  his  opponent  conceived  the  in- 
vention and  reduced  it  to  practice  and  during 
that  time  T.  did  nothing  with  it  save   work 


occasionally  upon  a  second  model  and  it  ap- 
pears that  he  secured  patents  upon  other  in- 
ventions in  the  same  art.  Held,  that  T.  was 
lacking  in  diligence.  Taylor  v.  Westinghouse, 
C.  D.  190.5,  119  O.  G.  1251. 

2145.  Where  after  making  drawings  and  a 
model  a  party  made  no  attempt  to  reduce  the 
invention  to  practice,  but  merely  worked  oc- 
casionally upon  a  second  model  intended  mere- 
ly for  illustrative  purposes,  Held,  that  the 
making  of  the  second  model  was  not  a  step 
forward  in  the  development  of  the  invention 
and  that  work  thereon  was  not  diligence  in 
adapting  and  perfecting  the  invention.     Id. 

2146.  Where  T.  laid  aside  the  invention  in 
issue  and  as  a  matter  of  choice,  based  upon 
business  considerations,  devoted  his  time  and 
attention  to  other  inventions  and  secured  pat- 
ents upon  them.  Held,  that  he  was  lacking  in 
diligence.     Id. 

2147.  Held,  that  Scott,  although  the  first  to 
conceive  the  invention,  was  the  last  to  con- 
structively reduce  it  to  practice  and  was  not 
exercising  diligence  in  perfecting  it  when 
Laas  and  Sponenburg  entered  the  field  and 
that  therefore  Laas  and  Sponenburg  are  to 
be  regarded  as  the  first  inventors.  Laas  & 
Sponenburg  v.  Scott,  C.  D.  1906,  122  O.  G. 
352. 

2148.  Held,  that  Fowler,  who  is  the  first  to 
conceive  and  disclose,  but  is  the  later  to  re- 
duce to  practice,  has  failed  to  show  diligence 
and  that  priority  should  be  awarded  to  Dyson. 
♦Fowler  V.  Dyson,  C.  D.  1906,  121  O.  G.  1015. 

2149.  Where  F.  conceived  the  invention  in 
September,  1903,  and  reduced  it  to  practice  in 
May,  1904,  but  did  nothing  with  the  invention 
between  September,  1903,  and  April,  1904, 
while  C.  established  conception  and  reduction 
to  practice  in  March,  1904,  Held,  that  C.  is  the 
prior  inventor.  Feinberg  v.  Cowan,  C.  D. 
1906,  125  O.  G.  667. 

2150.  Where  the  first  to  conceive  was  the 
last  to  reduce  to  practice  and  was  not  dili- 
gent and  his  excuse  for  his  delay  is  that  he 
was  so  busy  earning  his  living  that  he  did  not 
have  time  to  attend  to  the  matter,  also  that 
he  did  not  have  the  money  to  pay  for  having 
the  device  made  and  did  not  wish  to  borrow  it. 
Held,  insufficient  to  excuse  his  lack  of  dili- 
gence.    Id. 

2151.  Where  L.'s  original  application  was 
filed  two  years  prior  to  P.'s  application  and 
nearly  a  year  prior  to  his  reduction  to  prac- 
tice and  P.  was  making  no  effort  to  reduce  the 
invention   to  practice  at  the  date  of  L.'s  ap- 


344 


INTERFERENCE,  XXXIII,  (g),  3. 


plication,  or  until  some  months  thereafter,  al- 
though he  had  ample  means  and  actually  built 
many  machines  and  tiled  a  large  number  of 
applications  in  the  same  art,  but  none  of  which 
included  the  invention  of  the  issue.  Held, 
that  P.  was  lacking  in  diligence  and  that  L.  is 
entitled  to  the  award  of  priority  of  invention. 
Parkes  v.  Lewis,  C.  D.  1906,  133  O.  G.  2313. 

2152.  Work  upon  machines  not  embodying 
the  invention  in  issue  and  not  necessary  for 
the  development  of  that  invention  does  not 
constitute  diligence.  Kilbourn  v.  Hirner,  C.  D. 
1U06,  124  O.  G.  1841. 

2153.  Where  R.  was  the  last  to  reduce  to 
practice  and  was  not  exercising  reasonable 
diligence  in  reducing  to  practice  at  the  time 
his  rival  entered  the  field,  he  cannot  prevail 
in  the  interference  even  if  it  be  considered 
that  he  was  the  first  to  conceive  the  invention. 
Kirkegaard  and  Jebsen  v.  Ries,  C.  D.  1906,  125 
O.  G.  1705. 

2154.  Where  P.  conceived  the  invention  in 
the  early  part  of  November,  1903,  and  filed 
his  application  December  11,  1903,  and  W. 
conceived    the    invention    on    September    16, 

1903,  but  did  not  reduce  it  to  practice  prior 
to  the  filing  of  his  application  on  January  27, 

1904,  Held,  that  W.  was  lacking  in  diligence 
in  the  absence  of  a  sufficient  excuse  for  the 
delay.  Woods  v.  Poor,  C.  D.  1907,  126  O.  G. 
391. 

2155.  The  claim  of  an  inventor,  advanced 
as  an  excuse  for  his  delay  in  reducing  to  prac- 
tice, that  he  was  endeavoring  to  improve  upon 
his  conception  is  not  supported  by  testimony 
showing  merely  that  conversations  were  held 
looking  to  the  improvement  thereof  where  it 
does  not  appear  that  any  changes  were  actu- 
ally made  or  that  any  material  changes  were 
even  suggested.    Id. 

2156.  A  claim  of  an  inventor  that  he  was 
financially  unable  to  reduce  his  invention  to 
practice  after  paying  the  necessary  expenses 
of  his  business  is  not  proved  where  the  evi- 
dence does  not  show  what  the  necessary  ex- 
penses of  the  business  were  and  where  there 
is  no  evidence  of  the  inventor's  resources  ex- 
cept his  own  statement  that  he  had  only  a 
given  amount  of  cash  on  hand.    Id. 

2157.  Where  L.  and  W.  made  and  secretly 
tested  a  machine  embodying  the  invention 
August  23,  1903,  and  at  once  dismantled  the 
same,  made  and  tested  another  machine  Oc- 
tober, 1903,  but  did  not  use  the  same  again 
until  September,  1904,  and  where  L.  and  W. 
consulted  their  attorneys  in  November,  1903, 


and  had  the  application  papers  prepared  in 
January,  1904,  but  did  nothing  further  toward 
filing  their  application  until  June,  1904,  after 
they  had  heard  of  C.'s  patent.  Held,  that  L. 
and  W.  were  lacking  in  diligence  and  cannot 
prevail  over  C.,  who  reduced  the  invention  to 
practice  and  filed  his  application  in  Septem- 
ber, 1903.  *Lewis  and  Williams  v.  Crone- 
mcyer,  C.  D.  1907,  130  O.  G.  300. 

2158.  Work  on  an  auxiliary  invention  which 
the  inventor  regarded  as  necessary  to  the 
commercial  success  of  his  invention  cannot 
be  regarded  as  constituting  diligence  where 
the  evidence  does  not  satisfactorily  show  the 
nature  of  the  experiments  or  when  they  were 
made.  Fordyce  v.  Stoetzel,  C.  D.  1907,  130  O. 
G.  2372. 

2159.  Evidence  held  to  show  that  B.,  while 
the  first  to  conceive  the  invention  in  issue, 
was  the  last  to  reduce  to  practice  and  was  not 
exercising  diligence  at  the  time  H.  entered 
the  field  and  subsequently  thereto  and  prior- 
ity properly  awarded  to  H.  Hamm  v.  Black, 
C.  D.  1908,  132  O.  G.  841. 

2160.  Where  an  inventor  has  a  conception 
of  a  device  which  can  be  put  to  practical  use 
upon  devices  existing  in  the  art,  delay  in  re- 
ducing the  invention  to  practice  for  the  pur- 
pose of  perfecting  other  inventions  to  be 
used  in  connection  therewith  cannot  be  con- 
sidered as  an  exercise  of  due  diligence  where 
another  has  in  the  meantime  entered  the  field 
and  reduced  the  invention  to  practice.     Id. 

2161.  Where  N.  conceived  the  invention  of 
the  issue  on  October  13,  1904,  and  reduced 
the  same  to  practice  on  October  26,  1905,  by 
the  filing  of  his  application,  and  F.  conceived 
the  invention  on  June  30,  1905,  and  reduced 
the  same  to  actual  practice  on  July  31,  1905, 
and  it  appears  that  N.  did  not  disclose  the  in- 
vention to  anyone,  except  a  few  of  his  friends 
confidentially,  until  after  the  filing  of  his  ap- 
plication, and  his  excuse  for  failure  to  re- 
duce the  same  to  practice  was  that  he  had 
sold  a  prior  invention  of  the  same  nature  to 
his  employers  and  was  attempting  also  to 
sell  the  invention  of  the  issue  to  them,  that 
they  would  likely  interfere  should  he  attempt 
to  do  anything  with  it,  and  that  he  was  wait- 
ing to  see  what  claims  would  be  allowed  on 
his  prior  application,  Held,  that  the  excuse 
for  the  delay  is  insufficient.  *Nelson  v.  Fau- 
cette,  C.  D.  1909,  143  O.  G.  1348. 

2162.  T.  filed  an  application  December  17, 
1896.  W.  conceived  the  invention  January  10, 
1896,  made  working  drawings  thereof  in  the 


INTERFERENCE,  XXXIII,  (h),  1. 


345 


fall  of  189G,  reduced  the  invention  to  prac- 
tice in  April,  1897,  and  filed  his  application 
March  II,  1898.  Held,  that  W.  was  not  exer- 
cising diligence  at  the  tiine  that  T.  filed  his 
application  and  subsequently  thereto  and  that 
T.  was  therefore  the  first  inventor,  d  Auto- 
matic Weighing  Machine  Company  v.  Pneu- 
matic Scale  Corporation,  Limited,  C.  D.  1909, 
139  O.  G.  991. 

2163.  Work  on  one  form  of  a  device  can 
not  be  considered  as  diligence  in  the  reduc- 
tion to  practice  of  another  form.  Taylor  v. 
Oilman,  C.  D.  1910,  158  O.  G.  883. 

2164.  Where  F.,  who  was  the  first  to  con- 
ceive the  invention  in  issue,  but  the  last  to  re- 
duce it  to  practice,  was  lacking  in  diligence 
before  and  at  the  time  R.  entered  the  field. 
Held,  that  this  lack  of  diligence  could  not  be 
cured  by  activity  subsequently  to  that  time. 
*Floyd  V.  Rohlfing,  C.  D.  1910,  152  O.  G.  230. 

2165.  Evidence  considered  and  held,  to  es- 
tablish that  B.  if  the  first  to  conceive  the  in- 
vention in  issue  was  the  last  to  reduce  it  to 
practice  and  was  not  exercising  due  diligence 
at  the  time  C.  entered  the  field  and  subse- 
quently thereto.  *Bastian  v.  Champ,  C.  D. 
191(1,  l.-,2  O.  G.  734. 

2166.  R.  placed  the  control  of  an  invention 
made  by  him  in  the  hands  of  L.,  the  manager 
of  a  company,  for  the  use  of  that  company, 
and  he  had  an  application  prepared  which  was 
executed  by  R.  and  returned.  This  applica- 
tion was  mislaid  during  the  moving  of  the 
company's  office  and  was  not  discovered  and 
filed  until  two  months  after  H.'s  application 
was  filed.  Neither  party  actually  reduced  the 
invention  to  practice,  and  it  appeared  that  R.'s 
application  could  have  been  reproduced  from 
the  attorney's  carbon  copy.  Held,  that  R.  was 
lacking  in  diligence  and  priority  of  invention 
properly  awarded  to  H.  *Robischung  v.Hand- 
iger,  C.  D.  1911,  162  O.  G.  786. 

2167.  Evidence  considered  and  Held,  to  es- 
tablish that  S.  did  not  derive  the  invention  from 
M.,  that  if  M.  was  the  first  to  conceive  the  in- 
vention he  was  the  last  to  reduce  it  to  practice 
and  was  not  exercising  due  diligence  at  the 
time  S.  entered  the  field.  *Miller  v.  Speller, 
C.  D.  1911,  165  O.  G.  732. 

(h)   Concealment. 
1.  In  General. 

2168.  When  an  inventor  in  any  manner  or 
for  any  reason  refuses  to  give  to  the  public 
the  benefit  of  his  invention,  the  public  are  en- 


titled to  withdraw  from  him  the  special  pro- 
tection accorded  to  him  for  his  invention.  On 
this  principle  an  inventor  is  required  to  be 
diligent  in  reducing  his  conception  or  inven- 
tion to  practice.  *Warner  v.  Smith,  C.  D. 
1898,  84  O.  G.  311. 

2169.  One  who  has  made  an  invention  and 
who  has  locked  it  up  in  the  secrets  of  his  own 
exclusive  knowledge  and  who  produces  it 
only  when  a  rival  inventor  has  entered  the 
field  cannot  be  held  to  have  acted  in  accord- 
ance with  the  policy  of  the  law  or  with  the 
spirit  and  purpose  of  the  constitutional  pro- 
vision relating  to  promoting  "the  progre^  of 
science  and  useful  arts."  Such  inaction  not 
only  contravenes  the  interest  of  the  public, 
but  also  operates  to  injure  a  rival  inventor 
who  in  the  meantime  enters  the  field  of  in- 
vention upon  the  faith  of  the  conditions  as 
they  appear  to  exist  and  upon  which  he  is  en- 
titled to  rely.     *Id. 

2170.  Probably  one  who  makes  an  invention 
and  keeps  it  within  his  knowledge  and  fails  to 
lay  claim  to  it  until  a  rival  has  entered  the 
field  is  not  barred  by  any  statute  from  making 
his  claim,  artd  if  he  proves  his  case  he  and 
not  his  rival  will  be  entitled  to  a  patent;  but 
such  conditions  make  it  imperative  upon  him 
that  he  should  prove  his  case  beyond  all  rea- 
sonable doubt,  and  the  patent  office  and  the 
courts  are  justified  in  presuming  in  such  cases 
that  what  is  claimed  to  be  reduction  to  prac- 
tice is  no  more  than  mere  experiment  until 
the  contrary  is  clearly  shown.     *Id. 

2171.  The  patent  laws  are  founded  in  a 
large  public  policy  to  promote  the  progress 
of  science  and  the  useful  arts.  The  public, 
therefore,  is  a  most  material  party  to  and 
should  be  duly  considered  in  the  application 
for  a  patent  securing  to  the  individual  a  mo- 
nopoly for  a  limited  time  in  consideration  of 
the  exercise  of  his  genius  and  skill.  *Mower 
V.  Duell,  Commissioner  of  Patents,  C.  D.  1899, 
88  O.  G.  191. 

2172.  The  arts  and  sciences  will  not  be 
promoted  by  giving  encouragement  to  inven- 
tors to  withhold  and  conceal  their  inventions 
for  an  indefinite  time  or  to  a  time  when  they 
may  use  and  apply  their  inventions  to  their 
own  exclusive  advantage  irrespective  of  the 
public  benefit,  and  certainly  not  if  the  inven- 
tor is  allowed  to  conceal  his  invention  to  be 
brought  forward  in  some  after  time  to  thwart 
and  defeat  a  more  diligent  and  active  inventor 
who  has   placed   the  benefit  of   his   invention 


346 


INTERFERENCE,  XXXIII,  (h),  2. 


within  the  reach  and  knowledge  of  the  pub- 
he.    *Id. 

2173.  In  withholding  the  invention  after  its 
completion,  when  a  patent  could  be  obtained 
therefor,  for  an  undue  and  unreasonable  time 
until  after  other  inventors  have  by  their  skill 
and  ingenuity  perfected  a  similar  invention 
and  obtained  a  patent  therefor  the  first  or 
original  inventor  shows  himself  to  be  un- 
mindful of  both  the  public  and  individual 
rights,  and  one  of  the  reasons  why  the  statute 
has  confided  such  large  powers  to  the  com- 
missioner of  patents  in  refusing  a  patent  is 
to  prevent  such  abuse.     *Id. 

2174.  Under  section  4893,  Revised  Statutes, 
an  invention  claimed  must  not  only  be  shown 
to  be  new  and  useful,  but  it  must  also  be 
made  to  appear  that  a  claimant  is  justly  enti- 
tled to  a  patent  therefor.  A  claimant  cannot 
be  justly  entitled  if  a  patent  when  granted 
would  or  could  operate  a  wrong  either  to  the 
public  or  a  rival  inventor  and  that  wrong  be 
the  result  of  the  claimant's  own  laches  or 
negligent  delay  in  asserting  his  rights.     *Id. 

2175.  Where  it  was  urged  that  under  sec- 
tion 4886,  Revised  Statutes,  there  can  be  no 
abandonment  of  a  right  to  a  patent  unless  such 
abandonment  be  afiirinatively  proved.  Held, 
that  affirmative  facts  may  be  proved  by  nega- 
tive evidence,  and  where  the  acts  and  conduct 
of  a  party  are  of  such  nature  as  to  give  rise 
to  a  rational  presumption  of  the  fact,  that 
presumption,  after  the  rights  of  other  parties 
have  intervened  and  attached,  cannot  be  re- 
moved or  gotten  rid  of  by  simply  denying 
the  intention  to  produce  the  result.     ♦Id. 

2176.  If  there  be  concealment  or  suppres- 
sion of  the  invention,  the  field  lies  open  to 
be  occupied  by  a  more  diligent,  though  later, 
inventor,  who  when  he  has  not  only  put  the 
invention  into  public  use,  but  has  also  obtained 
a  patent  for  it,  cannot  be  divested  of  his  right 
to  hold  the  field  except  upon  proof  beyond 
a  reasonable  doubt  that  the  earlier  and  more 
negligent  inventor  has  not  gone  back  to  an 
abandoned  device  or  a  device  suppressed  or 
concealed  in  order  to  establish  a  prior  right. 
♦Richards  v.  Burkholder,  C.  D.  1907,  128  O. 
G.  2533. 

2.  Rights   Lost. 

2177.  Hepburn's  date  of  invention  is  his 
record  date,  April  3,  1894.  Mason  conceived 
of  the  invention  and  made  a  complete  draw- 
ing June  28,  1887.  He  reduced  the  invention 
to  practice  soon  after.    The  device  was  then 


stored  away  in  the  model-room  of  his  com- 
pany, and  it  was  not  produced  until  the  insti- 
tution of  the  interference  proceedings.  No 
devices  of  the  kind  were  manufactured  for 
any  purpose  and  no  exhibit  of  the  device  was 
made  to  the  public,  and  no  one  saw  it,  except 
Mason  and  one  or  two  other  employees  of 
his  company,  field,  that  Mason  had  aban- 
doned the  invention,  and  priority  was  award- 
ed to  Hepburn.  *Mason  v.  Hepburn,  C.  D. 
1898,  84  O.   G.   147. 

2178.  Considering  the  interest  of  the  pub- 
lic, it  is  Held,  that  a  subsequent  inventor  of 
a  new  and  useful  manufacture  or  improve- 
ment who  had  diligently  pursued  his  labors 
to  the  procurement  of  the  patent  in  good 
faith  and  without  any  knowledge  of  the  pre- 
ceding discoveries  of  another  shall  as  against 
that  other  who  has  deliberately  concealed  the 
knowledge  of  the  invention  from  the  public 
be  regarded  as  the  real  inventor  and  as  such 
entitled  to  his  reward.     *Id. 

2179.  An  abandonment  after  completion  of 
an  inventive  act  applies  in  a  case  where  the 
right  of  the  public  to  the  use  is  involved  and 
not  in  one  where  the  contention  is  between 
rival  claimants  merely  of  a  monopoly.  The 
ground  for  this  doctrine  lies  in  the  spirit  and 
policy  of  the  patent  laws  and  in  the  nature 
of  the  equity  that  arises  in  favor  of  him  who 
gives  the  public  the  benefit  of  the  knowledge 
of  his  invention,  who  expends  his  time,  labor, 
and  money  in  discovering,  perfecting,  and 
patenting  in  perfect  good  faith  that  which  he 
and  all  others  have  been  led  to  believe  has 
never  been  discovered  by  reason  of  the  in- 
difference, sui)ineness,  or  willful  act  of  one 
who  may,  in  fact,  have  discovered  it  long  be- 
fore.    ♦Id. 

2180.  Where  Smith  claims  to  have  reduced 
the  invention  to  practice  in  January,  1892, 
and  thereafter  did  nothing  and  remained  si- 
lent for  three  years  and  nine  months,  although 
there  were  several  occasions  when  he  might 
and  should  have  spoken  if  his  invention  was 
such  as  he  now  claims  it  to  have  been,  and 
he  made  no  movement,  either  through  the 
patent  office  or  otherwise,  to  give  the  public 
the  benefit  of  it  in  any  way,  and  during  this 
time  there  was  a  demand  for  the  invention, 
and  there  is  no  explanation  of  the  delay  in 
filing  an  application.  Held,  that  under  these 
circumstances  the  presumption  is  in  favor  of 
the  theory  that  he  did  not  have  a  completed 
invention    in   January,   1892,   or   at   any   time 


INTERFERENCE,  XXXIII,  (h),  2. 


347 


prior   to   the   filing   of   his   apphcation    in   the 
patent  office.     *Id. 

2181.  Where  an  inventor  made  and  tested 
a  device  and  then  partially  dismantled  it  and 
put  it  in  a  private  drawer,  where  it  remained 
for  five  years  before  applying  for  a  patent, 
when  he  had  ample  means  to  patent  it,  and  the 
evidence  showed  that  he  had  taken  out  other 
patents,  Held,  that  his  right  to  a  claim  of 
priority  is  barred  where  it  is  shown  that  dur- 
ing his  concealment  of  his  invention  his  rival 
had  entered  and  taken  possession  of  the  field 
and  reduced  the  invention  to  practice  and 
given  its  benefits  to  the  public.  Davis  v.  For- 
syth and  Forsyth,  C.  D.  1899,  87  O.  G.  .'51 R. 

2182.  The  bare  statement  of  the  first  in- 
ventor that  he  never  abandoned  his  invention 
counts  for  naught  in  the  light  of  such  circum- 
stances.    Id. 

2183.  An  inventor  may  conceal  his  inven- 
tion for  an  unlimited  time  without  forfeiting 
his  right  to  a  patent,  provided,  however,  that 
no  statutory  bar  intervenes,  and  provided,  fur- 
ther, that  no  other  person  during  such  period 
makes  the  same  invention  and  secures  a  pat- 
ent therefor.  (Bates  v.  Coe,  C.  D.  1879,  365, 
15  O.  G.  337,  and  Mason  v.  Hepburn,  C.  D. 
1898,  510,  84  O.  G.  147,  cited.)     Id. 

2184.  The  right  of  the  first  inventor  to  an 
award  of  priority  becomes  barred  by  the  de- 
signed or  negligent  concealment  of  his  inven- 
tion from  the  public  upon  the  entry  of  a  later 
inventor  into  the  same  field.     Id. 

2185.  Where  T.  made  an  instrument  and 
placed  it  in  a  private  laboratory,  to  which 
outsiders  were  not  admitted,  and  the  knowl- 
edge of  the  instrument  and  its  use  were  con- 
fined to  T.  and  his  assistant,  and  it  appeared 
that  the  public  derived  no  benefit  from  it  and 
that  T.  did  not  attach  sufficient  importance  to 
it  to  take  steps  to  obtain  a  patent  until  another 
had  patented  the  same  device  and  put  it  into 
use,  Held,  that  T.  is  not  entitled  to  a  patent 
and  that  priority  should  not  be  awarded  to 
him.  (Mower  v.  Crisp  and  Copeland,  C.  D. 
1898,  41,  83  O.  G.  155;  Mason  v.  Hepburn.  C. 
D.  1898,  510,  84  O.  G.  147;  Davis  v.  Forsyth 
and  Forsyth,  C.  D.  1899,  79,  87  O.  G.  516,  and 
In  re  Mower,  C.  D.  1899,  395,  88  O.  G.  191, 
cited.)  Thomas  v.  Weston,  C.  D.  1901,  94  O. 
G.  985. 

2186.  Where  an  inventor  has  reduced  an 
invention  to  practice,  applied  for  and  obtained 
a  patent  and  given  the  benefit  of  the  invention 
to  the  public,  a  cloud  should  not  be  thrown 
on  that  patent  by  a  (iro  forma  award  of  pri- 


ority to  his  rival,  who  comes  into  the  patent 
office  after  seeing  the  patent  and  introduces 
as  evidence  of  his  claim  to  priority  a  device 
made  long  before  the  patentee's,  but  kept 
secret  and  not  given  to  the  public.     Id. 

2187.  Where  Houston  knew  of  a  demand 
for  the  invention,  but  he  suppressed  it  and 
practically  concealed  his  device  for  more  than 
four  years  after  the  time  when  he  claims  to 
have  actually  reduced  it  to  practice  and  until 
a  rival  entered  the  field,  although  he  had 
abundant  means  and  ample  opportunity  to  file 
an  application,  Held,  that  such  delay  raises  a 
presumption  which  it  is  incumbent  on  him  to 
rebut  by  clear  and  satisfactory  proof.  ♦East- 
man v.  Houston,  C.  D.  1901,  95  O.  G.  2064. 

2188.  Where  one  party  deliberately  conceals 
his  invention  from  the  public  until  another 
has  made  the  invention  and  given  it  to  the 
public,  Held,  that  he  should  not  be  heard  to 
assert  his  claim  in  opposition  to  the  later  dil- 
igent inventor.  Wright  v.  Lorenz,  C.  D.  1902, 
101  O.  G.  664. 

2189.  Where  in  excuse  for  concealing  his 
invention  for  five  years  a  party  alleges  that 
he  was  trying  to  devise  a  machine  for  making 
it  cheaply.  Held,  that  the  excuse  is  insufficient. 
He  should  have  given  it  to  the  public  and  al- 
lowed others  to  improve  the  means  for  mak- 
ing it.     Id. 

2190.  Where  during  a  delay  of  six  years  P. 
was  poor,  but  concealed  his  invention  and 
failed  to  make  efforts  to  interest  others  in  it 
to  assist  him  in  securing  a  patent  or  in  making 
practical  use  of  it,  Held,  that  mere  poverty 
cannot  excuse  an  absence  of  all  effort  for 
such  a  length  of  time.  *Petrie  v.  De  Schwei- 
nitz,   C.   D.   1902,  99  O.  G.  1387. 

2191.  Where  W.  reduced  the  design  to  prac- 
tice in  1896  by  making  a  few  of  the  devices 
and  then  concealed  his  invention  until  sev- 
eral months  after  L.  had  obtained  a  patent 
on  it  in  1900,  Held,  that  L.  is  properly  regard- 
ed as  the  real  inventor.  Wright  v.  Lorenz, 
C.   D.  1902,  101   O.  G.  664. 

2192.  Where  T.  made  an  electric  measuring 
instrument  embodying  the  invention  in  contro- 
versy in  1S94  and  placed  it  in  his  private  ex- 
perimental room,  where  it  was  seen  only  by 
employees,  but  where  it  was  used  frequently 
in  making  measurements,  and  T.  did  not  man- 
ufacture it  or  apply  for  a  patent  until  1898, 
after  he  knew  of  W.'s  patent  upon  it.  Held, 
that  W.  is  entitled  to  the  decision  on  priority. 
(Citing  Mason  v.   Hepburn,  C.  D.   1898,  510, 


343 


INTERFERENCE,  XXXIII,  (h),  2. 


84  O.  G.  147,  13  App.  D.  C.  86.)     *Thomson 
V.  Weston,  C.  D.  1902,  99  O.  G.  864. 

2193.  Where  a  party  deliberately  conceals 
his  invention  after  completion  without  reason- 
able excuse  and  is  stimulated  to  make  appli- 
cation for  a  patent  only  by  the  publication  of 
a  patent  to  another  and  later  inventor.  Held, 
that  he  has  forfeited  his  rights  in  favor  of 
the  later  and  more  diligent  inventor  and  that 
the  length  of  the  concealment  is  not  material. 
*Id. 

2194.  By  deliberate  concealment  or  suppres- 
sion of  the  knowledge  of  his  invention  the  in- 
ventor subordinates  his  claim,  in  accordance 
with  the  general  policy  of  the  law  in  the  pro- 
motion of  the  public  interest,  to  that  of  an- 
other and  bona  fide  inventor  who  during  the 
period  of  inaction  and  concealment  shall  have 
given  the  benefit  of  the  discovery  to  the  pub- 
lic.   *Id. 

2195.  The  circumstances  of  private  and  par- 
tial test  accompanied  by  long  delay  thereafter 
have  justly  been  given  great  weight  as  indi- 
cating with  certainty  that  the  device  was  ex- 
perimental merely  and  not  satisfactory.    *Id. 

2196.  Where  it  is  contended  that  a  device 
made  in  1894  was  a  reduction  to  practice  and 
it  was  then  laid  aside  and  kept  secret  for  five 
years  and  practically  nothing  done  with  it 
until  another  and  later  inventor  had  obtained 
a  patent.  Held,  that  in  the  absence  of  a  rea- 
sonable excuse  for  the  delay  the  first  inven- 
tor had  lost  his  rights  in  the  invention  as 
against  the  latter  and  more  diligent  inventor. 
Quist  v.  Ostrom,  C.  D.  1903,  106  O.  G.  1501. 

2197.  Where  McNeal  made  a  device  em- 
bodying the  invention  in  1896,  but  did  noth- 
ing in  the  way  of  giving  it  to  the  public  and 
refrained  from  applying  for  a  patent  upon  it 
because  he  thought  it  would  infringe  a  prior 
patent  and  in  the  meantime  Macey  secured  a 
patent  upon  it  and  placed  it  upon  the  market, 
Held,  that  McNeal  has  forfeited  his  right  to 
a  patent  by  concealment.  McNeal  v.  Macey, 
C.  D.  1903,  106  O.  G.  2287. 

2198.  Where  as  an  excuse  for  doing  nothing 
with  the  invention  for  four  years  McNeal  al- 
leges poverty,  but  it  is  shown  that  he  filed 
many  other  applications  on  kindred  devices 
and  gave  those  devices  preference  because 
he  thought  that  the  present  device  would  in- 
fringe a  patent,  Held,  that  his  excuse  is  insuf- 
ficient.   Id. 

2199.  Held,  that  Matthes  reduced  the  inven- 
tion to  practice  in  1899,  before  Burt's  date  of 
conception,  but  forfeited  his  rights  to  a  pat- 


ent by  his  inaction  and  negligent  concealment 
of  the  invention  until  February,  1902,  after 
he  had  learned  that  Burt  was  manufacturing 
devices  embodying  it,  and  that  therefore  judg- 
ment must  be  rendered  in  favor  of  Burt 
Matthes  v.  Burt,  C.  D.  1904,  111  O.  0.  1363. 

2200.  An  inventor  who  has  completed  the 
inventive  act  by  reduction  of  his  invention  to 
practice  may  lose  his  right  to  obtain  a  pat- 
ent, in  favor  of  a  subsequent  inventor,  by 
concealment  and  delay  in  applying  for  a  pat- 
ent.    Id. 

2201.  A  party  who  refuses  to  instruct  the 
workers  in  the  art  and  seeks  to  protect  him- 
self in  the  use  of  the  invention  by  keeping  it 
secret,  thus  apparently  leaving  the  field  of 
invention  vacant  to  stimulate  the  activity  of 
other  inventors,  cannot  secure  a  patent  in  the 
face  of  the  claims  of  a  later  inventor  who  has 
given  the  invention  to  the  public.  In  so  far 
as  he  is  concerned  the  field  is  truly  as  vacant 
as  he  wished  it  to  appear.    Id. 

2202.  Where  the  junior  party  to  an  inter- 
ference after  having  completed  his  invention 
and  reduced  it  to  practice  lays  it  aside  and 
shows  no  intention  of  giving  the  public  the 
benefit  of  it  or  of  filing  an  application  for  a 
patent  until  he  learns  that  his  rival  is  using 
it  and  placing  the  product  of  such  invention 
on  the  market,  Held,  that  he  has  forfeited 
his  rights  in  favor  of  his  rival,  whether  or 
not  that  rival  has  already  secured  a  patent. 
Id. 

2203.  Where  M.  made  a  device,  used  it  to 
some  extent,  apparently  to  his  own  satisfac- 
tion, and  then  practically  concealed  the  de- 
vice, suppressed  its  use,  and  withheld  it  from 
the  public  for  a  period  of  three  and  one-half 
years,  and  the  record  shows  that  M.  indicated 
no  substantial  intention  of  change  of  policy 
until  he  had  obtained  definite  knowledge  of 
B.'s  exploitation  of  the  same  invention,  B. 
having  no  knowledge  of  M.'s  discovery,  and 
encouraged  and  induced  by  the  apparently  un- 
occupied field,  went  diligently  to  work  to  per- 
fect his  invention  and  put  his  product  upon 
the  market,  Held,  /hat  M.'s  right  had  become 
subordinate  to  that  of  B.,  who  was  the  first 
to  invent  in  accordance  with  "the  true  policy 
and  ends  of  the  patent  laws,"  as  declared  by 
the  Supreme  Court  of  the  United  States  in 
Kendall  v.  Winsor  (21  How.  322,  327,  328.) 
*Matthes  v.  Burt,  C.  D.  1905,  114  O.  G.  764. 

2204.  Where  an  inventor  who  has  actually 
reduced  an  invention  to  practice,  and  whose 
right  to  a  patent  because  of  undue  conceal- 


INTERFERENCE,  XXXIII,  (h),  3. 


349 


ment  and  suppression  of  the  invention  has 
become  subordinate  to  another  inventor  who 
is  first  to  invent  in  accordance  with  "the  true 
pohcy  and  ends  of  the  patent  laws,"  Held, 
that  such  cases  present  no  question  of  dili- 
gence in  respect  of  adapting  and  perfecting 
the  invention  as  between  rival  claimants,  or 
of  reasonable  excuse  for  delay  on  other 
grounds  relieving  that  delay  of  the  imputa- 
tion of  deliberate  concealment,  or  where  delay 
is  a  potent  circumstance  in  determining 
whether  the  tests  made  at  a  remote  period 
amounted  to  a  complete  reduction  to  practice. 
*Id. 

2205.  Held,  that  the  fact  that  B.'s  applica- 
tion had  not  ripened  into  a  patent  before  M. 
filed  his  application  does  not  substantially  af- 
fect the  application  of  the  doctrine  of  equit- 
able estoppel  to  M.  While  the  possession  of 
a  patent  makes,  ordinarily,  a  stronger  case  in 
favor  of  the  holder,  the  doctrine  in  respect  of 
concealment  by  one  earlier  to  invent  does  not 
necessarily  depend  upon  that   fact.     *Id. 

2206.  Where  a  party  constructed  a  device 
in  October,  1900,  but  allowed  it  to  remain 
entirely  within  the  knowledge  of  the  inven- 
tor and  his  coemployes  until  knowledge  was 
obtained  of  the  invention  of  the  opposing 
party,  when  the  application  in  interference  was 
filed  showing  a  different  form,  apparently  sug- 
gested by  such  knowledge,  Held,  that  such 
party's  rights  were  forfeited  by  concealment. 
Marconi  v.  Shoemaker,  C.  D.  1907,  131  O.  G. 
1939. 

2207.  The  concealment  and  suppression  of 
an  invention  after  a  reduction  to  practice  for 
a  period  of  more  than  two  years,  until  def- 
inite knowledge  was  obtained  of  the  invention 
of  another  party,  who  in  the  meantime  had 
made  the  invention  and  placed  it  upon  the 
market,  is  sufficient  to  defeat  the  right  to  a 
patent.  (Matthes  v.  Burt,  C.  D.  190.5,  574,  114 
O.  G.  764,  24  App.  D.  C.  265.)  *Gordon  v. 
Wentworth,  C.  D.  1908,  135  O.  G.  1125. 

2208.  Where  after  reduction  to  practice  an 
inventor  puts  aside  his  invention  for  more 
than  a  year  until  he  discovers  that  his  rival 
has  placed  the  invention  upon  the  market. 
Held,  that  he  must  be  charged  w-ith  conceal- 
ment or  suppression  of  the  invention  and  as 
not  entitled  to  an  award  of  priority  over  his 
more  diligent  rival.  Howard  v.  Bowes,  C.  D. 
1908,  137  O.  G.  733. 

2209.  L.  made  a  device  embodying  the  in- 
vention prior  to  V.'s  conception  thereof.  He 
showed    it   only   to   the   officers   of   his   com- 


pany, who  laid  it  aside  on  account  of  other 
business,  and  no  attention  was  given  it  by 
them  or  L.  until  they  obtained  knowledge  of 
the  work  done  by  a  rival  company,  V.'s  as- 
signee. Held,  that  if  the  device  made  by  L. 
was  a  reduction  to  practice  he  had  forfeited 
his  right  to  a  patent  by  his  concealment  (citing 
Mason  v.  Hepburn,  C.  D.  1898,  510,  84  O.  G. 
147,  13  App.  D.  C.  86,  and  other  decisions.) 
Lawrence  v.  Voight,  C.  D.  1909,  147  O.  G. 
23.J. 

2210.  B.  conceived  the  invention  in  issue  in 
1903,  built  a  machine  in  accordance  therewith 
which  was  kept  in  a  room  to  which  only  he 
and  a  few  employees  had  access  until  an  ap- 
plication for  patent  on  the  machine  was  filed 
on  January  31,  1906.  Elbows  made  on  the 
machine  were  in  the  meantime  placed  on  the 
market.  Held,  that  by  concealment  of  the 
invention  B.  lost  his  rights  in  favor  of  D., 
who  conceived  the  invention  of  some  of  the 
counts  of  the  issue  in  1893  and  that  of  the 
others  in  1901,  and  filed  his  application  on 
January  18,  1906.  Dieckmann  v.  Brune,  C.  D. 
1911,  171  O.  G.  1258. 

3.  Rights  Not  Lost. 

2211.  Where  Cook  reduced  the  invention  to 
practice  in  1891  and  1892,  but  did  not  put  it 
into  commercial  use  or  apply  for  a  patent 
until  1896,  Held,  that  the  delay  of  Cook  in 
applying  for  a  patent  or  making  commercial 
use  of  his  invention  was  not  such  as  to  indi- 
cate an  intention  to  suppress  or  conceal  his 
invention  from  the  public  that  would  subor- 
dinate his  right  to  that  of  McBerty,  who 
promptly  applied  for  and  obtained  a  patent. 
*McBerty  v.  Cook,  C.  D.  1900,  90  O.  G.  2295. 

2212.  Where  F.  reduced  the  invention  to 
practice  and  for  one  year  and  five  months 
thereafter  made  no  other  machines  and  made 
no  substantial  advance  toward  placing  the  in- 
vention on  the  market,  during  which  time  O. 
made  the  invention  and  put  it  into  use.  Held. 
that  F.  is  the  first  inventor  in  the  absence  of 
a  showing  that  he  intentionally  concealed  the 
invention  from  the  public  or  abandoned  the 
idea  of  obtaining  a  patent  and  using  the  in- 
vention. Felbel  v.  Oliver,  C.  D.  1902,  100  O. 
G.  2175. 

2213.  Where  S.,  an  applicant,  established 
beyond  a  reasonable  doubt  that  he  reduced 
the  invention  in  issue  to  practice  prior  to  the 
date  of  conception  of  M.,  a  patentee,  S.  is  en- 
titled to  an  award  of  priority  unless  he  has 


350 


INTERFERENCE,  XXXIII,  (h),  3. 


lost  his  right  to  a  patent  by  deliberately  lay- 
ing the  invention  aside  or  concealing  it  from 
the  public.  Sarfert  v.  Meyer,  C.  D.  1902,  101 
O.  G.  2286. 

2214.  Where  the  invention  in  issue  was  a 
machine  and  S.  reduced  it  to  practice  on 
March  16,  1898.  applied  for  a  patent  thereon 
on  March  10,  1900,  and  in  the  meantime  em- 
ployed the  machine  in  producing  goods  for 
the  market  and  used  it  in  such  a  manner  that 
his  employees  had  access  to  it,  his  conduct 
was  not  such  as  to  warrant  the  finding  that 
he  had  concealed  the  invention  from  the  pub- 
lic, especially  as  his  delay  in  applying  for  a 
patent  is  explained  by  the  fact  that  he  con- 
templated making  certain  improvements  in  the 
machine.     Id. 

2215.  Where  Sarfert  concealed  his  inven- 
tion in  stocking-singeing  machines  for  a 
short  time,  but  gave  to  the  public  the  result 
of  its  operation  and  showed  it  to  his  opponent 
Meyer,  Held,  that  his  conduct  is  inconsistent 
with  the  theory  of  suppression  of  the  inven- 
tion which  would  deprive  him  of  his  rights. 
*Meyer  v.  Sarfert,  C.  D.  1903,  102  O.  G.  1555. 

2216.  Where  Blood  conceived  the  invention 
in  April,  1899,  and  reduced  it  to  practice  on 
May  15,  and  filed  his  application  April  27, 
1901,  and  Brown  does  not  claim  conception 
until  the  middle  of  May,  1899,  Held,  that 
Blood  is  the  first  inventor.  Blood  v.  Brown, 
C.  D.  1903,  105  O.  G.  496. 

2217.  Where  Blood  reduced  the  invention 
to  practice  in  May,  1899,  and  did  not  file  his 
application  until  two  years  later,  but  in  the 
meantime  secured  a  patent  upon  the  machine 
for  making  it,  and  it  appears  that  he  was 
unable  to  secure  continuous  employment  dur- 
ing that  time.  Held,  that  there  was  no  such 
concealment  of  the  invention  from  the  pub- 
lic as  would  work  a  forfeiture  of  his  right  to 
a  patent.     Id. 

2218.  Where  after  reducing  the  invention 
to  practice  Blood  did  not  manufacture  it  or 
put  it  on  the  market  for  a  period  of  more 
than  two  years,  but  it  is  shown  that  he  was 
poor  and  did  not  have  the  facilities  for  doing 
the  work  and  made  ineffectual  efforts  to  ob- 
tain assistance  from  others,  Held,  that  there 
was  no  such  concealment  of  the  invention  as 
would  work  a  forfeiture  of  his  rights.  *Brown 
V.  Blood,  C.  D.  1903,  105  O.  G.  976. 

2219.  Where  Blood  did  not  manufacture 
the  invention  for  two  years,  but  during  that 
time  obtained  a  patent  on  the  machine  for 
making  it.  Held,  that  he  did  not  conceal  the 


invention  from  the  public  and  is  not  deprived 
of  his  right  to  a  patent.    *Id. 

2220.  The  rule  of  Mason  v.  Hepburn  as  to 
a  forfeiture  of  the  right  to  a  patent  by  delib- 
erate concealment  and  suppression  of  the  in- 
vention is  a  strict  one  and  will  not  be  extend- 
ed to  any  case  not  clearly  falling  within  it. 
*Id. 

2221.  Where  a  hay-loading  machine  has 
been  completely  built  and  it  could  only  be 
put  to  a  practical  test  during  the  haying  sea- 
son, which  lasts  about  two  months  in  each 
year,  and  it  was  tested  during  two  seasons  and 
in  the  meantime  the  machine  was  stored  in 
the  factory-yard  and  the  factory-building  with 
no  injunction  of  secrecy  or  concealment.  Held, 
that  such  actions  do  not  warrant  the  applica- 
tion of  the  doctrine  of  estoppel.  Thomas  v. 
Trissel,  C.  D.   1903,  107  O.  G.  265. 

2222.  Held,  that  Rolfe  did  not  abandon  his 
invention  or  conceal  it  from  the  public,  and 
being  the  first  to  conceive,  the  first  to  dis- 
close to  others,  and  the  first  to  reduce  to  prac- 
tice is  the  first  inventor  and  entitled  to  award 
of  priority.  *RoIfe  v.  Hoffman,  C.  D.  1906, 
121  O.  G.  1350. 

2223.  The  failure  to  file  an  application  for 
more  than  two  years  after  reduction  to  prac- 
tice where  the  machine  was  put  into  actual 
use  in  a  factory  the  policy  of  the  management 
of  which  was  not  to  patent  machines  used  for 
their  own  work  is  not  such  a  concealment  or 
suppression  of  the  invention  as  will  subor- 
dinate the  inventor's  rights  to  one  who,  claim- 
ing conception  in  July,  1900,  reduced  it  to 
practice  in  April,  1901,  but  did  not  file  an  ap- 
plication until  May,  1902,  and  did  not  arrange 
to  manufacture  the  same  until  June,  1903. 
*Burson  v.  Vogel,  C.  D.  1907,  131  O.  G.  942.      • 

2224.  Evidence  considered  and  Held,  suffi- 
cient to  show  that  the  junior  party  originated 
the  invention  in  issue  and  disclosed  the  same 
to  the  senior  party.  Weston  v.  Benecke,  C.  D. 
1908,  137  O.  G.   1709. 

2225.  Where  it  is  found  that  one  of  two  in- 
terfering parties  originated  the  invention  in 
issue  and  disclosed  the  same  to  the  other,  the 
doctrine  of  forfeiture  of  the  right  to  a  pat- 
ent by  concealment  does  not  apply.     Id. 

2226.  The  evidence  considered  and  Held,  to 
show  that  Z.  reduced  the  invention  to  practice 
prior  to  the  earliest  date  claimed  by  H.,  and 
therefore  priority  was  properly  awarded  to 
Z.  Zimmer  v.  Horton,  C.  D.  1908,  137  O.  G. 
2219. 


INTERFERENCE,  XXXIII,  (i). 


351 


2227.  An  application  was  filed  by  E.  and 
D.,  and  an  interference  was  declared  between 
it  and  a  patent  to  H.  Thereafter  an  applica- 
tion was  filed  by  Z.,  which  was  added  to  the 
interference.  E.  and  D.'s  and  Z.'s  applica- 
tions were  assigned  to  the  same  party,  and  E. 
and  D.  conceded  priority  to  Z.  It  appeared 
Z.'s  application  was  filed  more  than  two  years 
after  his  device  was  built  and  tested.  Held, 
that  these  facts  do  not  bring  the  case  within 
the  doctrine  of  Mason  v.  Hepburn,  as  Z.'s  de- 
vice was  tested  in  shops  open  to  the  public, 
and  the  filing  of  the  application  of  E.  and  D. 
negatived  any  intention  on  the  part  of  the 
assignee  to  abandon  the  invention.     Id. 

2228.  Where  the  development  of  an  inven- 
tion extended  over  a  year  and  required  the 
expenditure  of  $100,000  and  was  witnessed  by 
a  large  number  of  employees  and  visitors  and 
where  the  party  so  developing  the  invention 
was  also  the  first  to  file  his  application.  Held, 
that  there  is  no  such  concealment  of  the  in- 
vention as  to  bring  the  case  within  the  doc- 
trine of  Mason  v.  Hepburn  (C.  D.  1898,  510, 
84  O.  G.  147.)  Shiner  v.  Edison,  C.  D.  1909, 
147  O.  G.  517. 

2229.  In  the  absence  of  evidence  showing 
actual  abandonment  of  the  invention  a  mere 
failure  to  file  an  application  for  patent  for 
about  four  years  will  not  be  considered  as  an 
estoppel  by  concealment  within  the  meaning 
of  Mason  v.  Hepburn  (C.  D.  1898,  510,  84 
O.  G.  147,  13  App.  D.  C.  86)  and  Warner  v. 
Smith  (C.  D.  1898,  517,  84  O.  G.  311,  13  App. 
D.  C.  111.)  *Rolfe  v.  Kaisling  v.  Leeper, 
C.  D.  1909,  143  O.  G.  562. 

2230.  A  delay  by  L-  of  two  and  a  half  years 
in  filing  an  application  after  reducing  the  in- 
vention to  practice,  during  which  time  he  was 
endeavoring  to  get  his  employers  to  undertake 
the  manufacture  of  the  device,  Held,  not  to 
constitute  such  concealment  of  the  invention 
as  to  work  a  forfeiture  of  his  right  to  a  pat- 
ent. Landa  v.  Kaole,  C.  D.  1910,  158  O.  G. 
228. 

(i)  Prior  Inventor  Not  Party. 

2231.  Where  Antisdel,  the  junior  party, 
made  out  a  prima  facie  case  in  support  of  his 
claim  for  priority  of  invention  and  Foster  did 
not  attempt  to  rebut  or  overcome  it,  but  re- 
lied upon  the  evidence  of  Lloyd,  one  of  Antis- 
del's  witnesses,  to  show  that  Lloyd  and  not 
Antisdel  was  the  inventor  of  the  subject-mat- 
ter of  the  invention.  Held,  that  Lloyd's  testi- 


mony cannot  be  used  in  favor  of  Foster,  and 
priority  of  invention  is  therefore  awarded  to 
Antisdel.  (The  decision  of  the  assistant 
commissioner,  Antisdel  v.  Foster,  65  MS.  Dec, 
390,  affirmed.)  *Foster  v.  Antisdel,  C.  D.  1899, 
88  O.  G.  1527. 

2232.  Interference  proceedings  are  instituted 
to  determine  as  between  the  parties  thereto 
which  of  them  is  entitled  to  an  award  of  pri- 
ority of  the  invention  claimed.  Both  cannot 
be  entitled  to  it,  but  one  may  be  entitled  as 
against  the  other,  though  there  may  be  some 
third  party  who  might  if  the  claim  of  that 
person  were  placed  in  issue  as  between  that 
person  and  one  or  both  of  the  parties  to  the 
interference  proceeding  show  that  he  was  in 
fact  and  in  reality  entitled  to  an  award  of 
priority  of  the  invention  in  controversy.     *Id. 

2233.  Evidence  that  some  other  party  than 
the  parties  to  the  interference  proceeding  is 
really  the  inventor  of  the  device  in  issue  is  im- 
pertinent to  the  issue  and  cannot  be  received 
or  considered  by  those  charged  with  the  duty 
of  determining  the  issue.     *Id. 

2234.  If  the  practice  obtained  of  allowing 
the  claims  or  pretensions  of  any  or  all  per- 
sons though  not  parties  to  the  interference 
proceedings  to  be  set  up  as  a  means  of  de- 
feating the  claims  of  one  of  the  parties,  it 
would  be  difficult  if  not  impossible  in  many 
cases  to  try  the  interference  issue  as  between 
the  immediate  parties  to  it.  Such  practice 
would  open  the  door  to  collusion,  and  perjury 
would  be  the  recourse  of  many  who  failed 
to  support  their  claims  by  legitimate  evidence. 
*Id. 

2235.  Testimony  that  one  of  the  parties  to 
an  interference  is  not  an  original  inventor, 
but  received  a  disclosure  of  it  from  some 
third  party  not  connected  with  the  interfer- 
ence, relates  to  his  ex  parte  rights  and  not  to 
the  question  of  priority.  It  may  bar  him,  but 
it  does  not  affect  the  rights  of  the  other  par- 
ties. Trufant  v.  Prindle  v.  Brown,  C  D. 
1902,  101  O.  G.  1608. 

2236.  The  contention  that  some  stranger  to 
the  record  was  in  fact  the  first  inventor  does 
not  relate  to  the  question  of  priority  involved 
in  the  interference  and  will  not  be  considered 
upon  an  appeal  relating  to  that  subject.  Os- 
born  V.  Austin,  C.  D.  1903,  102  O.  G.  2781. 

2237.  Evidence  that  some  other  person  than 
the  parties  to  the  interference  is  the  inventor 
of  the  issue  is  not  pertinent  to  an  interfer- 
ence proceeding.  Foster  v.  Antisdel,  C.  D. 
1899,   413,   88   O.   G.   1527,   14  App.   D.   C.   552, 


352 


INTERFERENCE,  XXXIII,  (j). 


554.    *Garrels  et  al.  v.  Freeman,  C.  D.  1903, 
103  O.  G.  1683. 

2238.  Where  Garrels  et  al.  call  a  witness 
(U.)  who  testifies  that  he  is  the  inventor  of 
the  issue  and  this  testimony  does  no  more 
than  establish  the  relation  between  the  witness 
U.  and  one  of  the  contesting  parties  F.  of  em- 
ployee and  employer,  respectively,  whereby 
the  assistance  of  the  employee  inures  to  the 
benefit  of  the  employer  under  the  well-estab- 
lished rule  governing  that  and  similar  rela- 
tions. Held,  that  such  testimony  offered  in  be- 
half of  Garrels  et  al.  has  the  effect  to  strength- 
en rather  than  weaken  F.'s  claim  of  act  and 
date  of  invention.    *Id. 

2239.  Where  Prindle  was  the  last  to  reduce 
to  practice  and  the  last  to  file  his  application, 
he  cannot  be  awarded  priority  of  invention 
over  his  opponent,  Brown,  upon  the  sugges- 
tion or  even  upon  proof  that  Brown  derived 
his  knowledge  from  Trufant,  who  was  once 
involved  in  the  interference.  *Prindle  v. 
Brown.  C.  D.  1904,  112  O.  G.  957. 

2240.  A  junior  claimant  of  an  invention 
cannot  overcome  the  prior  date  of  his  adver- 
sary by  proof  that  some  third  person  was  in 
fact  the  inventor,  even  where  that  third  per- 
son was  once  a  party  to  the  interference.    *Id. 

2241.  The  question  whether  the  senior  ap- 
plicant may  be  entitled  to  priority  of  inven- 
tion as  against  all  persons  is  not  the  issue  in 
an  interference  case  between  two  claimants 
of  the  invention ;  but  the  question  is  whether 
the  junior  applicant  has  sustained  the  burden 
of  establishing  his  own  priority  over  that  of 
his  opponent.     *Id. 

2242.  Held,  that  the  question  whether  some 
other  person  than  the  parties  to  an  interfer- 
ence proceeding  is  an  inventor  of  the  issue  is 
not  pertinent  to  the  issue.  It  can  only  become 
pertinent  should  the  alleged  third  person  file 
an  application  for  patent  on  the  invention  of 
the  issue.  Bauer  v.  Crone,  C.  D.  1905,  118  O. 
G.  1071. 

2243.  Where  H.  contends  that  D.  is  not  an 
original  inventor,  but  derived  knowledge  of 
it  from  a  third  party  not  now  involved  in  the 
interference.  Held,  immaterial  to  the  question 
of  priority  as  between  H.  and  D.  Doble  v. 
Henry.   C.   D.   1905,  118  O.   G.  2249. 

2244.  Where  it  is  alleged  that  one  of  the 
parties  to  an  interference  testified  in  another 
proceeding  that  the  invention  was  disclosed 
to  him  by  a  third  party.  Held,  that  if  true 
it  cannot  change  the  award  of  priority  so  long 
as  he  was  in  possession  of  the  invention  be- 


fore his  opponent  and  that  although  it  might 
lead  to  the  rejection  of  his  claims  if  final 
judgment  is  in  his  favor  it  furnishes  no 
ground  for  reopening  the  interference  for  the 
admission  of  further  evidence.  Dunbar  v. 
Schellenger,  C.  D.  1906,  121  O.  G.  2663. 

2245.  The  question  whether  a  third  party 
not  involved  in  an  interference  is  the  real 
inventor  of  the  subject-matter  in  issue  is  not 
pertinent  to  the  question  of  priority  of  in- 
vention. Hasson  v.  Black,  C.  D.  1908,  132  O. 
G.  841. 

(j)  As  to  Different  Counts. 

2246.  A  generic  and  specific  claim  do  not 
interfere  even  when  based  on  the  same  spe- 
cies, and  valid  patents  may  issue  to  different 
inventors — to  one  for  the  specific  claim,  to 
the  other  for  the  generic  claim — and  the  law 
does  not  require  that  before  the  patents  issue 
it  should  be  determined  in  the  patent  oflice 
that  one  is  the  first  inventor  of  the  species 
and  the  other  the  first  inventor  of  the  genus. 
(Reed  v.  Landman,  C.  D.  1891,  73,  55  O.  G. 
1275,  overruled.)  Williams  v.  Perl,  C.  D. 
1800.  87  O.  G.  1607. 

2247.  Notwithstanding  the  fact  that  two  in- 
ventors filing  independent  applications  disclose 
the  same  species,  it  does  not  follow  that  the 
first  inventor  of  the  species  shown  by  both 
was  the  first  inventor  of  the  genus.  The  one 
earlier  in  the  field  may  have  reached  the  spe- 
cies by  a  process  of  evolution.  The  one  later 
in  the  field  may  have  conceived  and  disclosed 
the  species  shown  at  the  very  outset  of  his 
creative  act.     Id. 

2248.  It  does  not  follow  from  the  fact  that 
two  inventors  finally  reach  the  same  species 
that  both  of  them  first  conceived  or  embodied 
the  invention  in  the  form  of  that  species 
shown  by  both.  Either  or  both  of  them  might 
have  independently  conceived  of  the  genus  in 
a  different  specific  form.    Id. 

2249.  The  presumption  is  that  the  one  to 
make  the  specific  claim  is  the  first  inventor  of 
the  species  and  that  the  one  who  makes  the 
generic  claim  is  the  first  inventor  of  the  genus, 
and  this  presumption  is  strengthened,  as  in  the 
present  case,  when  neither  applicant  will  make 
both  generic  and  specific  claims  upon  the  sug- 
gestion of  the  office.  Williams  v.  Perl,  C.  D. 
1899,  87  O.  G.  1607. 

2250.  Where  the  testimony  shows  a  con- 
ception and  disclosure  of  one  specific  form 
of  the  invention,  Held,  sufficient  to  establish  a 


INTERFERENCE,  XXXIII,  (j). 


353 


conception  and  disclosure  of  the  generic  in- 
vention based  upon  another  specific  form. 
Slaughter  v.  Halle,  C.  D.  1902,  99  O.  G.  2771. 

2251.  Where  the  machines  of  the  respective 
applicants  differ  specifically  from  each  other, 
but  both  embody  the  same  generic  invention 
and  the  issue  of  the  interference  is  sufficiently 
broad  to  cover  that  generic  invention.  Held, 
that  as  between  the  parties  to  the  interference 
the  one  who  invented  his  specific  machine  first 
is  consequently  the  first  inventor  of  the  gen- 
eric invention  defined  in  the  issue.  Barrett 
V.  Harter,  C.  D.  1904,  112  O.  G.  929. 

2252.  Where  an  inventor  deliberately  pro- 
ceeds to  complete  one  specific  form  of  his  in- 
vention and  lays  aside  the  work  on  another 
specific  form  and  no  reason  appears  for  this 
course,  except  that  it  suited  his  own  per- 
sonal business  affairs,  Held,  that  in  law  he  is 
not  excusable  for  the  delay,  as  business  con- 
venience does  not  excuse  delay  in  reducing  an 
invention  to  practice.     Id. 

2253.  As  proofs  which  establish  the  facts 
of  conception  and  disclosure  and  also  of  re- 
duction to  practice  of  one  specific  form  of 
an  invention  cannot  be  held  to  establish  con- 
ception and  disclosure  or  reduction  to  prac- 
tice of  another  specific  form  of  the  same  gen- 
eric invention,  Held,  that  diligence  in  redu- 
cing to  practice  the  conception  of  one  spe- 
cific form  cannot  be  held  to  be  diligence  in  the 
reduction  to  practice  of  another  specific  form. 
Id. 

2254.  Where  the  testimony  shows  concep- 
tion of  the  invention  by  an  inventor  of  two 
specific  forms,  one  form  of  which  constitutes 
the  invention  of  the  issue,  and  that  the  in- 
ventor worked  upon  and  reduced  to  practice 
the  form  of  the  invention  not  defined  by  the 
issue  and  did  nothing  toward  completing  the 
invention  defined  in  the  issue  until  after  his 
opponent  entered  the  field,  Held,  that  the  in- 
ventor has  not  shown  reasonable  diligence. 
Clement  v.  Richards  v.  Meissner,  C.  D.  1904, 
113  O.  G.  1143. 

2255.  Where  a  party  disclosed  two  distinct 
forms  of  invention,  diligence  in  the  perfec- 
tion of  one  form  cannot  take  the  place  of  dil- 
igence in  the  perfection  of  the  other  form  to 
support  an  award  of  priority  as  to  the  latter 
form.  Briggs  v.  Lillie  v.  Cook  v.  Jones  & 
Taylor,  C.  D.  1905,  116  O.  G.  871. 

2256.  Held,  that  Cherney  was  the  first  in- 
ventor of  the  construction  covered  by  certain 
counts  of  the  issue  and  that  Clauss  was  the 

23 


first  inventor  of  the  construction  covered  by 
the  other  counts.  Decision  affirmed.  *Cher- 
ney  v.  Clauss,  C.  D.  1905,  116  O.  G.  597. 

2257.  Where  it  appears  that  the  junior 
party  invented  the  main  construction  of  sup- 
porting the  entire  rotating  baking-support,  in- 
cluding means  for  supporting  the  stone  slabs 
upon  the  arms,  and  where  it  further  appears 
that  certain  changes  were  made  by  the  junior 
party  in  the  castings  for  the  arms.  Held,  that 
two  counts  which  include  merely  an  improved 
manner  of  mounting  the  slabs  upon  the  arms 
cover  an  invention  ancillary  to  the  junior 
party's  invention,  and  priority  of  invention  is 
awarded  to  him  also  upon  these  counts,  par- 
ticularly in  the  absence  of  testimony  tending 
to  establish  that  they  were  invented  by  the 
other  party.    Id. 

2258.  Where  some  of  the  counts  of  the  issue 
cover  a  rotating  baking-surface  and  other 
counts  include  such  a  rotating  baking-surface 
in  combination  with  a  peculiar  arrangement 
of  flues.  Held,  that  though  the  applicant  is 
the  original  inventor  of  the  rotating  baking- 
surface  he  has  presented  no  convincing  evi- 
dence tending  to  prove  originality  of  the  com- 
bination claims,  and  priority  upon  these  claims 
is  awarded  to  the  patentee.  Cherney  v.  Clauss, 
C.  D.  1905,  115  O.  G.  2131. 

2259.  A  claim  for  a  flexible  photographic 
film  and  a  strip  of  black  paper  longer  than 
the  film,  including  "means  whereby  one  end 
of  the  film  is  attached  to  the  black  paper," 
Held,  to  be  generic  and  to  cover  the  devices 
of  two  interfering  parties,  one  of  whom 
showed  the  film  attached  by  means  of  a  flexi- 
ble piece  of  paper  and  the  other  of  whom 
showed  tongues  upon  the  film-form  engaging 
slots  in  the  black  strip.    Id. 

2260.  Where  the  issue  of  an  interference 
is  generic  and  includes  the  specific  construc- 
tions of  both  parties,  the  first  inventor  of 
either  of  the  species  is  entitled  to  the  award 
of  priority.  Lovejoy  v.  Cady,  C.  D.  1906,  123 
O.  G.  654. 

2261.  Where  the  issue  of  the  interference 
is  a  generic  claim  and  the  evidence  shows  that 
McCormick  disclosed  the  specific  invention 
disclosed  in  his  application  to  a  third  party, 
who  thereupon  reduced  to  practice  another 
specific  form  of  the  broad  invention.  Held. 
that  such  reduction  to  practice  inures  to  Mc- 
Cormick's  benefit  so  far  as  the  generic  in- 
vention is  concerned.  McCormick  v.  Robin- 
son, C.  D.  1906,  124  O.  G.  2903. 


354 


INTERFERENCE,  XXXIII,  (k). 


(k)  Disclosure  in  Prior  Application  or  Patent. 

2262.  Park  filed  an  application  May  8,  1895, 
which  disclosed  but  did  not  claim  the  subject- 
matter  of  the  issue  and  which  was  passed  to 
issue  November  16,  1895.  The  application  in 
the  interference  was  filed  July  30,  1896,  con- 
taining and  claiming  the  subject-matter  of 
the  first  application,  and  in  addition  thereto 
new  matter.  The  first  application  became 
abandoned  after  the  second  application  was 
filed.  Held,  that  the  subject-matter  of  the 
first  application  being  a  part  of  the  second 
application,  any  idea  that  Park  intended  to 
abandon  the  subject-mattter  of  the  application 
is  negatived.  Park  v.  Cain,  C.  D.  1898,  83 
O.  G.  1345. 

22G3.  Held,  further,  that  while,  strictly 
speaking,  the  second  application  for  all  pur- 
poses may  not  be  susceptible  of  being  treated 
as  a  continuation  of  the  first  application,  yet 
for  many  purposes  it  can  be  so  treated.    Id. 

2264.  Held,  further,  that  the  second  applica- 
tion is,  for  the  purpose  of  showing  a  con- 
structive reduction  to  practice,  a  continuation 
of  the  first  application,  and  that  Park,  having 
disclosed  the  subject-matter  of  the  issue  in 
his  first  application  at  a  date  prior  to  any 
date  that  can  be  given  to  Cain,  is  entitled  to 
an  award  of  priority.     Id. 

2265.  Park  filed  an  application  on  May  8, 
1895,  which  disclosed  and  claimed  substan- 
ually  the  subject-matter  of  the  interference. 
This  application  was  allowed,  but  became 
abandoned.  Park  filed  a  second  application, 
the  one  involved  in  this  interference,  before 
the  first  became  abandoned,  containing  sub- 
stantially the  claim  of  the  allowed  and  aban- 
doned application.  Held,  that  Park  is  entitled 
to  claim  a  constructive  reduction  to  practice 
as  of  May  8,  1895,  as  in  the  first  application 
there  was  not  only  clearly  disclosed  the  issue 
of  the  interference,  but  a  claim  was  allowed 
which  was  repeated  in  the  application  in  in- 
terference and  which  became  the  issue  there- 
of.    Park  V.  Davis,  C.  D.  1898,  84  O.  G.  146. 

2266.  Where  a  second  application  was  filed 
while  a  first  application  was  forfeited,  and  a 
comparison  of  the  two  applications  shows  that 
the  drawing  of  the  first  is  the  same  as  one 
sheet  of  the  second  and  that  the  specification 
of  the  first  is  incorporated  in  the  second,  and 
additional  drawings  are  filed  with  the  second 
application  and  additional  matter  is  included 
in  the  specification  thereof  which  embodies 
some  features  not  in  the  first,  Held,  that  on 


an  interference  on  the  second  application  the 
applicant  should  have  the  benefit  of  his  orig- 
inal application  as  a  constructive  reduction 
to  practice  of  the  invention  set  forth  therein 
and  embodied  in  the  second  application.  *Cain 
V.  Park,  C.  D.  1899,  86  O.  G.  797. 

2267.  Where  in  a  motion  to  dissolve  an  in- 
terference and  to  redeclare  it  an  earlier  ap- 
plication than  the  one  in  issue  is  disclosed 
by  the  moving  party  on  which  said  party  re- 
lies to  anticipate  his  opponent.  Held,  that  as 
the  motion  is  based  upon  what  is  disclosed 
in  said  earlier  application  the  said  application 
should  be  disclosed  to  the  opposing  party. 
(White  V.  Demarest,  C.  D.  1887,  133,  41  O. 
G.  1161,  distinguished.)  Thorpe  v.  White  and 
White,  C.  D.  1900,  91  O.  G.  227. 

2268.  Held,  further,  that  said  moving  party 
should  not  be  permitted  to  take  advantage  of 
his  neglect  in  not  earlier  moving  to  have  said 
application  included  in  the  interference.    Id. 

2269.  Where  there  was  a  judgment  on  the 
record  against  Thorpe  in  an  interference  in 
which  two  of  his  applications  were  involved 
and  he  moved  to  vacate  the  judgment  for 
the  purpose  of  having  an  interference  declared 
on  the  same  subject-matter,  including  an  ear- 
lier application  of  his,  which  it  is  admitted  on 
behalf  of  White  and  White  discloses  part  of 
the  subject-matter  of  the  interference;  but 
they  contend  that  Thorpe  having  canceled  the 
interfering  claims  in  his  earlier  application 
and  filed  the  two  later  ones  for  the  purpose 
of  interference  is  estopped  from  placing  the 
interfering  claims  in  the  prior  application  for 
the  purpose  of  a  second  interference,  Held, 
that  as  Thorpe's  earlier  application  discloses 
the  counts  of  the  issue  the  office  is  in  posses- 
sion of  facts  showing  an  earlier  constructive 
reduction  to  practice  by  Thorpe  than  by  White 
and  White,  and  it  is  the  duty  of  the  office  to 
place  the  earlier  application  in  interference 
with  White  and  White.  Thorpe  v.  White  and 
White,  C.  D.  1900,  91  O.  G.  1435. 

2270.  Where  White  and  White  contended 
that  Thorpe  was  not  acting  in  good  faith 
and  that  the  motion  made  by  him  was  a  dila- 
tory one  with  the  object  of  delaying  the  issue 
of  the  patent  to  White  and  White  after  judg- 
ment by  default,  Held,  that  even  conceding 
this  to  be  true  it  cannot  affect  the  decision  of 
the  case  if  Thorpe  is  asserting  a  legal  right 
and  is  not  seeking  to  obtain  relief,  the  grant 
or  refusal  of  which  is  in  the  discretion  of 
the  office,  it  being  well  settled  that  motives 
which  actuate  a  litigant  in  asserting  a  legal 


INTERFERENCE,  XXXIII,  (k). 


355 


right  cannot  lawfully  control  the  decision  of 
the  question.    Id. 

2271.  The  contention  that  a  motion  to  shift 
the  burden  of  proof  and  include  in  the  inter- 
ference a  prior  application  filed  by  B.  is  im- 
proper because  based  upon  matter  outside  of 
the  present  record  is  not  well  founded,  since 
if  there  was  error  in  failing  to  include  that 
application  the  only  way  in  which  it  can  be 
corrected  is  by  referring  to  matter  outside 
of  the  present  record.  Bundy  v.  Rumbarger, 
C.  D.  1900,  92  O.  G.  2001. 

2272.  Where  on  a  motion  to  shift  the  bur- 
den of  proof  and  include  an  earlier  pending 
application  it  appears  that  the  earlier  case 
clearly  discloses  the  invention  in  controversy, 
although  there  is  no  statement  in  either  case 
connecting  it  with  the  other  and  the  second 
includes  additional  matter  not  shown  in  the 
first.  Held,  that  the  motion  should  be  granted. 
Bundy  v.  Rumbarger,  C.  D.  1900,  92  O.  G. 
2002. 

2273.  The  question  whether  the  second  ap- 
plication is  a  continuation  of  the  first  as  to 
the  matter  in  issue  is  one  of  fact  which  must 
be  determined  by  the  office  without  regard  to 
any  statement  to  that  effect  in  the  cases  them- 
selves. The  statement  would  be  a  mere  no- 
tice of  the  fact ;  but  the  fact  and  not  the  state- 
ment is  what  would  justify  action.  This  of- 
fice must  take  notice  of  facts  shown  by  its 
records.     Id. 

2274.  If  an  application  involved  in  the  in- 
terference is  a  continuation  of  a  prior  appli- 
cation such  as  to  give  the  applicant  the  bene- 
fit of  its  date  for  a  constructive  reduction  to 
practice  of  the  matter  in  issue,  although  it 
is  not  a  continuation  for  all  purposes,  Held, 
that  the  applicant  is  entitled  to  the  benefit  of 
the  earlier  date  on  the  question  of  burden  of 
proof.  (Park  v.  Cain,  C.  D.  1898,  73,  83  O. 
G.  1345.)     Id. 

2275.  Since  the  rules  provide  that  the  first 
to  file  an  application  clearly  disclosing  the  in- 
vention will  be  presumed  to  be  the  first  in- 
ventor and  will  be  made  the  senior  party  and 
that  in  the  absence  of  testimony  judgment 
will  be  rendered  on  the  record  against  the 
junior  party.  Held,  that  a  party  who  was  the 
first  to  file  an  application  disclosing  the  in- 
vention and  in  so  far  as  the  office  records  go 
appears  to  be  the  first  inventor  should  not 
be  made  the  junior  party.     Id. 

2276.  For  two  applications  to  be  continua- 
tions of  each  other  such  as  to  warrant  the 
second   application    in   having   the    benefit   of 


the  first  date  the  proceeding  relating  to  the 
two  must  be  in  fact  continuous.  The  pro- 
ceedings on  the  two  must  be  merged  into  a 
single  proceeding.  There  must  be  a  connec- 
tion between  the  two  which  is  warranted  by 
law.  (Sec.  4894,  Rev.  Stats.)  Sarfert  v. 
Meyer,  C.  D.  1902,  30,  98  O.  G.  793. 

2277.  Where  it  appears  that  a  patent  to 
Meyer  was  granted  on  January  16,  1900,  and 
that  it  disclosed  an  invention  which  consti- 
tuted the  subject-matter  of  an  application 
filed  February  9,  1901,  Held,  that  the  appli- 
cation filed  February  9,  1901,  was  not  a  con- 
tinuation of  the  application  on  which  the  pat- 
ent was  granted,  but  must  stand  by  itself  and 
upon  its  own  merits.     Id. 

2278.  The  last  action  by  the  office  on  the 
parent  application  was  the  date  upon  which 
the  patent  granted  thereon  was  signed,  sealed, 
and  delivered — viz.,  January  16,  1900.  The 
next  action  by  applicant  was  the  filing  of  the 
present  application  on  February  9,  1901,  more 
than  one  year  after  January  16,  1900.  The 
actions  are  not  such  as  to  make  of  the  "whole 
one  continuous  proceeding"  such  as  defined  in 
section  4894.  A  period  of  more  than  one  year 
elapsed  between  successive  actions.     Id. 

2279.  Where  H.  filed  an  application  for  a 
patent  on  the  invention  in  controversy  on  June 
9,  1897,  and  at  a  later  date  filed  the  applica- 
tion here  involved  as  a  substitute  for  that 
earlier  one,  Held,  that  he  is  under  the  well- 
settled  rule  entitled  to  June  9,  1897,  for  a  con- 
structive reduction  to  practice.  Silverman  v. 
Hendrickson,  C.  D.  1902,  99  O.  G.  1171. 

2280.  Where  W.  had  two  applications  pend- 
ing in  either  of  which  the  claims  in  contro- 
versy could  be  made  and  he  elects  to  make 
them  in  the  latter  case.  Held,  that  he  is  enti- 
tled to  the  date  of  his  earlier  case  as  his 
record  date  upon  the  question  of  priority. 
Patten  v.  Wiessenfeld,  C.  D.  1902,  99  O.  G. 
2:)47. 

2281.  Where  priority  was  awarded  to  W. 
by  reason  of  a  prior  application  not  directly 
included  in  the  interference  and  P.  moves  to 
dissolve  on  the  ground  of  irregularity,  alleg- 
ing that  the  earlier  case  should  have  been  pos- 
itively included  in  the  interference.  Held,  that 
the  motion  relates  to  a  technicality  rather  than 
to  the  merits  and   was  properly  denied.     Id. 

2282.  Where  a  party  to  an  interference  is 
given  the  benefit  of  the  date  of  an  earlier 
application  filed  by  him  under  Rule  116  and 
on  a  motion  to  shift  the  burden  of  proof  the 
examiner  decides  that  the  early  case  discloses 


356 


INTERFERENCE,  XXXIII,  (k). 


the  invention,  Held,  that  this  is  not  a  favor- 
able decision  upon  his  right  to  make  the  claim 
from  which  no  appeal  can  be  taken,  but  is 
merely  a  ruling  as  to  his  record  proofs  from 
which  an  appeal  may  be  taken  to  the  commis- 
sioner. Diftgen  v.  Parmenter,  C.  D.  1902,  99 
O.  G.  29G0. 

2283.  Where  on  a  motion  to  shift  the  bur- 
den of  proof  it  is  argued  that  a  party  is  not 
entitled  to  the  benefit  of  the  date  of  an  ear- 
lier application  because  the  claim  was  not 
made  therein  and  because  there  was  included 
a  disclaimer  of  it.  Held,  that  this  relates  to 
his  right  to  make  the  claim  and  not  to  the 
disclosure  in  the  early  case,  which  is  the  only 
thing   considered   under   Rule   116.     Id. 

2284.  Where  T.  claims  that  a  prior  applica- 
tion filed  by  him  in  189.3  and  abandoned  after 
the  present  application  was  filed  disclosed  the 
invention,  Held,  that  he  is  entitled  to  the  date 
of  that  application  for  everything  that  it  dis- 
closes, since  the  two  are  continuous  if  they 
cover  the  same  thing.  Tripler  v.  Linde,  C.  D. 
1902,    101    O.   G.    2288. 

2285.  Where  the  issue  calls  for  a  cooler 
as  a  separate  element  of  the  combination  and 
T.'s  earlier  application  introduced  in  evidence 
does  not  disclose  such  a  cooler  and  has  been 
rejected  as  inoperative  because  of  its  absence. 
Held,  that  he  is  not  entitled  to  the  date  of 
that  application  for  a  constructive  reduction 
to  practice.    Id. 

2286.  Where  the  issue  includes  a  cooler  as 
an  element  and  the  evidence  shows  that  T. 
did  not  regard  a  cooler  as  necessary  and  did 
not  intend  to  use  one.  Held,  that  he  had  no 
conception  of  the  invention.     Id. 

2287.  Where  a  party  in  his  testimony  refers 
to  an  earlier  application  not  involved  in  the 
interference  as  proof  of  earlier  invention  by 
him,  Held,  that  it  must  be  considered  like  any 
other  evidence  and  that  the  examiner  of  in- 
terferences must  determine  whether  or  not 
it  disclosed  the  invention  in  controversy  with- 
out regard  to  the  views  upon  the  subject  which 
may  have  been  expressed  by  the  primary  ex- 
aminer in  his  treatment  of  the  case.  Robinson 
V.  Copeland,  C.  D.  1903,  102  O.  G.  466. 

2288.  Where  the  examiner  of  interferences 
is  of  the  opinion  that  an  application  intro- 
duced in  evidence  did  not  as  filed  disclose  the 
invention  and  that  the  disclosure  therein  con- 
stituted new  matter  inserted  therein  by  amend- 
ment and  it  appears  that  the  primary  exam- 
iner permitted  the  amendment  and  does  not 
regard  it  as  involving  new  matter,  Held,  that 


the  examiner  of  interferences  is  not  bound 
by  the  action  of  the  primary  examiner,  but 
must  give  his   independent  judgment.     Id. 

2289.  .■\  party  is  entitled  to  contest  the  ques- 
tion whether  his  opponent's  application  direct- 
ly involved  in  the  interference  discloses  the 
invention  by  a  motion  to  dissolve  notwith- 
standing a  prior  favorable  decision,  and  he 
has  an  equal  right  to  contest  before  the  ex- 
aminer of  interferences  at  final  hearing  the 
same  question  in  regard  to  applications  in- 
troduced as  part  of  the  evidence.     Id. 

2290.  Where  a  later  application  discloses 
matter  not  disclosed  in  an  earlier  application, 
but  also  includes  matter  which  is  common  to 
both  applications,  Held,  that  the  later  applica- 
tion is  a  continuation  of  the  prior  applica- 
tion as  far  as  the  invention  common  to  both 
applications  is  concerned,  and  as  to  this  com- 
mon invention  the  inventor  is  entitled  to  the 
benefit  of  the  filing  date  of  his  prior  applica- 
tion in  an  interference  proceeding.  Gilbert- 
Stringer  v.  Johnson,  C.  D.  1903,  102  O.  G.  621. 

2291.  Where  an  interference  is  declared  and 
one  of  the  parties  is  given  the  benefit  of  the 
date  of  filing  of  a  prior  application  which 
does  not  disclose  the  subject-matter  of  one  of 
the  counts  of  the  issue.  Held,  that  there  was 
such  irregularity  in  the  declaration  of  the  in- 
terference as  to  this  count  as  to  preclude  the 
proper  determination  of  the  question  of  pri- 
ority.    Id. 

2292.  Where  there  is  doubt  whether  an 
earlier  application  disclosed  the  invention  in 
a  later  continuous  application  involved  in  in- 
terference. Held,  that  the  earlier  application 
should  be  excluded  from  the  declaration  of 
the  interference.  Munro  v.  Alexander,  C.  D. 
1903,  106  O.  G.  1000. 

2293.  Where  the  office  fails  to  include  an 
earlier  application  by  one  of  the  parties  in 
the  declaration  of  the  interference,  he  is  not 
deprived  of  the  benefit  of  it  if  it  discloses 
the  invention,  since  he  may  introduce  it  as 
a  part  of  his  evidence.    Id. 

2294.  Where  M.  files  a  mechanical  applica- 
tion and  subsequently  a  design  application 
and  is  placed  in  interference  with  a  design 
application  filed  by  G.  after  the  filing  of  his 
mechanical  application,  but  prior  to  the  filing 
of  his  design  application.  Held,  that  the  bur- 
den of  proof  was  properly  placed  upon  M. 
McArthur  v.  Gilbert,  C.  D.  1904,  110  O.  G. 
2509. 

2295.  When  an  applicant  filed  a  complete 
application   for  a  patent  on  a  certain  inven- 


INTERFERENCE,  XXXIII,  (k). 


357 


tion  and  thereafter  files  another  application 
for  the  same  invention  the  two  appHcations 
pending  at  the  same  time,  and  subsequently 
permits  the  first  application  to  become  aban- 
doned, he  is  entitled  to  the  date  of  the  first 
application  for  his  date  of  constructive  reduc- 
tion to  practice  for  the  invention  which  is 
common  to  the  two  applications.  Lotterhand 
V.  Hanson,  C.  D.  1904,  108  O.  G.  799. 

2286.  When  two  applications  filed  by  the 
same  applicant  are  pending  together,  the  ap- 
plicant has  the  benefit  of  the  first  date  of  filing 
for  a  constructive  reduction  to  practice,  as 
the  whole  constitutes  one  continuous  proceed- 
ing.    Id. 

2297.  H.  having  a  constructive  reduction  to 
practice  prior  to  the  date  of  L.'s  established 
conception  is  entitled  to  the  award  of  priority 
of  invention.     Id. 

2298.  Where  a  party  files  an  application 
claiming  a  machine  and  describing  the  article 
produced  by  it  and  while  that  application  is 
pending  he  files  a  second  application  claiming 
the  article.  Held,  that  in  an  interference  as 
to  the  second  case  the  applicant  is  entitled  to 
the  date  of  the  first  case  in  determining  the 
question  of  the  burden  of  proof.  Lowry  v. 
Spoon,  C.   D.  1904,  110  O.  G.  858. 

2299.  A  divisional  application  entitles  the 
applicant  to  the  benefit  of  the  date  of  the 
original  application  from  which  it  was  di- 
vided, and  this  is  true  although  the  first  con- 
tained no  claims  to  the  matter  in  the  second, 
since  the  two  constitute  parts  of  one  contin- 
uous proceeding.     Id. 

2300.  Where  a  party  files  an  application  for 
patent  disclosing  an  invention,  but  permits  it 
to  become  abandoned,  and  thereafter  files  a 
second  application  which  is  placed  in  inter- 
ference. Held,  that  the  first  application  is 
proof  only  of  the  conception  of  the  invention 
and  is  not  a  constructive  reduction  to  practice. 
Trufant  v.  Prindle  v.  Brown,  111  O.  G.  1035. 

2301.  Where  there  is  doubt  whether  an  ear- 
lier application  disclosed  the  invention  in  a 
later  continuous  application  involved  in  in- 
terference, Held,  that  the  earlier  application 
should  be  excluded  from  the  declaration  of 
the  interference.  (Munro  v.  Alexander,  C.  D. 
1903,  334,  lOG  O.  G.  1000.)  Greenawalt  v. 
Mark,  C.  D.  1004,  111  O.  G.  2224. 

2302.  Where  the  office  fails  to  include  an 
earlier  application  by  one  of  the  parties  in  the 
declaration  of  the  interference,  he  is  not  de- 
prived of  the  benefit  of  it,  if  it  discloses  the 


invention,  since  he  may  introduce  it  as  part  of 
his  evidence.    Id. 

2303.  Where  it  appears  that  the  senior  party 
to  an  interference  has  a  patent  disclosing  the 
invention  of  the  issue  and  it  is  contended  by 
him  that  the  junior  party  has  not  established 
by  means  of  his  testimony  a  date  of  concep- 
tion prior  to  the  date  of  filing  of  the  applica- 
tion on  which  the  patent  was  granted.  Held, 
that  the  question  presented  for  decision  is 
that  of  priority  of  invention  and  that  judg- 
ment should  be  rendered  in  favor  of  the  se- 
nior party  if  the  facts  be  found,  as  alleged, 
and  that  the  interference  should  not  be  dis- 
solved on  motion.  Winton  v.  Jeffrey,  C.  D. 
1904,  112  O.  G.  500. 

2304.  Where  a  party  to  an  interference  has 
a  prior  patent  which  he  believes  discloses  the 
invention  of  the  issue,  Held,  that  to  insure 
its  consideration  attention  should  be  called  to 
the  patent  in  the  record  under  the  provisions 
of  Rule  154  (6).     Id. 

2305.  The  primary  examiner  should,  in  pre- 
paring the  notices  under  Rule  97,  arrange  the 
parties  in  the  inverse  chronological  order  in 
which  they  filed  the  applications  directly  in- 
volved in  the  interference,  leaving  the  ques- 
tion whether  there  are  earlier  applications  by 
either  party  which  may  constitute  legal  proof 
of  earlier  invention  for  subsequent  determi- 
nation by  the  examiner  of  interferences.  Rau- 
let  and  Nicholson  v.  Adams,  C.  D.  1905,  114 
O.  G.  827. 

2306.  The  examiners  should,  in  connection 
with  the  declaration  of  the  interference,  call 
the  attention  of  the  examiner  of  interferences 
to  any  earlier  applications  by  either  party 
which  it  is  thought  may  be  considered  proof 
of  earlier  invention  of  the  subject-matter  in 
issue.     Id. 

2307.  Where  an  applicant  relies  upon  an 
earlier  application  and  its  filing  date  is  such 
that  if  he  had  made  the  invention  at  that  time 
it  could  have  been  described  and  claimed  in 
such  application,  but  was  not,  Held,  that  the 
emission  to  include  the  invention  of  the  issue 
in  such  applications  discredits  his  testimony 
that  he  has  made  the  invention  at  such  early 
date.  *Norden  v.  Spaulding,  C.  D.  1905,  114 
O.  G.  1828. 

2308.  Where  an  inventor  takes  out  a  patent 
covering  a  certain  combination  of  elements 
and  subsequently  makes  a  second  application 
for  a  patent  on  a  combination  which  performs 
substantially  the  same  function,  but  differs 
from  the  first  by  the  omission  of  one  element 


358 


INTERFERENCE,  XXXIII,  (k). 


and  conscqufnt  m(Kli(ication  of  certain  others, 
and  the  patent  office  finds  a  patentable  dif- 
ference between  the  two  inventions,  Held,  that 
the  inventor  will  not  be  heard  to  argue  in  an 
interference  proceeding  that  a  conception  of 
the  first  invention  necessarily  involves  a  con- 
ception of  the  second  and  that  the  second 
differed  from  the  first  only  by  reason  of  the 
exercise  of  mere  mechanical  skill.  Pierce  v. 
Hallett,  C.  D.  I'JO'i,  117  O.  G.  20;-). 

2309.  Where  in  an  interference  relating  to 
a  mechanical  invention  it  appears  that  one  of 
the  parties  has  a  design  patent  fully  disclosing 
the  invention  granted  before  his  opponent's 
date  of  conception.  Held,  that  he  must  be 
regarded  as  the  first  inventor.  Lowrie  v.  Tay- 
lor and  Taylor,  C.  D.  1905,  118  O.  G.  1681. 

2310.  The  statute  makes  disclosure  in  a 
patent  or  printed  publication  an  absolute  bar 
against  the  allowance  of  a  patent  to  one  who 
subsequently  makes  that  invention  and  there- 
fore a  design  patent  must  be  given  the  same 
eflfect  as  completion  of  the  invention  disclosed 
therein  by  reduction  to  practice.     Id. 

2311.  Where  it  is  urged  that  Struble  is  bar- 
red from  obtaining  a  patent  upon  the  inven- 
tion in  issue  by  his  foreign  patents  in  view 
of  his  failure  to  refer  to  his  prior  applica- 
tions and  in  view  of  the  statements  in  the 
oath  which  forms  part  of  the  application  in 
interference  excluding  foreign  patents.  Held, 
that  if  the  invention  in  issue  was  disclosed 
in  the  earlier  applications,  then  the  latter  ap- 
plication is  a  continuation  of  said  earlier  ap- 
plications and  the  foreign  patents  are  no  bar 
to  the  issue  of  a  patent  thereon.  Struble  v. 
Young,  C.  D.  1906,  121  O.  G.  3,39. 

2312.  The  question  of  whether  an  applicant 
in  interference  is  entitled  to  the  benefit  of  the 
dates  of  his  earlier  applications,  raised  by  the 
introducing  of  his  earlier  applications  in  evi- 
dence and  by  the  testimony  taken  concerning 
them,  should  be  considered  by  the  examiner 
of  interferences  and  appellate  tribunals  as 
part  of  the  case  upon  priority  of  invention. 
Id. 

2313.  Priority  of  invention  awarded  to  L. 
because  she  was  the  first  to  reduce  to  prac- 
tice and  because  the  invention  was  disclosed 
in  a  design  patent  granted  to  her  prior  to  the 
earliest  date  of  conception  which  can  be 
found  for  T.  and  T.  *Taylor  and  Taylor  v. 
Lowrie,  C.  D.  190G,  123  O.  G.  1991. 

2314.  Where  a  party  has  two  applications 
involved  in  a  interference  and  moves  under 
Rule  109  for  the  addition  of  claims  to  one  of 


his  applications  and  the  structure  disclosed 
in  that  application  can  perform  the  function 
specified  in  the  claims  only  by  the  omission 
of  a  part,  and  the  application  contains 
no  reference  to  the  omission  of  that 
part,  or  the  the  function  set  forth  in  the 
claims,  Held,  that  the  fact  that  the  applicant's 
other  application  discloses  the  idea  of  omit- 
ting the  part  referred  to,  and  thus  securing 
the  function  described  in  the  claims,  affords 
no  reason  for  granting  the  motion,  and  Held, 
that  the  entire  disclosure  necessary  to  sup- 
port the  claim  must  be  in  the  application  in 
which  the  claim  is  made.  Scott  v.  Southgate, 
C.  D.  190G,  125  O.  G.  1703. 

2315.  S.  relied  for  conception  and  construc- 
tive reduction  to  practice  of  the  invention  on 
an  earlier  application  copending  with  the  one 
involved  in  the  interference.  Y.  contended 
that  the  earlier  application  did  not,  as  filed, 
disclose  the  invention.  Some  months  prior 
to  Y.'s  date  of  conception  an  amendment  to 
that  application  was  filed  which  clearly  dis- 
closed the  invention  on  issue.  Held,  that  this 
amendment  established  conception  and  dis- 
closure of  the  invention,  that  the  prosecution 
of  the  invention  disclosed  therein  in  the  ear- 
lier application  constituted  diligence  and  that 
priority  was  properly  awarded  to  S.  ''"Young 
v.  Struble,  C.  D.  1910,  l.')2  O.  G.  123S. 

231G.  S.  relied  for  conception  and  construc- 
tive reduction  to  practice  of  the  invention  on 
earlier  application  copending  with  the  one  in- 
volved in  the  interference.  Y.  contended  that 
the  earlier  application  did  not,  as  filed,  dis- 
close the  invention.  Some  months  prior  to 
Y.'s  date  of  conception  an  amendment  to 
that  application  was  filed  which  clearly  dis- 
closed the  invention  in  issue.  Held,  that  this 
amendment  established  conception  and  dis- 
closure of  the  invention,  that  the  prosecution 
of  the  invention  disclosed  therein  in  the  ear- 
lier application  constituted  diligence,  and  that 
priority  was  properly  awarded  to  S.  *Young 
v.  Struble,  C.  D.  1910,  157  O.  G.  488. 

2317.  Priority  Held,  properly  awarded  to  H. 
and  G.,  the  senior  parties,  since  the  invention 
in  issue  was  disclosed  in  an  application  filed 
by  them  prior  to  any  date  of  conception  claim- 
ed by  the  junior  parties.  *Booth,  Booth  and 
Flynt  v.  Hanan  &  Gates,  C.  D.  1911,  163  O.  G. 
729. 

2318.  Where  C.  relies  upon  a  prior  appli- 
cation of  which  he  contends  the  application 
in  interference  is  a  division  and  it  appears 
that  the  claims  of  such  prior  application  were 


INTERFERENCE,  XXXIII,  (1). 


359 


rejected  by  all  the  tribunals  of  the  patent  of- 
fice and  that  thereafter  and  after  the  issu- 
ance of  L.'s  patent  C.  filed  his  present  appli- 
cation with  claims  taken  from  his  patent, 
copying  the  drawings  of  the  prior  application, 
but  adding  to  the  specilication  thereof,  Held, 
that  there  is  imposed  upon  C.  the  burden  of 
showing  very  clearly  that  he  had  a  conception 
of  the  invention  in  issue  and  disclosed  it  in  his 
prior  application.  *Curtis  v.  Lindmark,  C.  D. 
1911,  171  O.  G.  484. 

2319.  Prior  application  relied  upon  by  C, 
the  junior  party.  Held,  not  to  disclose  the  in- 
vention in  issue  and  that  priority  was  prop- 
erly awarded  to  L.    *Id. 

(e)   Concession. 

2320.  Where  a  motion  was  made  to  dissolve 
an  interference  on  the  ground  that  "the  in- 
vention disclosed  in  the  issue  of  said  interfer- 
ence is  not  patentable  to  Leonard  Paget  or  his 
assignees,  the  Reliance  Lamp  Electric  Com- 
pany, by  virtue  of  concessions  made  in  the 
testimony  taken  in  behalf  of  said  Leonard 
Paget,  which  concessions  allege  that  the  sub- 
ject-matter of  the  issue  embraces  no  invention 
over  the  subject-matter  disclosed  in  a  prior 
patent.  No.  618,993,  granted  to  said  Leonard 
Paget  on  the  7th  day  of  February,  1899,"  Held, 
that  the  motion  being  based  upon  grounds 
arising  out  of  testimony  taken  on  the  question 
of  priority,  it  should  not,  under  the  settled 
practice  of  the  office,  be  transmitted  to  the 
primary  examiner.  (Cook  v.  Leach,  43  MS. 
Dec,  370;  Potter  et  al.  v.  Soden,  47  MS.  Dec, 
119;  Thomson  et  al.  v.  Hisley,  C.  D.  1894,  43, 
66  O.  G.  1596,  cited.)  Paget  v.  Bugg,  C.  D. 
1899,  89  O.  G.  1342. 

2321.  Held,  further,  that  the  testimony  on 
which  the  motion  is  based  is  such  testimony 
as  should  be  considered  on  the  question  of 
priority,  and  if  the  examiner  of  interferences 
or  the  examiners-in-chief  are  of  the  opinion 
that  it  establishes  a  statutory  bar  to  the  grant 
of  a  patent  Rule  120  provides  relief  for  the 
appellant  in  that  these  tribunals  may  call  the 
commissioner's  attention  to  the  statutory  bar. 
Id. 

2322.  The  sole  and  original  inventor  of  a 
device  cannot  part  with  his  right  to  a  patent 
and  give  a  valid  claim  to  some  one  else  as 
inventor  by  a  surrender  or  concession  in 
favor  of  that  other  party.  The  patent  must 
disclose  the  real  inventor,  and  the  issue  there- 
of must  be  founded  upon  his  right  as  such 


inventor.     *Tyler  v.  Kelch,  C.  D.  1902,  98  O. 
G.   1282. 

2323.  A  written  abandonment  of  the  inven- 
tion to  avoid  the  continuation  of  an  interfer- 
ence under  Rule  125  must  be  signed  by  the  in- 
ventor as  well  as  by  the  assignee.  Skinner  v. 
Murray,  C.  D.  1903,  107  O.  G.  542. 

2324.  The  law  requires  the  inventor  to  sign 
the  application  for  a  patent  even  after  he  has 
parted  with  all  interest  in  the  invention,  and 
since  he  is  at  least  a  nominal  party  he  should 
in  all  cases  sign  the  letter  of  abandonment. 
Id. 

2325.  Where  after  a  decision  as  to  priority 
is  rendered  in  favor  of  the  senior  party  be- 
cause the  junior  party  fails  to  print  his 
testimony  the  senior  party  files  a  paper 
conceding  priority  to  the  junior  party. 
Held,  that  the  decision  will  be  set  aside  and 
the  concession  of  priority  entered.  Couper 
and  Somers  v.  Bannister,  C.  D.  1904,  112  O.  G. 
1480. 

2326.  Where  a  decision  as  to  priority  of  in- 
vention is  made  from  a  consideration  of  the 
evidence,  Held,  that  it  will  not  be  set  aside 
because  of  a  paper  thereafter  filed  by  the  suc- 
cessful party  conceding  priority  of  invention 
by  his  opponent.  Humphrey  v.  Fickert,  C.  D. 
1904,    113   O.   G.   2094. 

2327.  Where  the  office  finds  one  party  to 
be  the  first  inventor,  it  cannot  issue  the  pat- 
ent to  another  merely  because  the  first  inven- 
tor consents  to  it.     Id. 

2328.  Judgment  based  upon  some  technical 
default,  such  as  failure  to  print  testimony, 
may  be  vacated  upon  consent  of  the  parties ; 
but  this  is  not  true  where  the  case  was  de- 
cided on  its  merits.     Id. 

2329.  Where  a  decision  on  the  question  of 
priority  of  invention  based  upon  the  evidence 
has  been  rendered  in  favor  of  one  party  and 
that  decision  has  become  final.  Held,  that  the 
decision  will  not  be  set  aside  and  priority  of 
invention  awarded  to  the  other  party  in  view 
of  a  concession  of  priority  subsequently  filed. 
Humphrey  v.  Fickert,  C.  D.  1905,  115  O.  G. 
803. 

2330.  Where  claims  are  made  by  a  party 
upon  suggestion  under  Rule  96  and  the  party 
thereafter  concludes  that  he  has  no  right  to 
make  the  claims,  he  may  properly  concede 
priority  to  his  opponent  or  abandon  the  in- 
vention represented  by  the  claims,  or  he  may 
permit  judgment  by  default  to  be  rendered 
against  him.  Miller  v.  Perham,  C.  D.  1906, 
121  O.   G.  2667. 


360 


INTERFERENCE,  XXXIII,  (m). 


2331.  An  award  of  priority  may  mean  either 
that  one  of  two  inventors  of  the  same  thing 
subsequent  in  date  to  another  or  that  one 
party  is  the  only  inventor  of  the  issue,  be- 
cause the  other  never  invented  the  same  at 
all,  and  there  seems  to  be  no  reason  why  this 
should  not  be  as  true  where  the  award  is 
based  upon  concession  as  where  it  is  based 
upon  testimony.  Martin  v.  Mullin,  C.  D.  1907, 
127  O.  G.  3216. 

2332.  A  declaration  of  abandonment  accom- 
panied by  a  statement  that  applicant  abandons 
certain  counts  because  they  are  either  lim- 
ited or  anticipated  or  are  not  applicable  to  the 
structure  will  not  be  accepted  under  Rule  125. 
Corrington  v.  Turner,  C.  D.  1908,  136  O.  G. 
1067. 

2333.  A  declaration  of  abandonment  accom- 
panied by  reasons  for  tiling  the  same  will  not 
be  made  the  basis  for  judgment  under  Rule 
12'),  but  it  should  not  be  stricken  from  the 
files.     Id. 

2334.  A  concession  of  priority  should  be 
signed  by  the  applicant,  if  living,  or,  if  not, 
by  his  executor  or  administrator,  even  though 
both  the  applications  involved  in  the  interfer- 
ence are  assigned  to  the  same  party.  Alt  v. 
Carpenter,  C.  D.  1908,  132  O.  G.  1587. 

(m)  Ancillary    Questions. 

2335.  The  question  of  patentability  of  the 
claim  in  interference  is  not  involved  in  the 
interference.  (Hisey  v.  Peters,  C.  D.  1895, 
349,  71  O.  G.  892;  Doyle  v.  McRoberts,  C.  D. 

1897,  413,  79  O.  G.  1029,)  After  the  interfer- 
ence shall  have  been  finally  determined  the 
question  of  patentability  may  be  raised  against 
the  successful  party.     *Hill  v.   Hodge,  C.   D. 

1898,  83  O.  G.  1211. 

2336.  When  the  interference  has  been  de- 
termined and  the  question  of  patentability  is 
before  the  primary  examiner,  the  defeated 
party  to  the  interference  has  no  other  inter- 
est in  the  decision  on  patentability  than  as 
one  of  the  general  public  whose  interests  are 
under  the  protection  of  the  commissioner  of 
patents.    *Id. 

2337.  The  proofs  show  that  after  Christen- 
sen's  conception  of  the  device.  May,  1894,  he 
disclosed  it  to  others  in  the  latter  part  of 
that  year;  that  he  tried  to  obtain  money  to 
enable  him  to  apply  for  patent  in  December, 
1894;  that  he  sought  to  interest  a  party  in  the 
invention  in  the  spring  of  1895 ;  that  in  June, 
1895,  he  made  another  attempt  to  file  an  ap- 
plication;   that    in    September,    1895,    an   oral 


agreement  was  made  in  regard  to  the  matter; 
that  in  December,  189.5,  working  drawings 
were  made  and  that  from  that  time  on  to  the 
time  he  filed  his  application  he  was  working 
on  the  invention ;  that  patterns  were  finished 
in  1896  and  the  device  tested  in  March,  1896, 
and  that  he  applied  for  a  patent  in  April, 
1896.  Held,  that  it  is  difficult  to  conceive  that 
greater  perseverance  and  diligence  could  be 
in  reason  required,  especially  of  one  who  for 
the  greater  part  of  the  time  was  in  a  state 
of  almost  abject  poverty  and  who  was  under 
the  necessity  of  pursuing  constant  employment 
to  procure  the  means  of  subsistence  for  him- 
self and  family.  *Christensen  v.  Noyes,  C.  D. 
1900,  90  O.  G.  223. 

2338.  Where  an  appeal  is  taken  upon  the 
question  of  priority  of  invention,  Held,  that 
tlie  appellant  is  not  entitled  to  a  hearing  upon 
the  question  as  to  the  patentability  of  his  op- 
ponent's claim.  Kempshall  v.  Seiberling,  C.  D. 
1904,  110  O.  G.  1427. 

2339.  Held,  that  only  the  party  who  is  in- 
jured by  an  adverse  decision  can  appeal  there- 
from. Judd  V.  Campbell,  C.  D.  1904,  110  O.  G. 
2016. 

2340.  It  is  within  the  power  and  is  the  duty 
of  the  tribunals  of  the  patent  office  in  deciding 
priority  to  examine  and  decide  all  ancillary 
matters  necessary  to  a  correct  determination 
of  the  main  questions;  but  they  are  not  re- 
quired to  decide  the  ancillary  matters  prior 
to  the  final  decision.  *Allen,  Commissioner 
of  Patents  v.  United  States  of  America,  ex  rel. 
Lowry  and  Planters"  Compress  Co.,  C.  D.  1905, 
116  O.  G.  2253. 

2341.  The  question  as  to  the  right  of  a 
party  to  make  the  interfering  claim  raised  by 
interlocutory  motion  is  to  be  reviewed,  if  at 
all,  on  the  hearing  of  the  statutory  appeal  al- 
lowed from  the  decision  of  the  question  of 
priority  by  the  examiner  of  interferences. 
*Id. 

2342.  Where  consideration  of  patentability 
on  appeal  on  priority  was  urged  with  a  view 
to  the  exercise  of  the  supervisory  authority 
of  the  commissioner,  Held,  that  introduction 
of  supervisory  authority  into  the  judicial 
determinations  of  the  patent  office  is  a  thing 
which  should  not  be  done  excepting  as  a  last 
resort  to  avoid  a  clear  miscarriage  of  justice. 
Sobey  V,  Holsclaw,  C.  D.  1905,  119  O.  G.  1922. 

2343.  Where  the  supervisory  authority  was 
invoked  for  the  consideration  of  the  patent- 
ability of  the  issue  and  it  appeared  that  the 
primary  examiner  had  found  the  issue  to  be 


INTERFERENCE,  XXXIII,  (m). 


361 


patentable  and  that  the  examiners-in-chief 
had  refused  to  recommend  adversely  to  the 
patentability  of  the  issue  in  their  decision  on 
priority  and  that  in  each  case  the  action  had 
been  made  in  view  of  the  references  still  re- 
lied upon.  Held,  that  the  case  instead  of  being 
one  presenting  palpable  necessity  for  interfer- 
ence by  supervisory  authority  is  one  in  which 
the  patentability  of  the  issue  is  so  well  set- 
tled by  the  determination  of  competent  tribu- 
nals that  the  prevailing  party  should  be  al- 
lowed to  take  the  claims  and  support  their 
validity  before  the  courts.    Id. 

2344.  Under  the  circumstances  set  forth  in 
Pohle  v.  McKnight  (C.  D.  1905,  549,  119  O. 
G.  2519)  and  Podlesak  and  Podlesak  v.  Mc- 
Innerney  (ante,  558,  120  O.  G.  2127)  the  ques- 
tion of  the  right  of  a  party  to  make  a  claim 
may  be  an  ancillary  question  to  be  considered 
in  awarding  priority  of  invention.  Wickers 
and  Furlong  v.  McKee,  C.  D.  1900,  124  O.  G. 
905. 

2345.  In  view  of  the  holding  by  the  court 
of  appeals  in  Podlesak  and  Podlesak  v.  Mc- 
Innerney  (ante,  55S,  120  O.  G.  2127),  and  by 
the  commissioner  in  Pohle  v.  McKnight  (C. 
D.  1905,  549,  119  O.  G.  2519)  and  Kilboum  v. 
Hirner  (ante,  161,  122  O.  G.  729)  that  the 
question  of  the  right  of  a  party  to  make  the 
claims  may  be  considered  as  a  basis  for  an 
award  of  priority,  the  right  of  F.  to  make  the 
claim  of  the  issue  is  given  consideration,  and 
it  is  found  that  his  original  application  did  not 
disclose  the  complete  invention  of  the  issue; 
that  consequently  he  has  no  right  to  the  claim 
forming  the  issue,  and  that  E.  is  therefore  en- 
titled to  the  award  of  priority.  Emmet  v. 
Fullagar,  C.  D.  1906,  124  O.  G.  2178. 

2346.  The  question  of  the  right  of  a  party 
to  make  a  claim  may  sometimes  be  an  ancil- 
lary question  to  be  considered  in  awarding 
priority  of  invention,  and  there  are  good  rea- 
sons why  the  question  of  the  right  to  make 
the  claims  may  be  considered  a  basis  for  an 
award  of  priority  rather  than  a  ground  for 
a  dissolution  of  an  interference.  *Wickers 
and  Furlong  v.  McKee,  C.  D.  1907,  129  O.  G. 
869. 

2347.  In  awarding  priority  of  invention  the 
right  of  a  party  to  make  a  claim  may  be  con- 
sidered as  an  ancillary  question ;  but  where 
three  tribunals  of  the  patent  office  have  con- 
curred in  answering  the  question  in  the  affirm- 
ative the  court  will  follow  them  unless  a  mani- 
fest error  has  been  committed.  ♦Lindmark 
V.  Hodgkinson,  C.  D.  1908,  137  O.  G.  228. 


2348.  The  claims  as  interpreted  in  the  light 
of  N.'s  amended  specification,  where  they  orig- 
inated, call  for  twice  bending  the  covering 
material — first  at  right  angles  to  the  edge  of 
the  flange  of  the  eyelet  and  then  over  under 
the  flange  to  secure  it  thereto.  Held,  that  as 
N.'s  machine  as  constructed  and  operated  and 
as  shown  in  his  application  was  not  capable  of 
operating  in  this  manner  N.  has  no  right  to 
make  these  claims.  *Nenberth  v.  Lizotte,  C. 
D.  1009,  HI  O.  G.  1161. 

2349.  Count  7  specifies  a  machine  for  cover- 
ing studs.  N.'s  machine  as  shown  and  illus- 
trated could  not  be  used  for  covering  studs. 
Held,  that  as  he  does  not  point  out  in  his 
specification  any  modification  of  his  machine 
by  which  it  could  be  made  to  cover  studs  and 
as  such  modilication  would  not  be  a  mere 
matter  of  mechanical  skill,  N.  has  no  right  to 
make  a  claim  in  the  terms  of  this  count.    *Id. 

2350.  A  disclosure  in  an  application  which 
is  sufficiently  specific  to  enable  persons  skilled 
in  the  art  to  readily  construct  and  use  the 
invention  constitutes  a  compliance  with  sec- 
tion 48S8,  Revised  Statutes  (Hopkins  v.  New- 
man, C.  D.  1908,  395,  134  O.  G.  2028,  30  App. 
D.  C.  402) ;  but  in  an  application  for  an 
automatic  signaling  sj'Stem  involving  an  induc- 
tive bond  employed  to  bridge  the  rails  a 
general  reference  to  "transformers"  does  not 
entitle  the  applicant  to  amplify  his  description 
by  adding  thereto  a  description  of  a  particu- 
lar kind  of  transformer  and  make  claims 
thereto,  although  such  construction  may  have 
been  old  in  the  art  when  the  application  was 
originally  filed.  *Townsend  v.  ThuUen,  C.  D. 
1909,  142  O.  G.  1116. 

2351.  In  deciding  whether  a  party  to  an  in- 
terference has  a  right  to  make  a  claim  in- 
volved therein  such  claim  should  be  given  the 
broadest  meaning  consistent  with  its  terms ; 
but  it  cannot  be  enlarged  beyond  the  plain 
import  thereof  as  set  forth  in  the  specifica- 
tion on  which  it  is  based.  Sinclair  v.  Engel, 
C.  D.  1909,  147  O.  G.  769. 

2352.  Where  the  invention  in  issue  is  a 
water-tube  boiler  and  the  counts  which  corre- 
spond to  S.'s  claims  specify,  respectively,  "a 
plain  drum  having  separate  tube-landings 
formed  therein"  and  "a  plain  drum  having 
parallel  rows  of  separate  circular  tube-land- 
ings," Held,  that  these  claims  cannot  be  made 
by  E.,  whose  application  discloses  a  drum 
having  landings  adapted  to  receive  at  least 
two  tubes.    Id. 


362 


INTERFERENCE,  XXXIII.  (m). 


2353.  Where  the  terms  of  the  claims  in  issue 
are  found  to  apply  aptly  to  the  structure  of  a 
party  to  the  interference  who  has  copied  them 
from  the  patent  of  the  other  party,  Held, 
he  has  a  right  to  make  the  claims  even  though 
his  disclosure  embodies  an  element  the  use  of 
which  it  was  the  expressed  purpose  of  the 
patentee  to  render  unnecessary  by  the  struc- 
ture particularly  referred  to  in  the  claims. 
Pratt  V.  de  Ferrranti  and  Hamilton,  C.  D. 
1909,  148  O.  G.  569. 

2354.  Where  the  claim  in  issue  specifies 
separate  sources  of  current  connected  to  a 
plurality  of  electrodes  of  a  mercury-vapor  de- 
vice and  H.  shows  separate  phases  of  a  poly- 
phase generator  connected  to  the  respective 
electrodes.  Held,  that  he  has  a  right  to  make 
this  claim  (citing  Westinghouse  Electric  Mfg. 
Co.  v.  The  New  England  Granite  Co.,  110  Fed. 
Rep.  753.)  Weintraub  v.  Hewitt,  C.  D.  1909, 
148  O.  G.  1087. 

2355.  While  the  question  of  the  patentabil- 
ity of  the  issue  will  not  be  entered  on  appeal 
from  an  award  of  priority,  the  right  of  one 
of  the  parties  to  make  the  claims  under  the 
disclosures  of  his  application  will  be  enter- 
tained as  an  ancillary  question.  (Podlesak 
and  Podlesak  v.  Mclnncrney,  C.  D.  1906, 
588,  120  O.  G.  2127,  26  App.  D.  C.  399.)  *Gold 
V.  Gold,  C.  D.  1910,  150  O.  G.  570. 

2356.  In  the  device  of  W.  each  of  the  posi- 
tive electrodes  is  connected  to  an  individual 
or  distinct  coil  of  a  polyphase  generator. 
Held,  that  W.  is  entitled  to  make  the  claims 
in  issue,  in  which  it  is  specified  that  each  of 
the  positive  electrodes  is  connected  to  a  sep- 
arate source  of  current.  ♦Weintraub  v.  Hew- 
itt, C.  D.  1910,  154  O.  G.  254. 

2357.  The  examiners-in-chief  rendered  a 
decision  on  priority  in  favor  of  R.,  but  refused 
to  consider  the  right  of  S.  to  make  the  claims, 
on  the  ground  that  they  had  previously  con- 
sidered that  question  on  appeal  from  the  de- 
cision of  the  primary  examiner  on  a  motion 
to  dissolve  the  interference  and  that  the  com- 
missioner had  refused  to  review  their  deci- 
sion in  the  exercise  of  his  supervisory  author- 
ity. Held,  that  the  examiners-in-chief  were 
in  error  in  refusing  to  consider  the  question 
of  the  right  of  S.  to  make  the  claims,  and  the 
interference  is  remanded  to  them  to  render  a 
supplemental  decision  upon  that  question. 
Schutte  V.  Rice,  C.  D.  1910,  157  O.  G.  753. 

2358.  The  question  of  the  right  of  a  party 
in  an  interference  to  make  the  claims  of  the 
issue  is  one  that  may  be  raised,  decided,  and 


brought  up  as  an  ancillary  question  necessar- 
ily involved  in  that  of  priority.  *Cosper  v. 
Gold  and  Gold,  C.  D.  1910,  1  O.  G. 

2359.  Record  considered  and  field,  to  es- 
tablish that  appellant  is  entitled  to  make  the 
claims  in  issue.  *Gold  v.  Gold,  C.  D.  1910, 
152  O.  G.  731. 

2360.  Held,  that  M.,  the  senior  party,  has  no 
right  to  make  the  claims  in  issue,  since  the 
invention  covered  thereby  is  not  fully  and 
clearly  disclosed  in  his  application.  *Slinguff 
&  Herchert  v.  Maynard,  C.  D.  1911,  762  O.  G. 
1002. 

2361.  "We  agree  with  the  patent  office  'that 
Hayes  is  entitled  to  make  all  of  the  counts, 
he  having  disclosed  an  air-chamber  and  valves 
with  ports  and  passages  within  the  fair  and 
natural  meaning  of  those  terms  and  only  dif- 
fering in  degree  rather  than  substance  from 
those  disclosed  by  Norling.' "  Norling  v. 
Hayes,  C.  D.  1911,  166  O.  G.  1282. 

2362.  Held,  that  B.,  the  senior  party,  is  en- 
titled to  make  the  claims  and  that  priority  was 
properly  awarded  to  him  on  the  record.  •Grif- 
fith V.  Braine,  C.  D.  1911,  168  O.  G.  249. 

(m)  Appeal. 

2363.  There  is  no  appeal  directly  to  the 
commissioner  from  the  decision  of  the  exam- 
iner of  interferences  awarding  priority  of  in- 
vention in  accordance  with  the  provisions  of 
Rule  116.  Brough  v.  Snyder,  C.  D.  1900,  94 
O.  G.  221. 

2364.  The  patentability  of  the  claims  of  the 
contesting  parties  in  an  interference  case  is 
not  involved  in  an  appeal  on  the  question  of 
priority  of  invention  and  will  not  be  deter- 
mined by  the  court.  *Schupphaus  v.  Stevens, 
C.  D.  1901,  95  O.  G.  1452. 

2365.  Where  it  was  contended  that  the  ques- 
tion whether  Steven's  application  discloses  or 
covers  the  invention  of  the  issue  is  necessarily 
involved  in  the  determination  of  the  question 
of  priority  of  invention.  Held,  that  this  con- 
tention has  no  support  in  any  decision  of  the 
court.  It  is  a  question  of  patentability  and 
nothing  else.    *Id. 

2366.  Where  Stevens  was  the  first  to  file 
an  application  for  a  patent  and  the  testimony 
for  Schupphaus  failed  to  show  that  he  made 
the  invention  prior  to  the  date  of  that  appli- 
cation. Held,  that  judgment  will  be  rendered 
in  favor  of  Stevens  without  considering  the 
question  whether  his  application  as  filed  dis- 
closes the  invention  in  controversy,  since  that 


INTERFERENCE,  XXXIII,  (m). 


363 


matter  was  settled  by  proceedings  in  the  pat- 
ent office.    *Id. 

2367.  Where  after  the  limit  of  appeal  on  the 
question  of  priority  has  expired  a  motion  to 
dissolve  is  transmitted  to  the  primary  exam- 
iner and  decided  by  him.  Held,  that  the  party 
is  not  entitled  thereafter  to  take  an  appeal  as 
to  priority.  Benger  v.  Burson,  C.  D.  1902,  99 
O.  G.  13S4. 

2368.  While  it  may  have  been  necessary  in 
justice  to  both  parties  to  finally  determine 
whether  or  not  an  interference  in  fact  existed 
or  whether  or  not  either  of  the  parties  had 
a  right  to  make  the  claim,  the  necessity  for 
an  appeal  to  the  examiners-in-chief  from  a 
decision  awarding  priority  on  the  record  is 
not  apparent.  Such  a  course  would  only  op- 
erate to  delay  the  final  determination  of  the 
case.    Id. 

2369.  On  an  appeal  to  the  court  relating 
to  priority  of  invention  the  question  whether 
one  party's  application  furnishes  a  basis  for 
the  claims  of  the  issue  will  not  be  considered, 
since  it  is  rendered  res  adjudicala  by  the  dec- 
laration of  the  interference.  The  only  ques- 
tion to  be  determined  is  priority  of  invention. 
♦Herman  v.  Pullman,  C.  D.  lUOt,  1U9  O.  G. 
288. 

2370.  On  an  appeal  relating  to  priority  of 
invention  the  court  will  not  consider  the  ques- 
tion whether  the  device  shown  in  the  appli- 
cation of  one  of  the  parties  is  operative.  The 
decision  of  the  patent  office  on  that  matter 
will  be  accepted.  *Lotterhand  v.  Hanson,  C. 
D.  1904,  110  O.  G.  861. 

2371.  Where  upon  appeal  upon  priority  no 
error  was  pointed  out  in  the  decision  below, 
but  the  appellant  argued  that  the  issue  was  not 
patenta1)Ie,  Held,  that  the  question  of  patent- 
ability was  not  up  for  consideration.  Fair- 
banks and  Sauer  v.  Karr,  C.  D.  1905,  119  O. 
G.  651. 

2372.  Where  the  examiner  of  interferences 
rendered  a  decision  in  an  interference  case 
on  the  question  of  priority  of  invention.  Held, 
that  a  review  of  that  decision  should  be  ob- 
tained by  an  appeal  to  the  examiners-in-chief 
and  that  a  petition  that  the  examiner  of  inter- 
ferences be  directed  to  reconsider  his  decision 
will  be  dismissed.  Gallagher  v.  Despradels, 
C.  D.  1905,  114  O.  G.  973. 

2373.  Where  an  interference  is  before  the 
commissioner  on  appeal  from  a  decision  of  the 
examiners-in-chief  on  the  question  of  priority 
of  invention  and  a  protest  is  filed  by  the  ap- 
pellant against  the  grant  of   a  patent  to   the 


appellee  in  view  of  certain  previously  granted 
patents  cited  in  the  protest  and  a  brief  is 
filed  by  the  appellant  discussing  the  question 
of  patentability.  Held,  that  the  brief  should  be 
stricken  from  the  files,  as  the  question  of  an- 
ticipation is  an  ex  parte  one  and  the  appel- 
lant has  no  right  to  argue  the  pertinency  of 
the  references  against  the  appellee's  cbims 
except  on  a  motion  to  dissolve  brought  at  the 
proper  time.  Hedlund  v.  Curtis,  C.  D.  1905, 
114  O.  G.  544. 

2374.  There  is  no  appeal  from  the  refusal 
of  the  examiner  of  interferences  to  enter 
judgment  of  priority  in  favor  of  a  particular 
party,  nor  will  the  matter  be  reviewed  upon 
interlocutory  petition.  The  appeal  must  be 
from  the  final  judgment  when  entered.  Mul- 
ligan V.  Tempest  Salve  Company,  C.  D.  1905, 
119  O.  G.  1924. 

2375.  Where  a  party  who  cannot  prevail 
upon  priority  takes  an  appeal  from  the  deci- 
sion against  him  thereon  merely  for  the  pur- 
pose of  attacking  the  patentability  of  the  issue. 
Held,  that  the  appeal  raises  merely  the  ques- 
tion of  priority,  and  the  decision  below  must 
ordinarily  be  affirmed  without  consideration 
of  the  question  of  patentability,  for  the  rea- 
sons given  in  Sobey  v.  Holsclaw  (C.  D.  1905, 
523,  119  O.  G.  1922.)  Potter  v.  Mcintosh, 
C.  D.  1906,  120  O.  G.  1823. 

2376.  Where  a  party  to  an  interference  did 
not  appeal  from  the  adverse  decision  of  the 
examiners-in-chief  upon  priority,  so  that 
under  Rule  132  of  the  patent  office  the  claims 
which  were  involved  in  that  interference 
stand  finally  rejected.  Held,  that  such  party 
has  no  standing  before  the  court  in  the  inter- 
ference as  to  those  claims.  *Fowler  v.  Boyce, 
C.   D.   1906,   121   O.  G.    1014. 

2377.  Held,  that  the  decision  of  the  court 
in  the  case  of  Podlesak  and  Podlesak  v.  Mc- 
Innerney  (ante,  55S,  120  O.  G.  2127)  does  not 
support  the  contention  that  the  question  of 
patentability  should  be  considered  upon  the 
appeal  upon  priority  of  invention.  Potter  v. 
Mcintosh,  C.  D.  1906,  122  O.  G.  1721. 

2378.  Where  the  grounds  for  dissolution 
specified  in  Rule  122  were  raised  at  the  proper 
time  and  decided  by  the  primary  examiner  and 
by  the  examiners-in-chief  on  appeal  and  the 
case  is  appealed  to  the  commissioner  from  a 
decision  of  the  examiners-in-chief  on  the 
question  of  priority,  a  motion  to  transmit  the 
interference  to  the  primary  examiner  to  con- 
sider the  question  of  patentability  will  not  be 
granted  unless  a  clear  and  unmistakable  error 


364 


INTERFERENCE,  XXXIII,  (m). 


appears    in    the    prior    decisions.      Parkes    v. 
Lewis,  C.  D.  1906,  120  O.  G.  323. 

2379.  Held,  that  the  case  of  Podlesalv  and 
Podlesak  v.  Mclnnerney  (ante  558,  120  O.  G. 
2127),  is  believed  to  emphasize  and  carry  for- 
ward the  suggestions  contained  in  the  case 
of  Allen,  Commissioner  of  Patents  v.  The 
United  States  of  .\merica,  ex  rel.  George  A. 
Lowry  and  Planters'  Compress  Company  (C. 
D.  1905,  643,  116  O.  G.  2253),  to  the  effect  that 
an  opponent's  right  to  make  claims  might  be 
questioned  upon  appeal  from  decisions  upon 
priority  of  invention  where  a  holding  of  right 
on  the  part  of  one  party  to  make  the  claims 
operates  to  deny  a  patent  to  another  party 
who,  if  such  holding  be  in  error,  is  the  first 
inventor.  Id.  Miel  v.  Young,  C.  D.  1906,  121 
O.  G.  1350. 

2380.  Where  a  decision  awarding  priority 
of  invention  is  based  upon  the  date  of  con- 
structive reduction  to  practice  obtained  by  a 
party  through  filing  his  application  in  inter- 
ference and  upon  appeal  the  opposing  party 
attacks  the  sufficiency  of  the  disclosure  in  the 
application  to  support  a  judgment  upon  the 
subject-matter  of  the  issue.  Held,  that  the 
question  raised  by  the  attack  is  one  properly 
considered  in  determining  the  question  of 
priority.  Kilbourn  v.  Hirner,  C.  D.  1906,  123 
O.  G.  729. 

2381.  Where  the  question  of  a  party's  right 
to  make  the  claims  in  issue  is  raised  on  appeal 
on  priority  and  it  is  decided  to  entertain  that 
question  and  the  machines  upon  which  the 
issue  is  drawn  and  those  of  the  prior  art  are 
complex  and  intricate  and  their  operation  in- 
volved and  no  written  opinion  upon  the  ques- 
tion has  been  made  by  the  primary  examiner, 
Held,  that  the  interference  will  be  remanded 
to  the  primary  examiner,  who  will  hear  the 
parties  and  furnish  his  opinion  as  to  the 
question  raised,  together  with  a  statement  of 
the  reasons  for  his  conclusions.     Id. 

2382.  After  a  decision  of  the  court  of  ap- 
peals on  the  question  of  priority  the  commis- 
sioner of  patents  may  refuse  a  patent  to  the 
successful  interferant.  *Sobey  v.  Holsclaw, 
C.  D.  1907,  126  O.  G.  3041. 

2383.  Where  the  patentability  of  the  claims 
of  an  interference  issue  has  been  favorably 
passed  upon  by  the  primary  examiner  ex  parte 
and  also  inter  partes  upon  a  motion  to  dis- 
solve, from  whose  affirmative  decision  in  the 
latter  case  no  right  of  direct  appeal  is  given 
either  by  the  patent  statutes  or  the  rules  of 
the  patent  office,   and  both   the   examiner  of 


interferences  and  the  examiners-in-chief  have 
refused  to  direct  the  attention  of  the  commis- 
sioner, under  Rule  126,  to  the  fact  that  the 
claims  were  unpatentable,  it  cannot  be  suc- 
cessfully maintained  that  the  commissioner 
of  patents  decided  the  question  of  priority 
without  first  determining  and  deciding  that 
the  subject-matter  was  patentable.     *Id. 

2384.  Where  the  question  of  the  patentabil- 
ity of  the  claims  of  the  issue  has  been  repeat- 
edly raised  before  the  subordinate  tribunals 
of  the  patent  office  and  is  again  raised  upon 
appeal  to  the  commissioner  on  priority,  the 
adoption  by  the  commissioner  of  the  views  of 
the  subordinate  tribunals  is  a  sufficient  de- 
termination by  him  of  the  question  so  far  as 
it  is  necessary  to  be  determined  in  an  inter- 
ference proceeding.     *Id. 

2385.  The  question  of  the  patentability  of 
the  issue  will  not  be  considered  on  appeal  on 
priority  under  such  special  circumstances  as 
would  warrent  the  exercise  of  the  supervisory 
authority  of  the  commissioner.  Hess  v. 
Joerissen  v.  Felbel,  C.  D.  1907,  131  O.  G. 
1419. 

2386.  The  court  of  appeals  of  the  District 
of  Columbia  will  not  consider  the  operative- 
ness  of  a  device  disclosed  by  one  of  the  in- 
terfering parties  as  incident  to  the  main  ques- 
tion of  priority  where  that  question  has  been 
settled  in  favor  of  such  party  by  the  patent 
office  in  accordance  with  the  practice  of  that 
office.  *Duryea  and  White  v.  Rice,  Jr.,  C.  D. 
1907,  126  O.  G.  1357. 

2387.  Where  the  junior  party  to  an  inter- 
ference concedes  that  his  preliminary  state- 
ment fails  to  overcome  the  filing  date  of  the 
senior  party  and  the  patentability  of  the  issue 
has  been  favorably  passed  upon  by  the  tribu- 
nals of  the  patent  office,  before  whom  the 
question  was  brought  in  accordance  with  the 
practice  of  that  office,  on  appeal  to  the  court 
of  appeals  from  a  judgment  on  priority  the 
question  of  patentability  will  not  be  consid- 
ered where  it  is  raised  merely  for  the  purpose 
of  preventing  the  grant  of  a  patent  to  the  se- 
nior party,  except  in  an  extraordinary  case. 
♦Potter  V.  Mcintosh,  C.  D.  1907,  127  O.  G. 
1995. 

2388.  "As  regards  the  contention  of  the  ap- 
pellant that  'the  structure  in  interference  dif- 
fers from  the  prior  structure  of  Roberts  in 
but  two  particulars,'  *  *  *  it  is  sufficient  to 
say,  that  in  so  far  as  it  appears  to  raise  a 
question  of  patentability,  that  question  has 
been  settled  by  the  allowance  of  the  claims." 


INTERFERENCE,  XXXIV. 


365 


Dunbar  v.  Schellenger,  C.  D.  1907,  128  O.  G. 
2837. 

2389.  On  an  appeal  on  priority  the  court 
will  not  review  the  findings  of  the  commis- 
sioner upon  the  sufficiency  of  a  showing  to 
support  a  petition  for  the  reinstatement  of  an 
abandoned  application  where  there  appears  to 
have  been  no  abuse  of  power  on  the  part  of 
the  commissioner.  *Kinsman  v.  Strohm,  C.  D. 
1908,  136  O.  G.  1769. 

2390.  The  question  of  the  patentability  of 
an  invention  is  not  one  for  determination  by 
the  court  of  appeals  upon  an  appeal  from  a 
decision  on  priority.  *Mell  v.  Midgley,  C.  D. 
1908,  136  O.  G.  1534. 

2391.  Where  in  an  interference  in  which 
the  junior  party  is  defeated  on  the  record  the 
primary  examiner  held  the  issue  patentable 
and  the  examiners-in-chief  refused  to  make 
a  recommendation  that  the  same  is  not  patent- 
able, there  is  no  such  manifest  error  as  will 
warrant  the  consideration  of  this  question 
upon  appeal  on  priority  under  the  commis- 
sioner's supervisory  authority.  Moffatt  v. 
Weiss,  C.  D.  1908,  137  O.  G.  1481. 

2392.  Where  an  appeal  from  a  decision  on 
priority  does  not  question  the  propriety  of 
such  decision,  but  merely  seeks  a  ruling  on 
questions  previously  considered  by  the  com- 
missioner on  interlocutory  appeals,  relief  will 
be  refused.  Smith  v.  Irland,  C.  D.  1908,  137 
O.  G.  1708. 

2393.  A  decision  by  the  court  of  appeals  of 
the  District  of  Columbia  in  an  interference 
proceeding  which  leaves  no  question  open  for 
further  consideration  relating  to  priority  of 
invention  terminates  the  interference  proceed- 
ing, and  the  commissioner  of  patents  is  with- 
out jurisdiction  thereafter  to  entertain  a  mo- 
tion by  the  losing  party  to  dissolve  the  inter- 
ference on  the  ground  that  the  court  held  that 
the  opposing  party  was  not  entitled  to  a  pat- 
ent by  reason  of  his  having  secured  a  for- 
eign patent  for  the  same  invention  on  an  ap- 
plication filed  more  than  the  statutory  period 
prior  to  the  filing  of  the  application  in  this 
country.  GuenifTet,  Benoit,  and  Nicault  v. 
Wictorsohn,  C.  D.  1908,  134  O.  G.  255. 

2394.  The  question  of  the  patentability  of 
an  invention  is  not  one  for  determination  by 
the  court  of  appeals  upon  an  appeal  from  a 
decision  on  priority.  *Mell  v.  Midgley,  C.  D. 
1908,  136  O.  G.  1534. 

2395.  The  question  of  the  counts  of  the  issue 
having  different   meaning   and   of   their   non- 


patentability  will  be  considered  on  appeal  on 
priority  only  under  such  extraordinary  cir- 
cumstances as  will  warrant  the  exercise  of 
the  supervisory  authority  of  the  commission- 
er. Lacroix  v.  Tyberg,  C.  D.  1909,  148  O.  G. 
831. 

2396.  "It  is  also  urged  that  the  commission- 
er erred  in  awarding  priority  of  invention  to 
Tyberg  on  count  4  because  the  applications 
of  the  respective  parties,  so  far  as  this  count 
is  concerned,  do  not  show  the  same  invention. 
This  question  cannot  be  raised  for  the  first 
time  at  this  stage  of  the  proceeding.  It  should 
have  been  raised  by  appropriate  motion  be- 
fore the  patent  office  and  brought  here  on  ap- 
peal." *Lacroix  v.  Tyberg,  C.  D.  1910,  150 
O.  G.  267. 

2397.  "Neither  are  we  called  upon  in  this 
proceeding  to  determine  the  patentability  of 
the  invention.  That  is  a  question  to  be  de- 
termined by  the  patent  office.  (Mell  v.  Midg- 
ley, C.  D.  1908,  512.  136  O.  G.  1534,  31  App.  D. 
C.  534;  Sobey  v.  Holsclaw,  C.  D.  1907,  465, 
126  O.  G.  3041,  28  App.  D.  C.  65.)"    *Id. 

2398.  Where  the  decision  of  the  commis- 
sioner of  patents  was  based  on  testimony,  but 
this  testimony  is  not  included  in  the  record 
on  appeal,  it  must  be  assumed  that  hi.=  deci- 
sion is  correct.  *GoIdberg  v.  Halle,  C.  D. 
1910,  151  O.  G.  452. 

XXXIV.  Redeclaration. 

2399.  Where  the  primary  examiner  dissolves 
an  interference  on  motion  and  no  appeal  is 
taken  within  the  limit  set,  Held,  that  the  de- 
feated party  has  no  right  to  demand  a  rein- 
statement or  redeclaration  of  the  interference, 
but  the  office  may  of  its  own  motion  redeclare 
the  interference  where  it  is  satisfied  that  the 
dissolution  was  due  to  a  mistake.  Hien  v. 
Shephard.  C.  D.  1903,  105  O.  G.  2062. 

2400.  \  petition  by  one  party  that  a  pend- 
ing interference  be  suspended  and  a  new  in- 
terference declared  between  the  same  parties 
will  not  be  entertained  when  no  notice  was 
served  upon  the  opposing  party.  Ex  parte 
Hansen.  C.  D.  1905,  117  O.  G.  2632. 

2401.  Where  P.  has  a  divisional  application 
involved  in  an  interference  with  S.,  and  the 
parent  case  is  involved  in  another  interfer- 
ence with  the  same  application  of  S.,  and  P. 
is  desirous  of  transferring  the  issue  involv- 
ing the  parent  case  to  the  other  interference 
in  order  that  he  may  prosecute  to  allowance 
the    parent    case    on    divisible    subject-matter. 


3GG 


INTERFERENCE,  XXXV,  (a). 


this  purpose  cannot  be  accomplished  by  a  dis- 
solution of  the  interference  involving  the  di- 
visional application.  The  remedy  is  to  re- 
form the  interference.  Phillips  v.  Sensenich, 
C.  D.  1906,  122  O.  G.  1047. 

XXXV.  Reduction  to  Practice. 
(a)  In  General. 

2402.  A  device  that  could  be  used  and  might 
to  some  extent  serve  the  purpose  for  which 
it  was  designed.  Held,  to  be  not  necessarily 
a  reduction  to  practice.  ♦Warner  v.  Smith, 
C.  D.  1898,  84  O.  G.  311. 

2403.  A  device  which  has  all  the  essential 
parts,  and  elements  of  completeness  and  which 
was  used  in  fact,  is  entitled  to  be  considered 
a  reduction  to  practice.  *Hunter  v.  Stikeman, 
C.  D.  1898,  85  O.  G.  610. 

2404.  It  is  well  settled  that  while  the  law 
accords  the  right  to  a  patent  to  the  later  appli- 
cant who  connects  by  due  diligence  a  prior 
conception,  the  reduction  to  practice  must  be 
by  the  applicant  himself  or  by  his  authorized 
agent  and  not  by  some  other  third  party.  It 
is  not  enough  to  entitle  the  applicant  to  a 
patent  that  some  one  else  has  shown  the  prac- 
ticability of  the  invention  by  reducing  it  to 
practice.     *Id. 

2405.  It  is  a  manifest  inconsistency  that 
parties  should  under  oath  set  up  claim  to  the 
invention  themselves  if  they  were  in  fact  act- 
ing for  and  in  behalf  of  another  party  to  the 
interference  in  merely  perfecting  his  invention 
and  placing  him  in  position  to  assert  his  rights. 
*Id. 

2406.  It  is  a  well-settled  principle  in  patent 
law  that  as  between  rival  inventors  the  date 
of  invention  may  be  fixed  and  will  take  prece- 
dence from  the  time  at  which  a  complete  and 
intelligible  embodiment  of  the  subject  of  in- 
vention is  produced  by  which  those  skilled  in 
the  art  could  readily  understand  it.  *Hulett 
v.  Long,  C.  D.  1899,  89  O.  G.  1141. 

2407.  Where  the  records  of  the  case  show 
that  the  primary  examiner  had  found  no  nov- 
elty in  the  omission  of  a  cutter-bar  in  the  old 
form  of  fodder-shredder  from  the  new  com- 
bination and  had  "with  doubt  and  hesitation" 
declared  novelty  to  exist  in  the  restricted  ac- 
tion of  the  cutter-teeth  in  immediate  relation 
with  the  lower  feed-roll  acting  as  a  cutter-bar 
in  the  very  closest  approach  that  could  be  ac- 
complished, Held,  that  the  slight  difference  in 
arrangement  being  the  very  thing  and  the  only 
thing  that  gave  novelty  to  the  new  combina- 


tion, it  must  follow  that  the  practical  test  of 
a  comljination  which  did  not  fall  within  the 
specific  combination  is  not  a  reduction  to  prac- 
tice of  that  combination.  (Bruel  v.  Smith,  C. 
D.  1897,  332,  78  O.  G.  1906,  cited.)  ♦Tracy 
et  al.  V.  Leslie,  C.  D.  1899,  87  O.  G.  891. 

2408.  It  is  an  elementary  principle  in  patent 
law  that  he  who  first  reduces  to  practice  is  to 
be  regarded  as  the  true  inventor  of  the  idea 
or  device  so  reduced  from  a  mere  abstraction 
to  a  concrete  form  in  the  absence  of  proof 
that  he  has  only  elaborated  the  ideas  of  others 
or  of  proof  that  there  has  been  prior  concep- 
tion of  the  invention  by  another,  with  a  show- 
ing of  due  diligence  in  the  way  of  effort  to 
reduce  it  to  practice.  *Bader  v.  Vajen,  C.  D. 
1899,  87  O.  G.  123.5. 

2409.  Reduction  to  practice  by  Bader  would 
not  avail  him  as  against  Vajen  if  it  were 
shown  that  Bader  was  merely  obeying  the 
instructions  of  Vajen  and  giving  effect  to  the 
conceptions  of  the  latter.     *Id. 

2410.  A  reasonable  doubt  as  to  what  con- 
stitutes a  reduction  to  practice  will  be  resolved 
against  the  inventor,  and  special  circumstances 
— as,  for  example,  unreasonable  delay  in  mak- 
ing practical  or  commercial  use  of  the  inven- 
tion or  in  applying  for  a  patent  or  the  like — 
would  have  a  tendency  to  raise  this  doubt  in 
a  particular  case.  *Reute  v.  Elwell,  C.  D. 
1899,  87  O.  G.  2119. 

2411.  Delay  is  often  a  potent  circumstance 
in  aid  of  the  determination  in  a  case  not  other- 
wise clear  of  the  question  whether  an  inven- 
tion has  been  successfully  reduced  to  practice 
or  has  resulted  in  nothing  more  than  an  aban- 
doned experiment.  (Esty  v.  Newton,  C.  D. 
1899,  284,  86  O.  G.  799,  cited.)  *McBerty  v. 
Cook,  C.  D.  1900,  90  O.  G.  2295. 

2412.  Where  G.  testifies  to  the  construction 
and  successful  use  of  certain  machines  em- 
bodying the  invention  in  June  and  July,  1897, 
and  in  order  to  shorten  the  matter  of  taking 
testimony  counsel  for  the  opposing  party  ad- 
mitted on  the  record  that  the  machines  were 
made  and  used  substantially  at  the  time  and 
in  the  manner  testified,  Held,  that  G.  is  en- 
titled to  the  date  of  June  or  July  for  a  re- 
duction to  practice  of  the  invention.  *Darnell 
v.  Grant.  C.  D.  1900,  92  O.  G.  557. 

2413.  Evidence  that  a  party  at  a  certain  time 
stated  that  he  had  reduced  the  invention  in 
controversy  to  practice  while  admissible  as 
tending  to  establish  the  fact  of  conception  is 
clearly  incompetent  to  prove  the  independent 


INTERFERENCE,  XXXV,  (a). 


357 


fact  of  reduction  of  that  conception  to  prac- 
tice. *Petrie  v.  De  Schwcinitz,  C.  D.  1902, 
99  O.  G.  i;!87. 

2414.  In  order  to  constitute  a  patentable  in- 
vention, there  must  be  more  than  mere  prog- 
ress to  an  end,  however  near  that  progress 
may  have  approximated  to  the  end  in  view. 
The  law  requires  not  conjecture,  but  certain- 
ty, and  where  the  question  relates  to  a  ma- 
chine the  conception  must  have  been  clothed 
in  substantial  form,  which  demonstrated  at 
once  its  practical  efficiency  and  utility.  (Coffin 
V.  Ogden,  5  O.  G.  270,  18  Wall.  120.)  *Funk 
V.  Matteson  v.  Haines,  C.  D.  1902,  100  O.  G. 
1764. 

2415.  Where  an  inventor  designed  an  im- 
provement primarily  for  the  use  of  a  certain 
typewriter  manufacturing  company  and  un- 
successfully negotiated  with  them  with  re- 
spect to  the  adoption  thereof  and  after  nego- 
tiations were  broken  off  the  company  reduced 
the  invention  to  practice  without  the  inventor's 
knowledge  or  assistance,  Held,  that  the  act 
of  the  company  did  not  inure  to  the  benefit  of 
the  inventor,  as  there  was  no  relation  between 
them  of  principal  and  agent,  created  either 
expressly  or  by  implication.  Howell  v.  Hess, 
C.  D.  1906,  122  O.  G.  2393. 

2416.  Where  the  evidence  shows  that  there 
was,  in  fact,  no  reduction  to  practice  of  the 
invention,  but  the  attitude  of  the  parties 
amounted  to  concession  that  the  invention  was 
reduced  to  practice  in  the  course  of  the  work. 
Held,  That  the  office  cannot  shut  its  eyes  to 
the  facts  where  they  are  clear  upon  the  record 
and  accept  as  true  an  unsound  conclusion  of 
law  which  the  parties  are  entirely  incompetent 
to  make,  and  this  is  true  even  though  each 
party  has  waived  his  right  to  object  to  such 
acceptance  by  having  urged  the  same.  Sher- 
wood v.  Drewsen,  C.  D.  1906,  124  O.  G.  1205. 

2417.  A  published  description  of  an  inven- 
tion by  the  inventor  describing  the  invention 
in  such  full  and  intelligible  manner  as  to  en- 
able persons  skilled  in  the  art  to  understand 
the  operation  of  the  invention  and  to  carry 
it  into  practical  use  is  sufficient  to  overcome 
the  filing  date  of  the  application  of  the  op- 
posing party.  Marconi  v.  Shoemaker,  C.  D. 
1907,  131  O.  G.  1939. 

2418.  The  reduction  to  practice  of  an  inven- 
tion by  an  original  inventor  cannot  be  taken 
as  a  reduction  to  practice  by  another  merely 
because  the  ownership  of  the  claims  of  both 
may  afterward  become  vested  in  the  same  per- 


son or  persons.  It  is  not  enough  to  entitle 
an  applicant  to  a  patent  that  some  one  else,  not 
his  agent,  has  shown  the  practicability  of  the 
invention  by  reducing  it  to  practice.  (Hunter 
v.  Stikeman,  C.  D.  1898,  564,  85  O.  G.  610,  13 
App.  D.  C.  214,  226.)  *Robinson  v.  McCor- 
mick,   C.   D.   1907,   128   O.   G.   3289. 

2419.  Complete  invention  must  amount  to 
demonstration.  The  efforts  of  the  inventor 
must  have  passed  beyond  experiment,  beyond 
the  reach  of  possible  or  probable  failure,  must 
have  attained  certainty  by  embodiment  in  the 
intended  form,  and  must  be  capable  of  pro- 
ducing the  desired  result,  for  where  experi- 
ments have  inspired  hope  of  future  achieve- 
ment of  the  purpose  for  which  they  were  de- 
signed they  still  fall  short  of  reduction  to 
practice.     *Wickers    and   Furlong   v.    McKee, 

C.  D.    1907,  129  O.   G.   869. 

2420.  Reduction  to  practice  must  produce 
something  of  practical  use,  coupled  with  a 
knowledge,  preferably  by  actual  trial,  that  the 
thing  will  work  practically  for  the  intended 
purpose.  The  conception  may  give  rational 
hopes  of  future  fulfilment  of  the  purpose  at 
which  it  aims;  but  if  as  a  matter  of  practice 
it  falls  short  of  success  it  is  not  a  sufficient 
reduction  to  practice.  Complete  invention 
amounts  to  demonstration.  When,  as  in  this 
case,  it  had  not  quite  passed  beyond  experi- 
ment and  had  not  quite  attained  certainty  and 
had  fallen  short  of  demonstrating  the  ca- 
pacity of  the  invention  to  produce  the  desired 
result,  the  invention  itself  was  still  inchoate. 
These  parties  sought  certainty ;  but  they  had 
not  attained  certainty  beyond  all  conjecture, 
which  certainty  the  law  requires.  (See  Mc- 
Kenzie  v.  Cummings,  C.  D.  1904,  683,  112  O. 
G.  1481,  24  App.  D.  C.  140;  Hunter  v.  Stike- 
man,  C.   D.   1898,   564,   85   O.   G.   610,   13   App. 

D.  C.  219;  Coffin  v.  Ogden,  5  O.  G.  270,  18 
Wall.  124.)  *Sherwood  v.  Drewsen,  C.  D. 
1907,  130  O.  G.  657. 

2421.  The  construction  of  another  device 
to  obviate  defects  in  a  prior  device  tends  to 
show  that  the  first  device  was  unsatisfactory. 
Marconi  v.  Shoemaker,  C.  D.  1907,  131  O.  G. 
1939. 

2422.  In  case  of  doubt  upon  the  question  of 
interference  of  marks  the  determination  there- 
of should  be  postponed  until  final  hearing  in 
order  to  get  the  benefit  of  any  testimony  that 
may  be  taken  on  the  subject.  Anheuser- 
Busch  Brewing  Association  v.  D.  G.  Yueng- 
ling  &  Son  et  al.,  C.  D.  1907,  129  O.  G.  2501. 


3GS 


INTERFERENCE,  XXXV,  (b),  1. 


2423.  An  inventor  conceived  an  invention 
and  embodied  it  in  a  model  which  was  sub- 
mitted to  the  company  that  controlled  the 
sale  of  the  machine  for  which  the  improve- 
ment was  designed,  but  the  company  refused 
to  purchase  the  invention  and  returned  the 
model  to  the  inventor.  An  officer  of  such 
company  disclosed  it  to  the  foreman  of  the 
factory  of  a  subsidiary  corporation,  who  set 
about  adapting  it  to  the  machine  made  by 
them  for  the  parent  company,  and  a  com- 
pleted machine  was  built  embodying  such  in- 
vention. Held,  that  such  reduction  to  practice 
does  not  inure  to  the  inventor,  as  such  com- 
panies were  not  acting  as  the  inventor's  agents, 
and  the  fact  that  they  subsequently  purchased 
and  procured  an  assignment  of  the  invention 
does  not  affect  the  question.  (Hunter  v. 
Stikeman,  C.  D.  1898,  .'564,  8.5  O.  G.  610,  13 
App.  D.  C.  314,  226;  Robinson  v.  McCormick, 
C.  D.  1907,  -,7i,  128  O.  G.  3289,  29  App.  D.  C. 
98,  111;  Shuman  v.  Beall,  C.  D.  1906,  710,  123 
O.  G.  1664,  27  App.  D.  C.  324,  .328,  distin- 
guished.) ♦Howell,  Jr.  v.  Hess,  C.  D.  1908, 
132  O.  G.  1074. 

2424.  Decisions  involving  this  often-litigated 
question  of  actual  reduction  to  practice  may 
be  divided  into  three  general  classes.  The 
first  class  includes  devices  so  simple  and  of 
such  obvious  efficacy  that  the  complete  con- 
struction of  one  of  a  size  and  form  intended 
for  and  capable  of  practical  use  is  held  suffi- 
cient without  test  in  actual  use.  The  second 
class  consists  of  those  where  a  machine  em- 
bodying every  essential  element  of  the  inven- 
tion, having  been  tested  and  its  practical  util- 
ity for  the  intended  purpose  demonstrated  to 
reasonable  satisfaction,  has  been  held  to  have 
been  reduced  to  practice,  notwithstanding  it 
may  not  be  a  mechanically-perfect  machine. 
The  third  class  includes  those  where  the  ma- 
chine is  of  such  a  character  that  the  particular 
use  for  which  it  is  intended  must  be  given 
special  consideration  and  requires  satisfac- 
tory operation  in  the  actual  execution  of  the 
object.  *Sydeman  and  Meade  v.  Thoma,  C. 
D.  1900,  141  O.  G.  866. 

2425.  In  cases  falling  within  the  second  and 
third  classes  described  long  delay  in  putting 
the  machine  in  actual  use  for  the  intended  pur- 
pose has  always  been  regarded  as  a  potent 
circumstance  in  determining  whether  the  test 
was  successful  or  only  an  abandoned  experi- 
ment.   *Id. 

2426.  Where  the  object  of  an  invention  was 


"the  production  of  apparatus  for  rapidly  and 
efficiently  treating  textile  fabric  coated  with  a 
rubber  or  gutta-percha  compound  or  composi- 
tion to  the  end  that  the  coating  may  be  tem- 
porarily softened  or  rendered  'tacky'  in  order 
that  the  fabric  may  be  readily  applied  to  other 
ol)jects  such  as  insoles  for  boots  and  shoes," 
Held,  that  a  machine  which  the  witnesses 
stated  "worked  too  slow  to  be  put  into  a  shoe- 
shop"  and  which  was  subsequently  remodeled 
was  not  a  reduction  to  practice  thereof.    *Id. 

(b)  Actual. 
1.  In  General. 

2427.  What  amounts  to  reduction  to  prac- 
tice of  a  machine  as  contradistinguished  from 
unsatisfactory  and  abandoned  experiments  de- 
pends cliiefly  upon  the  special  circumstances 
of  each  case  in  which  it  is  sought  to  be  es- 
tablished, and  a  rule  cannot  be  laid  down  in 
one  case  to  govern  all  others.  *Latham  v. 
Armat,  C.  D.  1901,  9.5  O.  G.  232. 

2428.  It  is  not  necessary  to  a  reduction  to 
practice  that  S.  should  have  thought  of  all 
uses  to  which  the  composition  could  be  applied 
and  have  actually  employed  it  practically  for 
those  uses,  but  merely  that  he  should  have 
tested  it  to  determine  its  qualities,  so  as  to 
demonstrate  its  practical  utility  for  some  pur- 
poses. Id.  Silberman  v.  Hendrickson,  C.  D. 
1902,  99  O.  G.  445. 

2429.  Where  it  is  alleged  that  a  machine 
was  used  for  several  months,  but  it  was  op- 
erative without  the  features  of  the  invention 
of  the  issue  and  those  features  were  not  em- 
bodied as  a  permanent  part  of  the  machine, 
but  would  fall  off  each  time  the  machine  was 
stopped,  Held,  that  it  cannot  be  assumed  that 
the  machine  embodied  the  invention  during 
the  entire  period  of  operation  in  the  absence 
of  specified  testimony  to  that  effect.  Andrews 
V.  Nilson,  C.  D.  1905,  118  O.  G.  1363. 

2430.  Held,  that  it  is  not  essential  for  a  re- 
duction to  practice  of  an  invention  that  the 
invention  be  mechanically  perfect  or  that  there 
are  "possibilities  of  greater  excellence  in 
shape,  location,  arrangement  material,  or  ad- 
justment." *Gallagher,  Jr.  v.  Hien,  C.  D.  1905, 
115  O.  G.  1330. 

2431.  Held,  that  it  is  essential  that  a  device 
to  constitute  a  reduction  to  practice  must 
show  that  the  work  of  the  inventor  is  finished 
physically  as  well  as  mentally,  and  that  noth- 
ing is  left  for  the  inventive  genius  of  the  pub- 
lic.   *Id. 


INTERFERENCE,  XXXV,  (b),  2. 


369 


2432.  While  it  is  not  always  essential  that 
actual  tests  of  the  invention  be  made  in  order 
to  complete  the  invention  (Mason  v.  Hepburn, 

C.  D.  1898,  510,  84  O.  G.  147),  yet  the  device 
relied  upon  as  a  reduction  to  practice  must,  if 
it  has  not  been  worked,  clearly  be  capable  of 
work  and  not  have  been  a  mere  experiment. 
*Id. 

2.  Held  a  Reduction. 

2433.  Where  it  is  claimed  that  the  roller- 
holder  was  made  and  used  in  1893,  again  used 
in  1S95,  and  a  third  time  in  1897,  although 
the  impressions  were  not  satisfactory  and  the 
device  was  never  again  used,  Held,  that  this 
would  be  considered  a  reduction  to  practice 
if  the  construction  of  the  roller-holder  at  that 
time  is  shown  to  be  the  same  as  it  now  exists. 
Eastman'  v.  Houston,  C.  D.  1901,  95  O.  G.  2064. 

2434.  Where  Roe  in  August,  1899,  com- 
pleted the  shifting  device  for  the  saws  of  a 
gang-edger  and  embodied  it  in  a  full-sized 
machine  adapted  for  practical  use  and  then 
tested  it,  but  did  not  place  it  in  a 
sawmill  and  test  it  commercially  until  March, 
1900,  Held,  a  reduction  of  the  invention  to 
practice  in  August,  1899.     Roe  v.  Hanson,  C. 

D.  1902,  99  O.  G.  2550. 

2435.  Where  one  specific  form  of  invention 
embodied  in  a  machine  is  shown  to  have  work- 
ed practically  and  successfully.  Held,  to  con- 
stitute a  reduction  to  practice  of  the  inven- 
tion notwithstanding  the  fact  that  this  form 
is  shown  to  have  been  capable  of  improvement. 
(Hien  v.  Buhoup,  C.  D.  1897,  190,  81  O.  G. 
2088.)  Slaughter  v.  Halle,  C.  D.  1902,  99  O. 
G.  2771. 

2436.  Where  after  making  and  successfully 
testing  one  form  of  ejecting  mechanism  for 
iTiatch-machines  D.  made  an  improved  form 
and  showed  the  second  form  in  his  applica- 
tion, but  made  broad  claims  including  the  first 
form.  Held,  that  the  first  machine  was  a  re- 
duction to  practice.  *Wyman  v.  Donnelly, 
C.  D.  1903,  104  O.  G.  310. 

2437.  Where  the  issue  relates  to  ejecting 
mechanism  of  a  match-machine  and  the  de- 
vice introduced  in  evidence  is  merely  the  eject- 
ing mechanism,  but  the  witnesses  say  it  was 
used  on  a  full-sized  match-machine.  Held,  that 
it  may  be  fairly  inferred  that  the  machine  in- 
cluded all  of  the  parts  usual  in  such  machines. 
*Id. 

2438.  Where  a  machine  is  constructed  which 
embodies  the  combination  of  elements  called 

24 


for  in  the  issue  and  it  is  established  by  clear 
and  explicit  testimony  of  competent  witnesses 
that  the  machine  was  put  to  practical  use  and 
operated  successfully  to  perform  the  work 
for  which  it  was  adapted.  Held,  that  the  ma- 
chine is  reduction  to  practice,  as  these  facts 
outweigh  any  presumption  that  the  machine 
was  not  a  successful  one  because  the  inventor 
saw  fit  to  subsequently  construct  another  ma- 
chine which  was  a  more  perfect  one  me- 
chanically. Thomas  v.  Trissel,  C.  D.  1903, 
107  O.  G.  265. 

2439.  In  determining  whether  or  not  a  cer- 
tain machine  is  a  reduction  to  practice  the 
class  of  machinery  to  which  it  belongs  should 
be  considered,  and  when  a  machine  fully  meets 
the  requirements  of  that  class  as  to  the  me- 
chanical perfection  of  the  parts  it  is  a  re- 
duction to  practice.     Id. 

2440.  The  fact  that  an  inventor  proceeds  to 
construct  a  cheaper  and  lighter  machine, 
changed  in  certain  details  to  perfect  it  for 
trade,  does  not  alter  the  fact  that  a  former 
machine  was  a  reduction  to  practice  which 
was  complete  in  all  its  details  and  by  test 
had  been  shown  to  be  capable  of  performing 
the  work  for  which  it  was  adapted.  (Hien  v. 
Buhoup,  C.  D.  1897,  81  O.  G.  2088.)     Id. 

2441.  Where  several  witnesses  say  a  ma- 
chine was  made  and  used  successfully  and  is 
now  in  the  same  condition  and  in  use  at  the 
same  place  and  where  the  allegations  could 
have  been  easily  disproved  if  untrue,  but 
no  effort  was  made  to  disprove  them,  Held, 
proof  of  reduction  to  practice.  Herman  v. 
Pullman,  C.  D.  1903,  107  0.  G.  1094. 

2442.  Where  a  machine  was  built  by  hand 
and  has  not  the  finish  and  is  not  made  of  the 
materials  which  would  be  used  in  the  com- 
mercial manufacture  of  such  machines,  but  is 
in  its  present  form  practically  operative  for 
the  purpose  intended.  Held,  a  reduction  to 
practice.  Hallwood  v.  Lalor  v.  BockhoflF,  C. 
D.  1903,  103  O.  G.  887. 

2443.  Held,  that  a  voting-machine  consti- 
tutes a  reduction  to  practice  though  it  is  not 
absolutely  perfect  in  construction,  but  which 
is  "so  constructed  as  to  embody  all  the  essen- 
tial elements  of  the  invention  in  a  form  that 
would  make  them  practical  and  operative,  so 
as  to  accomplish  the  result  in  a  reasonably 
practical  way."  (American  Company  v.  Tool 
Company,  4  Fisher,  299.)  Cummings  v.  Mc- 
Kenzie,  C.  D.  1904,  110  O.  G.  1167. 


370 


INTERFERENCE,  XXXV,  (b),  2. 


2444.  Where  Brooks  made  a  full-sized  ma- 
chine before  Smith  conceived  the  invention 
and  Brooks  himself  and  one  witness  testify 
clearly  that  it  was  operating  practically  and 
successfully,  and  although  certain  parts  of 
the  machine  are  now  missing  the  workman- 
ship and  construction  of  the  machine  are  such 
as  to  make  it  seem  probable  that  it  would 
work  successfully.  Held,  that  it  was  a  reduc- 
tion to  practice  of  the  invention  and  that 
Brooks  was  the  first  inventor.  Brooks  v. 
Smith,  C.  D.  1904,  110  O.  G.  2013. 

2445.  Where  the  devince  is  full-sized  and 
has  been  thoroughly  tested  and  used  satisfac- 
torily. Held,  that  though  it  is  made  of  wood, 
whereas  the  commercial  article  would  be  made 
of  porcelain,  it  is  nevertheless  a  reduction  to 
practice  of  the  invention.  Spaulding  v.  Nor- 
den,  112  O.  G.  2091. 

2446.  Where  a  hose-supporter  introduced  in 
evidence  as  showing  a  reduction  to  practice  is 
of  full  size,  but  lacks  certain  removable  and 
co-operating  parts,  and  the  testimony  of  the 
witnesses  is  clear  and  explicit  that  when  the 
device  was  successfully  tested  such  removable 
and  co-operating  parts  were  attached  to  it, 
Held,  that  the  making  of  the  device  was  a 
reduction  to  practice.  Basch  v.  Hammond, 
C.  D.  1904,  113  O.  G.  551. 

2447.  Where  the  device  is  made  of  wood, 
but  is  full-sized  and  was  thoroughly  tested. 
Held,  that  it  is  a  reduction  to  practice  though 
the  commercial  article  would  be  made  of  some 
more  durable  substance.  *Norden  v.  Spauld- 
ing. C.  D.  1905,  114  O.  G.  1428. 

2448.  The  fact  that  the  construction  has 
been  called  in  the  testimony  a  model  is  of  no 
consequence  if  it  is,  in  fact,  a  reduction  to 
practice.     *Id. 

2449.  Where  it  was  contended  that  a  device 
was  no  more  than  a  crude  and  experimental 
model,  which  was  not  fit  for  marketable  use, 
the  court  found  that  it  was  a  full-sized  opera- 
tive structure  which,  except  for  ornamentation 
and  polish,  was  fit  for  commercial  use  and 
held  the  same  to  be  a  reduction  to  practice. 
♦Hope,  Jr.  v.  Voight,  C.  D.  1905,  115  O.  G. 
1585. 

2450.  Where  a  moving-machine  was  con- 
structed and  practically  operated  under  usual 
conditions  and  though  crude  found  to  be  sat- 
isfactory and  successful  in  its  operation,  Held, 
to  be  a  reduction  to  practice,  notwithstanding 
the  fact  that  the  machine  was  afterward  dis- 
mantled and  some  of  the  parts  were  used  in 


building  other  machines  which  differed  in 
some  respects  from  the  old  one.  *Funk  et  al. 
v.  Whitely,  C.  D.  1905,  117  O.  G.  280. 

2451.  While  the  destruction  or  dismantling 
of  a  first  construction  and  the  loss  of  some 
of  its  parts  or  their  use  in  making  other  ma- 
chines are  sometimes  important  in  determin- 
ing the  question  of  reduction  to  practice,  they 
are  only  important  when  depending  upon  other 
circumstances  tending  to  cast  doubt  upon  the 
claims  of  the  earlier  reduction  to  practice, 
notably  that  of  long  and  unreasonable  delay 
in  the  exploitation  of  the  invention.     *Id. 

2452.  Where  it  is  established  that  a  seal- 
press  was  made  and  used  under  actual  work- 
ing conditions,  that  it  worked  on  the  right 
principle  and  gave  satisfaction  to  those  using 
the  press,  but  that  after  some  six  months  of 
use  a  rivet  supporting  one  of  the  parts  gave 
way  and  the  press  was  sent  to  the  factory  for 
repair,  with  the  suggestion  that  a  stronger 
rivet  be  used,  Held,  that  the  fact  that  one  of 
the  parts  of  the  device  broke  after  long  use 
is  not  a  sufficient  reason  for  denying  to  the 
inventor  thereof  the  benefit  of  reduction  to 
practice.  Foote  v.  Wenk,  C.  D.  1905,  118  O. 
G.  1366. 

2453.  Where  a  device  was  actually  used  for 
the  purposes  for  which  it  was  intended  and 
completely  demonstrated  its  utility  and  prac- 
ticability, Held,  that  such  device  was  the  equiv- 
alent of  a  reduction  to  practice,  even  though 
it  was  but  half  the  size  of  the  commercial 
machine.  *Gallagher,  Jr.  v.  Hien,  C.  D.  1905, 
115  O.  G.  1330. 

2454.  Where  a  device  embodying  the  inven- 
tion in  issue  is  shown  to  have  been  construct- 
ed and  the  question  is  whether  or  not  such 
device  operated  successfully  and  satisfactor- 
ily, the  testimony  of  the  inventor  and  of  two 
witnesses  who  showed  that  they  were  thor- 
oughly familiar  with  the  construction,  that 
the  device  operated  successfully,  and  that 
they  used  it  a  number  of  times  is  sufficient  to 
warrant  the  conclusion  that  such  device  was 
an  actual  reduction  to  practice,  and  it  is  un- 
necessary that  the  facts  on  which  they  base 
their  conclusion  appear  in  the  record.  *See- 
berger  v.  Russel,  C.  D.  1906,  121  O.  G.  2328. 

2455.  Where  the  invention  in  issue  related 
to  an  auxiliary  traveling  platform  in  combina- 
tion with  an  escalator  and  it  appears  that  after 
an  alleged  successful  operation  the  platform 
was  removed  from  the  escalator  and  never  re- 
placed and  some  of  the  parts  disappeared  and 


INTERFERENCE,  XXXV,  (b),  3. 


371 


twelve  escalators  were  built  without  the  plat- 
form, Held,  that  these  circumstances  when  un- 
explained tend  strongly  to  create  the  infer- 
ence that  the  alleged  test  was  not  regarded  as 
successful ;  but  when  a  reasonable  and  satis- 
factory explanation  thereof  is  given  such  an 
inference  is  unwarranted.    *Id. 

2456.  A  material  part  of  an  apparatus  may 
be  separate  from  the  apparatus  and  tempor- 
arily held  up  to  its  work,  and  yet  constitute 
reduction  to  practice.  (Loewer  v.  Ross,  C.  D. 
1896,  66.5,  77  O.  G.  2141.)  *Andrews  v.  Nel- 
son, C.  D.  1906,  123  O.  G.  1667. 

2457.  Where  the  Rolfe  exhibits  were  made 
and  tested,  Held,  that  it  is  considered  that 
his  work  as  an  inventor  was  finished,  phys- 
ically as  well  as  mentally,  and  that  there  was 
a  complete  reduction  to  practice.  *Rolfe  v. 
Hoffman,  C.   D.   1906,  121   O.  G.   13S0. 

2458.  A  garment-fastener  which  was  used 
for  two  months  in  practical  operation,  Held. 
to  be  a  reduction  to  practice,  although  it  ap- 
peared that  it  was  not  mechanically  perfect, 
that  it  was  not  made  of  a  material  which 
would  be  used  in  a  commercial  article,  that 
the  hooks  were  not  in  size  adapted  to  retain 
thick  skirt-bands,  and  that  it  was  not  en- 
tirely satisfactory  and  successful,  where  it  ap- 
peared that  the  defects  were  clearly  mechan- 
ical imperfections  which  could  easily  be  rem- 
edied. *Lowrie  v.  Taylor  and  Taylor,  C.  D. 
1906,   123  O.   G.   1665. 

2459.  A  machine  may  be  crude  in  construc- 
tion, but  if  it  contains  all  the  essential  ele- 
ments of  the  invention  of  the  issue  and  in  its 
operation  successfully  demonstrates  its  prac- 
tical efficacy  and  utility  reduction  to  practice 
is  accomplished.  (Coffee  v.  Guerant,  C.  D. 
1894,  384,  68  O.  G.  279,  3  App.  D.  C.  497,  409; 
Norden  v.  Spaulding,  C.  D.  190.->,  588,  114  O. 
G.  1828,  24  App.  D.  C.  286,  290;  Gallagher  v. 
Hien,  C.  D.  1905,  624,  115  O.  G.  1330,  25  App. 
D.  C.  77,  82;  Lowrie  v.  Taylor,  C.  D.  1906, 
713,  123  O.  G.  1665,  27  App.  D.  C.  522,  526.) 
The  mere  fact  that  mechanical  improvements 
may  be  suggested  and  made  in  the  course  of 
operation  that  tend  to  perfect  the  operation 
of  the  machine  and  increase  its  practical  ef- 
ficiency, while  retaining  the  essential  elements 
of  the  invention  which  it  puts  in  practice,  does 
not  impair  the  effect  of  the  original  demon- 
stration of  utility  if  established  satisfactorily. 
*Burson  v.  Vogel,  C.  D.  1907,  131  O.  G.  942. 

2460.  A  device  for  supporting  hose  for  fire- 
protection   purposes   embodying  a   telescoping 


arm  which  was  fully  operative  to  carry  out 
the  object  for  which  it  was  designed  con- 
stitutes an  actual  reduction  to  practice,  al- 
though it  was  found  desirable  to  add  a  set- 
screw  to  prevent  the  complete  withdrawal  of 
such  telescoping  arm.  "Any  mechanic  skilled 
in  the  art  would  have  added  the  means  to 
prevent  the  complete  withdrawal  of  the  tele- 
scoping arm.  Telescopes  and  spy-glasses  con- 
tain such  devices.  Moreover,  the  testimony 
shows  that  in  its  then  condition  the  device 
was  an  improvement  over  the  prior  art,  and 
that  it  required  an  unusual  or  very  sudden 
pull  to  entirely  withdraw  the  telescoping  arm 
from  its  socket.  It  was  the  idea  of  the  tele- 
scoping arm,  which  would  receive  the  links  as 
the  hose  was  pulled  from  the  rack,  that  con- 
stituted the  invention.  No  patent  could  have 
been  obtained  on  the  set-screw  because  that 
was  old  in  the  art."  *Howard  v.  Bowes,  C. 
D.  1908,  137  O.  G.  733. 

3.  Not   Held  a  Reduction. 

2461.  A  fodder-shredder  in  which  a  cutter- 
bar  was  taken  out  of  an  old  machine,  leaving 
an  inch  of  open  space  between  the  edges  of 
the  cutter-teeth  and  the  periphery  of  the  lower 
feed-roll  at  the  point  of  nearest  approach,  is 
not  a  reduction  to  practice  of  an  issue  which 
calls  for  cutters  arranged  in  immediate  rela- 
tion to  the  lower  feed-roll,  whereby  the  points 
of  the  teeth  of  the  cutter  are  brought  close 
to  the  said  feed-roll.  *Tracy  et  al.  v.  Leslie, 
C.   D.   1899,  87  O.   G.  891. 

2462.  The  fact  that  a  machine  operated  sat- 
isfactorily after  it  was  filed  as  an  exhibit  in 
the  patent  office  is  not  proof  that  it  so  oper- 
ated and  was  a  reduction  to  practice  some 
years  prior  to  that  time,  when  it  is  claimed 
to  have  been  made.  *Fefel  v.  Stocker,  C.  D. 
1901,  194  O.  G.  433. 

2463.  Where  a  machine  was  made  and  was 
operated  effectively  as  a  camera  for  taking 
consecutive  pictures  and  it  was  experimented 
with  privately  on  one  or  more  occasions  as  an 
apparatus  for  projecting  pictures  and  was 
kept  and  satisfactorily  operated  as  a  camera 
for  taking  pictures,  but  was  not  again  tried 
for  their  projection.  Held,  that  such  use  can- 
not be  regarded  as  reduction  to  practice  of 
an  apparatus  for  exhibiting  pictures  because 
of  the  patentable  distinction  between  appa- 
ratus for  taking  pictures  and  that  for  their 
exhibition.  (Bruel  v.  Smith,  C.  D.  1897,  332, 
78  O.   G.   1906;   Tracy  v.  Leslie,  C.   D.   1899, 


372 


INTERFERENCE,  XXXV,  (b),  3. 


306,  87  O.  G.  891.)     *Lathram  v.  Armat,  C  D. 
1001,  95  O.  G.  232. 

2464.  Where  the  cap  made  was  crude  and 
the  inventor  himself  testifies  that  he  did  not 
regard  that  particular  cap  as  fit  for  practical 
use  on  a  bottle.  Held,  that  it  cannot  be  re- 
garded as  a  reduction  to  practice  of  the  in- 
vention although  others  made  subsequently 
upon  the  same  pattern  were  practical  and  suc- 
cessful. *Lindemeyer  v.  Hoffman  et  al.,  C. 
D.  1901,  95  O.  G.  838. 

2465.  Where  a  certain  exhibit  contains  a 
chamber  as  a  material  part  thereof,  which  is 
so  connected  and  associated  with  the  other 
parts  that  it  would  probably  have  a  material 
effect  upon  the  operation  of  the  device.  Held, 
that  this  chamber  cannot  be  ignored  in  order 
that  the  exhibit  may  be  considered  as  a  re- 
duction to  practice.  Blackford  v.  Wilder,  C. 
D.  1902,  99  O.  G.  2762. 

2466.  Where  B.  contends  that  a  certain  ex- 
hibit if  operated  at  this  time  would  contain 
oil  in  the  trough  and  that  therefore  it  must 
be  held  that  it  contained  oil  in  1896  when 
operated,  Held,  that  a  demonstration  of  the 
burner  at  this  time  even  if  satisfactory  would 
not  be  sufficient,  since  B.  should  have  shown 
by  his  proofs  that  it  did  contain  oil  and  that 
he  appreciated  the  fact  at  the  time.  It  is  not 
sufficient  that  he  supposes  now  that  an  opera- 
tion took  place  which  he  did  not  appreciate 
at  the  time.     Id. 

2467.  Where  the  issue  is  for  defiberized 
cornstalk-pith  saturated  with  oil  and  it  appears 
that  S.  produced  the  pith  and  in  experiment- 
ing with  it  saturated  small  quantities  with  oil, 
but  made  no  practical  use  of  it  to  determine 
its  properties  and  value.  Held,  not  a  reduc- 
tion to  practice.  Silverman  v.  Hendrickson, 
C.   D.  1002,  99  O.  G.  44.5. 

2468.  The  fact  that  an  unsuccessful  device 
could  have  been  made  successful  by  mere 
mechanical  skill  does  not  make  that  device 
constitute  a  reduction  to  practice,  since  until 
made  operative  it  does  not  demonstrate  the 
practicability  of  the  invention  any  more  than 
would  drawings  or  a  model.  Swihart  v. 
Mauldin,  C.   D.  1902,  99  O.  G.  6G.5. 

2469.  Where  the  mechanism  of  the  claim 
operates  successfully,  it  is  not  necessary  that 
all  parts  of  the  machine  in  which  it  is  used 
shall  be  mechanically  perfect;  but  where  the 
mechanism  claimed  is  the  part  which  proves 
defective.  Held,  not  a  reduction  to  practice. 
Id. 


2470.  Where  W.  made  a  device  in  .A.pril, 
1896,  embodying  the  construction  in  issue  ex- 
cept one  feature  and  B.  made  a  device  em- 
bodying all  features  of  the  issue  in  Novem- 
ber, 1896,  Held,  that  B.  is  the  first  inventor. 
♦Blackford  v.  Wilder,  C.  D.  1903,  104  O.  G. 
578. 

2471.  Evidence  of  reduction  to  practice 
must  embrace  all  of  the  elements  of  the  issue, 
leaving  nothing  to  inference  merely,  since  no 
element  can  be  said  to  be  subordinate  and  im- 
material.    *Id. 

2472.  Where  the  issue  covers  an  oil-burner 
of  novel  construction  and  includes  as  an  ele- 
ment a  wick  fitting  in  the  burner  in  a  certain 
way.  Held,  that  a  device  cannot  be  received 
as  a  reduction  to  practice  of  the  invention  un- 
less it  is  shown  that  it  contained  a  wick  of 
the  particular  form  specified.    *Id. 

2473.  Where  the  issue  includes  two  distinct 
elements  in  combination — viz.,  a  line-lock 
mechanism  for  typewriters  in  combination 
with  a  mechanism  for  positively  releasing  the 
lock — Held,  that  a  machine  which  contains 
a  mere  latch  capable  of  being  turned  on  its 
pivot  in  order  to  disengage  it  from  its  co- 
acting  stop — i.  e..  a  mere  latch  capable  of  being 
"picked" — is  not  a  reduction  to  practice  of  the 
invention  defined  in  the  issue.  Brooks  v.  Hil- 
lard,  C.  D.  1903,  106  O.  G.  1237. 

2474.  Where  the  issue  covers  a  line-lock 
mechanism  for  type-writers.  Held,  that  a  ma- 
chine provided  with  a  mere  bell-trip  which 
occasionally  obstructs  the  escapement-bar  is 
not  a  reduction  to  practice  of  the  invention 
defined  in  the  issue.     Id. 

2475.  Held,  that  an  accidental  occasional, 
incomplete,  and  imperfect  operation  of  a 
structure  especially  when  said  structure  was 
constructed  and  designed  to  perform  another 
and  wholly  different  function,  is  not  sufficient 
to  establish  the  fact  of  invention.  Such  a 
structure  is  not  a  reduction  to  practice.  (Chis- 
holm  et  al.  v.  Johnson,  106  Fed.  Rep.  191.) 
Id. 

2476.  Where  the  inventor  McKenzie  does 
not  testify  and  a  machine  is  introduced  in 
evidence  which  apparently  is  a  reasonably  per- 
fect machine,  but  there  is  no  satisfactory  evi- 
dence that  the  machine  was  the  invention  of 
the  alleged  inventor  and  it  does  not  appear 
from  the  evidence  that  the  machine  was  sat- 
isfactory in  its  operation  when  it  was  alleged 
to  have  been  completed.  Held,  that  the  evi- 
dence does  not  establish   either  a  conception 


INTERFERENCE,  XXXV,  (b),  3. 


373 


or  a  reduction  to  practice  for  McKenzie.  Id. 
Cummins  v.  McKenzie,  C.  D.  1904,  110  O.  G. 
1167. 

2477.  Where  it  appears  that  a  crude  device 
was  completed  fully  illustrating  an  operative 
construction  and  doubt  e.xists  as  to  whether 
or  not  that  device  is  a  mere  illustrative  model 
or  a  reduction  to  practice.  Held,  that  a  long 
delay  in  building  a  practically  operative  ma- 
chine or  in  filing  an  application  for  a  patent 
is  significant  and  raises  a  presumption  that 
the  device  at  the  time  it  was  built  was  not 
considered  to  be  reduction  to  practice  by  the 
inventor.  Ocumpaugh  v.  Norton,  C.  D.  1904, 
110  O.  G.  1723. 

2478.  As  the  primary  and  most  essential 
requisite  of  the  registering  mechanism  of  a 
voting  machine  is  that  of  unfailing  accuracy, 
Held,  that  a  voting-machine  which  admittedly 
fails  to  register  as  desired  as  often  as  "once  in 
a  hundred  times"  is  not  a  reduction  to  practice. 
♦McKenzie  v.  Cummings,  C.  D.  1904,  112  O.  G. 
1481. 

2479.  Where  after  the  alleged  date  of  re- 
duction to  practice  of  a  machine  the  party 
and  his  employers  placed  other  machines  of 
the  same  kind  upon  the  market  and  applied 
for  patents  thereon,  but  did  not  put  this  ma- 
chine upon  the  market  or  attempt  to  patent 
it  until  after  the  value  of  its  date  for  pur- 
poses of  priority  had  been  made  manifest, 
Held,  that  the  conduct  of  the  party  and  his 
employers  is  evidence  that  the  machine  did 
not  constitute  reduction  to  practice  at  the 
date  claimed.  Paul  v.  Hess,  C.  D.  1904,  113 
O.  G.  847. 

2480.  Where  an  exhibit  type-writer  sub- 
mitted as  reduction  to  practice  of  type-bar 
mechanism  has  but  six  type-bars,  and  of  these 
the  only  two  that  are  side  by  side  are  located 
where  the  difficulties  of  operation  are  least, 
Held,  that  the  operation  of  this  machine  at 
the  hearing  is  not  sufficient  to  establish  re- 
duction to  practice  so  that  proof  of  earlier 
successful  operation  may  be  dispensed  with. 
Id. 

2481.  Where  there  is  doubt  whether  a  device 
made  operated  successfully  and  constituted  a 
reduction  to  practice.  Held,  that  long  and  un- 
explained delay  in  manufacturing  the  device 
or  applying  for  a  patent  warrants  resolving 
the  doubt  against  the  maker  of  the  device. 
Greenwood  v.  Dover,  C.  D.  1904,  108  O.  G. 
2143. 


2482.  Where  all  the  elements  of  the  issue 
are  not  present  in  the  device  which  is  offered 
in  evidence  and  on  which  reliance  is  made  for 
a  reduction  to  practice  and  their  absence  is 
not  explained  in  the  testimony.  Held,  that  the 
fact  of  an  actual  reduction  to  practice  is  not 
established.  Robinson  v.  Seelinger,  C.  D.  1903, 
114  O.  G.  262. 

2483.  Where  the  machine  claimed  as  a  re- 
duction to  practice  was  submitted  to  the  in- 
ventor's employers,  but  they  adopted  another 
machine,  and  this  proving  unsatisfactory  was 
withdrawn  and  still  another  machine  put  on 
the  market.  Held,  that  the  circumstances  point 
to  the  conclusion  that  the  machine  did  not 
represent  a  complete  and  practical  invention. 
♦Paul  V.  Hess,  115  O.  G.  2.il. 

2484.  A  device  which  merely  illustrates  the 
mode  of  mechanical  construction  and  opera- 
tion of  the  conceived  idea  and  which  may  be 
said  to  be  an  embodiment  of  the  invention  in 
visible  form  is  not  necessarily  a  reduction  to 
practice,  for  though  the  device  is  operative 
as  a  mechanical  movement  there  is  no  cer- 
tainty that  it  will  perform  its  function  when 
put  to  use  under  full  conditions  of  practical 
use.  *Ocumpaugh  v.  Norton,  C.  D.  igo.'i,  114 
O.  G.  545. 

2485.  Where  an  exhibit  embodies  an  inven- 
tion and  is  operative  as  a  mechanical  move- 
ment, yet  various  parts  of  the  structure  which 
are  the  essence  of  a  practical  working  machine 
are  so  crude  and  even  certain  of  derangement 
that  no  one  would  seriously  consider  building 
machines  in  accordance  with  the  exhibit  with- 
out further  experiments.  Held,  that  such  de- 
vice is  not  a  reduction  to  practice.    *Id. 

2486.  Held,  that  the  proofs  tending  to  es- 
tablish a  reduction  to  practice  must  be  con- 
sidered as  a  whole  and  the  attendant  circum- 
stances of  the  case  must  be  borne  in  mind, 
and  the  action  of  the  inventor  with  respect  to 
the  exhibit  prior  to  the  necessity  for  its  use 
in  the  interference  proceeding,  his  failure  to 
construct  other  machines  or  promptly  file  an 
application,  and  the  fact  that  the  application 
when  filed  discloses  different  features  from 
those  in  the  exhibit  all  tend  to  show  that  the 
device  was  not  a  reduction  to  practice,  but 
merely  an  experimental  device.    *Id. 

2487.  Where  exhibits  are  offered  in  evidence 
on  which  to  predicate  a  reduction  to  practice 
and  these  exhibits  are  lacking  in  one  or  more 
elements  of   the  issue,  Held,  that  the  neces- 


374 


INTERFERENCE,  XXXV,  (c). 


sary  elements  in  the  exhibits  cannot  be  sup- 
plied unless  warrant  for  such  finding  is  found 
in  the  record.  *Robinson  v.  Seelinger,  116 
O.  G.  1735. 

2488.  Held,  that  evidence  of  reduction  to 
practice  must  embrace  all  the  elements  of  the 
issue,  leaving  nothing  to  inference  merely. 
(Blackford  v.  Wilder,  C.  D.  1903,  567,  104  O. 
G.  578,  21  App.  D.  C.  1.)     *Id. 

2489.  Where  the  evidence  is  not  convincing 
that  the  device  under  consideration  is  capable 
of  being  used  for  practical  purposes  and  an 
examination  of  the  device  in  connection  with 
a  consideration  of  the  facts  of  record  war- 
rants the  opinion  that  it  is  essentially  an  ex- 
perimental device  and  never  passed  beyond 
that  stage.  Held,  that  such  device  is  not  a  re- 
duction to  practice.  *Ocumpaugh  v.  Norton, 
C.  D.  1905,  114  O.  G.  545. 

2490.  On  an  issue  relating  to  a  wire-draw- 
ing machine,  including  a  rotary  block  having 
a  vise  pivoted  thereon  to  engage  the  wire  and 
a  swinging  die-holder,  in  which  the  drawing 
operation  begins  with  the  vise  in  a  radial  posi- 
tion on  the  block,  evidence  considered  and 
Held,  insufficient  to  show  that  the  early  de- 
vice relied  upon  by  S.  as  a  reduction  to  prac- 
tice was  operated  with  the  vise  in  a  radial 
position  prior  to  the  date  to  which  T.  is  enti- 
tled, and  priority  is  therefore  awarded  to  T. 
♦Thompson  v.  Smith,  C.  D.  1908,  145  O.  G. 
513. 

(c)   Constructive. 

2491.  The  filing  of  an  allowable  application 
is  a  constructive  reduction  to  practice  of  the 
invention  at  its  date,  and  it  is  not  necessary 
to  show  actual  reduction  to  practice  thereafter 
to  establish  the  right  to  a  patent.  Osborn  v. 
Holsapillar,  C.  D.  1903,  102  O.  G.  1296. 

2492.  Where  an  application  has  been  filed 
complete  in  the  patent  office,  any  alleged  de- 
fects in  the  construction  and  operation  of  the 
machine  which  are  within  the  provisions  of 
every  mechanic  to  cure  and  which  changes  it 
may  be  admitted  are  necessary  to  make  in 
order  to  adapt  the  machine  to  perform  its 
work  more  perfectly,  Held,  that  such  appli- 
cation is  in  law  a  constructive  reduction  to 
practice.  Watson  v.  Thomas,  C.  D.  1903,  106 
O.  G.  1776. 

2493.  The  question  as  to  whether  an  appli- 
cation on  file  in  this  office  should  be  given  the 
effect  of  constructive  reduction  to  practice  in- 


volves the  question  of  whether  the  application 
is  allowable,  since  that  effect  is  given  only  to 
allowable  applications.  Ex  parte  Brisbane,  C. 
D.  1903,  107  O.  G.  1059. 

2494.  Held,  that  an  applicant  is  entitled  to 
the  benefit  of  a  constructive  reduction  to  prac- 
tice by  filing  an  allowable  application  for  a 
patent  and  that  to  constitute  an  allowable  ap- 
plication the  machine  described  and  claimed 
therein  must  be  an  operative  machine.  Bow- 
ditch  v.  Todd,  C.  U.  1904,  112  O.  G.  1477. 

2495.  Held,  that  this  court  will  not  disturb 
the  long-established  doctrine  that  the  filing 
of  an  allowable  application  for  a  patent  is  to 
be  regarded  as  equivalent  to  a  reduction  to 
practice.  *Davis  v.  Garrett,  C.  D.  1906,  123 
O.  G.  1991. 

2496.  The  rule  of  the  patent  office  that  the 
filing  of  an  allowable  application  is  construc- 
tive reduction  to  practice  is  only  the  expres- 
sion in  another  form  of  the  rule  that  the  ap- 
plication of  a  patented  invention,  if  it  suffi- 
ciently describes  the  invention,  is  conclusive 
evidence  that  the  invention  was  made  at  least 
as  early  as  that  date,  d  Automatic  Weighing 
Machine  Company  v.  Pneumatic  Scale  Cor- 
poration, Limited,  C.  D.  1909,  139  O.  G.  991. 

2497.  "The  theory  underlying  the  doctrine 
of  constructive  reduction  to  practice  is  that 
the  filing  of  a  proper  application  constitutes 
a  sufficient  disclosure  to  enable  one  skilled 
in  the  art  to  practice  the  invention."  ♦Na- 
tional Metallurgic  Company,  assignee  of  Tom 
Cobb  King  v.  Whitman  et  al.  Whitman  v. 
Hearne  et  al,  C.  D.  1910,  156  O.  G.  1068. 

2498.  Where  an  application  was  altered  after 
being  signed  and  sworn  to.  Held,  that  a  pat- 
ent cannot  be  granted  thereon  and  that  it  can- 
not be  given  the  effect  of  a  constructive  re- 
duction to  practice.  Ames  v.  Lindstrom,  C. 
D.  1911,  167  O.  G.  241. 

2499.  Where  the  testimony  showed  that  L., 
who  was  the  second  to  conceive  the  invention 
but  the  first  to  file  an  application  therefor,  did 
not  actually  reduce  it  to  practice  until  after 
A.  filed  his  application  and  that  L.'s  application 
had  been  altered  after  being  signed  and  sworn 
to,  Held,  that  the  application  of  L.  did  not 
constitute  a  constructive  reduction  to  prac- 
tice and  that  priority  should  be  awarded  to  A. 
(Davis  V.  Garrett,  123  O.  G.  1991,  28  App.  D. 
C.  9;  Snider  v.  Bunnell,  101  O.  G.  2572,  and 
Hopkins  v.  Scott,  105  O.  G.  1263,  distin- 
guished.)    Id. 


INTERFERENCE,  XXXV,  (d),  1. 


375 


(d)  Abandoned  and   Unsuccessful  Experi- 
ment. 

1.  Held  Abandoned  Experiment. 

2500.  The  action  of  Finkenbiner  in  failing 
to  manufacture  the  device  for  two  years  after 
his  alleged  reduction  to  practice,  during  which 
time  there  was  a  general  demand  in  the  trade 
for  the  device  and  specific  demand  was  made 
upon  him  for  a  device  performing  its  func- 
tions, and  the  attempt  on  his  part  to  meet 
the  demand  by  devising  some  other  form  of 
device,  raise  the  presumption  that  what  was 
done  amounted  to  no  more  than  an  abandoned 
experiment,  and  this  presumption  is  not  over- 
come by  the  statement  of  several  witnesses 
that  the  test  of  the  device  was  satisfactory. 
*Beals  v.  Finkenbiner,  C.  D.  1898,  82  O.  G. 
598. 

2501.  The  fact  that  the  construction  of  a 
device  has  not  been  followed  within  a  rea- 
sonable time  by  practical  use  or  application 
for  patent  affords  a  strong  inference  that 
what  had  been  done  was  regarded  by  the  in- 
ventor as  experimental  only  and  not  a  com- 
pletion of  the  invention,  and  this  would  be  re- 
inforced if  in  the  meantime  the  machine  had 
been  dismantled  or  destroyed.  *Mason  v. 
Hepburn,  C.  D.  1898,  84  O.  G.  147. 

2502.  Killinger  stood  on  his  record  date  of 
July  25,  1892.  Guilbert  claimed  to  have  con- 
ceived the  invention  and  reduced  it  to  prac- 
tice in  November,  1891.  Held,  that  the  exhibit 
offered  by  Guilbert  to  show  reduction  to  prac- 
tice was  at  best  nothing  more  than  a  mere  ex- 
perimental model  abandoned  or  laid  aside  and 
recalled  afterward  by  the  publication  of  Kil- 
linger's  patent.  The  decision  of  the  commis- 
sioner awarding  priority  to  Killinger  affirmed. 
*Guilbert  v.  Killinger,  C.  D.  1898,  84  O.  G. 
313. 

2503.  Where  Traver  constructed  and  tried 
an  apparatus  embodying  the  issue  in  February, 
1889,  which  proved  unsatisfactory  and  dis- 
appointing to  him,  and  which  he  boxed  up  and 
laid  away  in  his  shop  until  the  latter  part  of 
1892.  when  he  shipped  it  to  his  attorney  upon 
hearing  that  Brown  had  appeared  with  a  suc- 
cessful device  of  the  same  general  character, 
Held,  that  what  Traver  did  in  1889  amounted 
to  no  more  than  an  experiment,  which  was 
abandoned  and  revived  only  after  Brown's 
appearance  in  the  field,  and  priority  of  inven- 
tion awarded  to  Brown.  ♦Traver  v.  Brown, 
C.  D.  1899,  86  O.  G.  1324. 


2504.  Where  D.  testifies  on  direct  exam- 
ination that  he  worked  on  a  full-sized  machine 
from  1896  to  1898  and  completed  it  and  suc- 
cessfully operated  it  in  July,  1898,  but  on 
cross-examination  admits  that  the  machine 
was  far  from  being  complete  and  operative, 
and  that  it  had  only  been  used  as  an  illustra- 
tion and  was  nothing  more  than  an  experi- 
mental model,  Held,  that  it  cannot  be  received 
as  a  reduction  to  practice.  *Darnell  v.  Grant, 
C.  D.  1900,  92  O.  G.  557. 

2505.  The  machine  belongs  to  that  class  that 
requires  something  more  than  mere  construc- 
tion in  order  to  amount  to  a  reduction  to  prac- 
tice, and  in  the  absence  of  any  explanation  of 
the  nature  of  the  tests,  coupled  with  the  fact 
that  the  machine  was  so  frequently  altered, 
and  also  taking  into  account  the  absence  of 
any  corroboration  of  the  inventor's  testimony. 
Held,  that  the  machine  was  experimental  in 
nature  and  that  there  was  no  complete  re- 
duction to  practice  shown.  Kelly  v.  Flynn, 
C.  D.  1900,  92  O.  G.  1233. 

2506.  The  apparent  abandonment  of  a  ma- 
chine by  the  inventor  and  the  long  and  wholly- 
unexplained  delay  of  more  than  four  years  in 
the  application  for  a  patent  are  strongly  in- 
dicative of  the  fact  that  the  machine  was  not 
a  successful  reduction  to  practice  and  was  not 
more  than  an  abandoned  experiment.  *FefeI 
v.  Stocker,  C.  D.  1901,  94  O.  G.  433. 

2507.  Where  a  machine  was  constructed  by 
K.,  and  a  single  test  was  made,  and  it  was 
shipped  to  England,  and  there  is  no  evidence 
respecting  its  use  or  operation  there,  and  the 
parties  interested  in  the  machine  failed  to 
make  another  to  supply  the  growing  demand 
in  this  country  for  the  product,  and  there  was 
a  failure  to  apply  for  a  patent  until  after  the 
publication  of  the  patent  issued  to  R.,  Held. 
that  these  circumstances  tend  to  show  not  a 
willful  abandonment  of  a  completed  inven- 
tion, but  rather  the  failure  of  an  attempt  to 
reduce  the  invention  to  practice  and  the  aban- 
donment of  further  experiment  in  that  direc- 
tion, and  priority  awarded  to  R.  *Reichen- 
bach  v.  Kelley,  C.  D.  1901,  94  O.  G.  1185. 

2508.  Where  the  efficiency  of  a  machine  de- 
pended upon  the  making  of  perfect  joints  in 
the  belt  of  the  machine  and  the  applicant 
failed  to  disclose  the  manner  of  making  these 
joints,  claiming  that  it  was  the  subject  of  an 
independent  and  patentable  invention,  but 
failed  to  file  an  application  for  that  invention, 
Held,  that  the  failure  to  disclose  the  manner 


376 


INTERFERENCE,  XXXV,  (d),  1. 


of  making  the  invention  or  file  an  applica- 
tion is  evidence  that  Vkfhat  was  done  amounted 
to  no  more  than  an  abandoned  experiment. 
♦Id. 

2509.  Where  the  proof  shows  that  prior  to 
Boch's  invention  a  party  made  two-part  insu- 
lators and  attached  them  by  glazing  and  in 
some  instances  used  an  extra  amount  of 
glazing  material,  but  the  results  were  not  sat- 
isfactory and  the  spaces  and  cracks  were  not 
completely  filled.  Held,  not  an  anticipation 
of  this  invention,  but  an  abandoned  experi- 
ment, c  R.  Thomas  &  Sons  Company  v.  Elec- 
tric Porcelain  and  Manufacturing  Company 
et  al.,  C.  D.  1901,  97  O.  G.  1838. 

2510.  Where  it  appears  that  a  machine  of 
full  size  was  made  for  the  purpose  of  study 
and  with  the  expectation  that  it  would  be 
used  as  a  model  for  others  if  it  was  decided 
to  manufacture  them  and  that  after  it  was 
tested  several  experimental  changes  were 
made  in  it,  but  there  is  no  satisfactory 
evidence  that  it  operated  practically  and  suc- 
cessfully. Held,  that  it  was  not  a  reduction  to 
practice.  Kelly  v.  Flynn,  C.  D.  1900,  92  O.  G. 
1237. 

2511.  Where  A.  claims  to  have  reduced  the 
invention  to  practice  in  July,  1897,  and  there- 
after worked  on  other  inventions,  but  did 
nothing  with  the  one  in  controversy  until  he 
filed  his  application  on  January  14,  1899,  and 
in  the  meantime  M.  perfected  his  invention, 
Held,  that  the  presumption  is  warranted  that 
what  was  done  by  A.  amounted  to  nothing 
more  than  an  abandoned  experiment  until  the 
contrary  is  clearly  shown.  *Adams  v.  Mur- 
phy, C.  D.  1901,  96  O.  G.  845. 

2512.  Where  it  was  shown  that  a  stamp- 
canceling  machine  was  completed  and  operated 
upon  letter-mail  in  the  postoffice  at  Boston 
for  several  hours  a  day  for  from  four  to  eight 
days  early  in  1883,  but  was  then  taken  back  to 
the  shop,  partly  dismantled,  and  then  laid 
aside  and  never  again  operated  or  tested  in 
public.  Held,  that  it  was  a  mere  abandoned  ex- 
periment and  not  a  reduction  to  practice. 
*Lloyd  V.  Antisdel,  C.  D.  1901,  95  O.  G.  1645. 

2513.  Where  Howard  and  his  assignee  tes- 
tify that  the  operation  of  the  machine  in  1883 
was  successful  and  the  testimony  of  two  em- 
ployees of  the  postoffice  was  to  the  same  effect, 
but  was  vague  and  indefinite  and  given  sixteen 
years  after  the  event.  Held,  insufficient  to 
overcome  the  presumption  raised  by  the  ap- 
parent abandonment  of  the  machine.     *Id. 


2514.  Where  an  applicant  does  not  file  his 
application  until  after  he  has  seen  claims  of  a 
patent  published  in  the  Official  Gazette,  and 
he  admits  that  the  publication  of  the  patent 
was  the  reason  for  filing  the  application  as 
soon  as  he  did.  Held,  that  this  conduct  raises 
a  presumption  that  the  tests  made  after  the 
completion  of  the  machine  were  not  success- 
ful, but  were  mere  experiments  which  cul- 
minated in  no  definite  result,  especially  a 
definitely  successful  result.  (Warner  v. 
Smith,  C.  D.  1898,  517,  84  O.  G.  311.)  Mac- 
donald  v.  Edison,  C.  D.  1903,  105  O.  G.  973. 

2515.  Where  a  device  was  made  in  1894  and 
it  is  contended  that  it  was  successfully  oper- 
ated at  that  time,  but  was  then  laid  aside  and 
nothing  further  done  with  it  until  application 
was  made  for  a  patent  in  1899,  nowithstanding 
there  were  urgent  demands  for  a  device  which 
would  accomplish  the  purpose  which  it  is 
claimed  the  said  device  did  accomplish  and  in 
the  meantime  the  company  having  the  device 
in  its  possession  had  resorted  to  other  means 
for  accomplishing  the  result,  but  without  suc- 
cess. Held,  that  the  only  reasonable  deduction 
from  these  facts  is  that  the  device  did  not 
successfully  accomplish  the  results  for  which 
it  was  designed.  Quist  v.  Osborn,  C.  D.  1903, 
106  O.  G.  1501. 

2516.  Where  it  appears  that  Q.  made  an  at- 
tachment to  a  sewing  machine  in  1894  which 
is  claimed  was  operated  successfully  at  that 
time,  but  the  testimony  leaves  the  question  of 
successful  operation  in  doubt,  and  the  device 
was  then  laid  aside  until  1899  notwithstanding 
the  trade  was  continually  asking  for  a  machine 
which  would  be  free  from  the  defects  which 
it  is  claimed  it  was  the  aim  of  the  attachment 
to  remedy.  Held,  that  the  presumption  is  that 
the  device  was  not  a  reduction  to  practice, 
but  at  most  an  experimental  device.    Id. 

2517.  Where  the  roller-bearing  in  contro- 
versy was  made  by  W.  and  was  not  put  into 
practical  use,  but  was  tested  by  hand  to  see 
if  it  would  run  smoothly,  Held  not  a  reduc- 
tion to  practice,  but  a  mere  experiment,  par- 
ticularly in  view  of  W.'s  admission  that  he 
made  bearings  subsequently  for  the  purpose 
of  testing  them  in  practical  use.  Winter  v. 
Slick  v.  Vollkommcr,  C.  D.  1903,  107  O.  G. 
16.59. 

2518.  Where  after  making  the  device  W. 
did  not  put  it  to  practical  use  or  apply  for 
a  patent  for  two  years  and  a  half,  Held,  suf- 


INTERFERENCE,  XXXV,  (d),  1. 


377 


ficient  to  show  that  the  making  of  the  device 
was  a  mere  abandoned  experiment.     Id. 

2519.  Where  a  device  said  to  embody  the 
invention  was  made  by  Greenwood,  but  the 
pin  used  as  the  pivot  of  the  joint  was  loose 
and  was  not  of  the  proper  length  for  practical 
use,  Held,  that  the  device  was  a  mere  experi- 
ment and  was  not  a  reduction  to  practice. 
Greenwood  v.  Dover,  C.  D.  1904,  108  O.  G. 
2143. 

2520.  Where  the  attachment  in  controversy 
is  said  to  have  been  made  by  Quist  and  suc- 
cessfully tested  in  1804,  but  it  was  then  re- 
moved from  the  machine,  put  away  in  a  draw- 
er, and  nothing  was  done  in  the  way  of  put- 
ting it  on  the  market  or  applying  for  a  patent 
for  four  years,  although  it  is  said  that  there 
was  a  demand  for  that  very  thing.  Held,  that 
the  making  of  the  device  must  be  regarded  as 
an  unsuccessful  and  abandoned  experiment. 
*Quist  V.  Ostrom,  C.   D.  1904,   108  O.  G.  2147. 

2521.  Where  the  device  is  a  simple  one  eas- 
ily made  and  attached  to  machines  then  in 
use  and  its  commercial  value  is  apparent. 
Held,  that  the  failure  of  the  inventor  to  make 
use  of  it  for  four  years,  during  which  time 
he  put  substitutes  on  the  market,  is  sufficient 
to  discredit  his  claim  that  he  regarded  it  as 
perfected.     Id. 

2522.  Where  it  is  established  that  a  certain 
device  was  made  and  used  to  some  extent,  but 
it  appears  that  the  device  was  discarded  and 
thrown  into  the  scrapheap  and  no  similar 
device  was  again  used,  hut  that  a  new  one 
quite  different  in  construction  was  made  and 
used  and  then  thrown  into  the  scrap,  and  no 
testimony  is  given  as  to  the  successful  opera- 
tion of  either  of  the  devices,  and  it  appears 
that  other  experiments  were  taken  up  in  dif- 
ferent lines,  and  no  application  was  filed  for 
patent  until  after  a  patent  had  been  granted 
to  another,  Held,  that  neither  device  is  a  re- 
duction to  practice  of  the  invention,  but  that 
they  were  nothing  more  than  experimental 
devices,  and  were  so  regarded  by  the  inventor 
at  that  time.  Lcmp  v.  Mudge,  C.  D.  1904, 
112  O.  G.  727. 

2623.  Held,  tliat  Sharp  was  the  first  to  con- 
ceive the  invention  and  the  first  to  reduce  it 
to  practice  and  that  therefore  he  is  the  first 
inventor.  Whipple  v.  Sharp,  C.  D.  1904,  112 
O.  G.  1749. 

2524.  Where  the  witnesses  testify  that  a  de- 
vice was  made  and  used  experimentally,  but 
do  not  describe  the  structure  clearly  and  do 


not  say  that  it  proved  successful  in  use,  and 
it  appears  that  the  inventor  laid  it  aside  and 
worked  on  other  devices.  Held,  that  the  de- 
vice was  a  mere  abandoned  experiment  and 
not  a  reduction  to  practice.  Whipple  v.  Sharp, 
112  O.  G.   1749. 

2525.  Where  a  machine  embodying  the  in- 
vention of  the  issue  was  constructed  and 
found  to  be  operative  to  perform  the  func- 
tion for  which  it  was  intended,  but  it  appears 
that  the  machine  was  subsequently  changed 
by  another  inventor,  who  had  been  placed  in 
charge  of  the  machine,  by  substituting  a  de- 
vice of  his  own  for  a  device  originally  placed 
on  the  machine,  and  it  appears  that  the  orig- 
inal device  was  never  again  restored  to  that 
machine  or  placed  upon  any  other  machine 
for  practical  use,  and  no  machine  with  the 
original  device  has  ever  been  manufactured 
for  actual  use  or  sale,  and  a  period  of  nearly 
two  years  was  allowed  to  elapse  after  the 
alleged  reduction  to  practice  before  the  ap- 
plication for  a  patent  was  filed,  and  in  the 
meantime  the  inventor,  so  far  as  the  record 
shows,  seemed  to  have  done  nothing  toward 
the  practical  development  of  the  alleged  in- 
vention. Held,  that  all  this,  whether  it  be  re- 
garded as  neglect  or  concealment,  would  tend 
to  show  that  what  was  done  by  the  inventor 
originally  was  rather  an  unsatisfactory  ex- 
periment than  a  successful  reduction  to  prac- 
tice. *Hillard  v.  Brooks,  C.  D.  1904,  111  O. 
G.  302. 

2526.  Where  the  construction  of  a  device 
shows  that  it  was  adapted  only  for  temporary 
experiments  and  there  is  no  convincing  evi- 
dence that  it  proved  satisfactory  in  use.  Held, 
that  it  must  be  regarded  as  an  abandoned  ex- 
periment and  not  as  a  reduction  to  practice. 
Andrews  v.  Nilson,  C.  D.  1905,  118  O.  G.  1363. 

2527.  Where  in  an  electric  interrupter  An- 
drews placed  washers  on  the  vibratory  strip 
where  they  would  be  held  by  magnetic  attrac- 
tion during  the  operation  of  the  machine,  but 
would  fall  off  when  the  machine  was  stopped. 
Held,  a  mere  temporary  experiment  and  not 
a  reduction  to  practice    Id. 

2528.  Where  a  device  is  tested  and  broken 
during  the  test  and  the  parts  are  destroyed 
and  lost  and  nothing  more  is  done  on  the  in- 
vention for  a  period  of  six  years  until  an  ap- 
plication for  patent  is  filed  and  it  appears  that 
the  application  was  only  filed  on  learning  that 
the  opposing  party  was  offering  for  sale  a 
device  embodying  the  same  features  of  inven- 


378 


INTERFERENCE,  XXXV,  (d),  1. 


tion  which  it  is  contended  were  present  in  the 
knuckles  which  were  tested  and  lost,  Held, 
that  these  old  devices  are  nothing  more  than 
unsuccessful  and  abandoned  experiments.  Gil- 
man  and  Brown  v.  Hinson,  C.  D.  1905,  118  O. 
G.  1933. 

2529.  Where  it  appears  that  a  device  was 
made  by  L.  of  the  nature  of  the  invention  de- 
fined in  the  issue,  but  after  a  few  trials  was 
discarded  and  relegated  to  the  scrap-heap  and 
never  again  used,  and  subsequently  a  larger 
device  was  made,  but  also  discarded  and 
relegated  to  the  scrap-heap  and  never  again 
used,  that  nothing  whatever  was  done  to  uti- 
lize either  until  L.  filed  his  application  ten 
months  after  the  grant  of  a  patent  to  M.,  and 
that  only  on  reading  the  patent  did  L.  recall 
the  fact  that  he  thought  he  previously  had  the 
same  device,  Held,  that  the  devices  which 
were  discarded  constituted  nothing  more  than 
unsuccessful  and  abandoned  experiments. 
*Lemp  v.  Mudge,  C.  D.  1905,  114  O.  G.  763. 

2530.  Where  devices  embodying  an  inven- 
tion are  made,  and  after  trials  discarded  and 
thrown  in  the  scrap,  and  no  similar  devices 
were  ever  used  afterwards,  and  only  upon 
reading  a  patent  which  had  been  granted  to 
another  person  does  the  inventor  recall  the 
fact  that  he  thought  he  had  the  same  device 
some  years  before.  Held,  that  while  that  is 
not  an  unusual  idea  under  such  circumstances, 
claims  of  this  character  must  be  proved  by 
testimony  of  the  clearest  and  most  satisfac- 
tory character  before  they  can  be  accepted. 
*Id. 

2531.  Held,  that  a  total  abandonment  of  a 
device,  notwithstanding  that  there  was  a  con- 
stant and  incessant  need  for  some  such  de- 
vice, is  proof  positive  that  the  contrivance 
which  was  discarded  was  not  a  reduction  to 
practice,  but  no  more  than  an  unsuccessful 
and  abandoned  experiment.     *Id. 

2532.  Held,  long  delay  in  making  use  of  an 
invention  claimed  to  have  been  reduced  to 
practice  or  in  applying  for  patent  tend  to 
show  that  the  alleged  reduction  to  practice 
was  nothing  more  than  an  unsatisfactory  or 
abandoned  experiment,  and  this  is  especially 
the  case  where  in  the  meantime  the  inventor 
has  been  engaged  in  prosecuting  similar  in- 
ventions or  others  without  reasonable  expla- 
nation, have  been  adopted  for  manufacture 
and  use.  *Paul  v.  Hess,  C.  D.  1905,  115  O. 
G.  251. 

2533.  Where  J.   claims   to   have  made   and 


successfully  tested  a  candy-pulling  machine 
in  1899  and  for  three  years  thereafter  pulled 
candy  by  hand  and  did  not  use  it  in  his  candy- 
pulling  establishment,  but  says  that  he  tested 
it  occasionally  when  he  was  not  busy.  Held, 
that  the  machine  must  be  regarded  as  a  mere 
experiment  and  not  a  reduction  to  practice. 
Jenner  v.  Dickinson  v.  Thibideau,  C.  D.  1905, 
116  O.  G.  1181. 

2534.  Where  the  evidence  indicates  that 
several  years  prior  to  the  filing  of  his  appli- 
cation Moore  constructed  an  apparatus  con- 
forming to  the  interference  issue  and  that 
the  apparatus  had  on  several  occasions  oper- 
ated momentarily  in  the  manner  specified  in 
the  issue,  Held,  to  be  evidence  of  an  experi- 
mental device,  but  not  to  establish  a  reduc- 
tion to  practice  of  the  invention.  Moore  v. 
Hewitt,  C.  D.  1906,  125  O.  G.  2047. 

2535.  The  imperfect  operation  of  the  lamps 
made  by  Moore,  and  the  fact  that  he  did  not 
file  his  application  until  seven  years  after  the 
date  when  he  claims  to  have  made  the  inven- 
tion, during  which  period  he  was  active  in  de- 
veloping other  inventions,  lead  to  the  conclu- 
sion that  his  operations  amounted  to  nothing 
more  than  abandoned  experiments  and  that 
he  is  entitled  to  no  date  of  invention  prior 
to  the  filing  of  his  application.     Id. 

2536.  Where  after  an  alleged  successful  test 
a  device  is  thrown  aside  and  apparently  for- 
gotten until  knowledge  is  gained  of  a  rival's 
successful  invention,  notwithstanding  an  ap- 
parent demand  for  such  a  device.  Held,  that 
such  conduct  carries  a  strong  presumption 
that  the  device  was  regarded  only  as  an  un- 
successful experiment.  Gordan  v.  Wentworth, 
C.   D.  1907,  130  O.  G.  2065. 

2537.  A  device  which  was  experimented 
with  and  afterwards  laid  aside  and  partly 
dismantled  and  which  when  produced  in  evi- 
dence did  not  have  all  of  the  original  parts, 
some  of  the  important  parts  being  replace- 
ments, Held,  not  to  constitute  a  reduction  to 
practice,  the  evidence  tending  to  show  the 
identity  of  the  parts  replaced  and  the  original 
parts  not  being  satisfactory.  *Burson  v. 
Vogel,  C.  D.  1907,  131  O.  G.  942. 

2538.  Where  it  is  claimed  that  the  form  of 
device  described  and  illustrated  in  the  appli- 
cation produced  the  most  satisfactory  results, 
and  it  appears  that  a  device  of  this  construc- 
tion was  built  and  tested  and  afterwards  sev- 
eral modifications  of  such  device  were  made 
and   tried  without   success,   and  that  a  prior 


INTERFERENCE,  XXXV,  (d),  2. 


379 


construction  was  finally  reverted  to,  and  that 
a  number  of  devices  of  the  latter  construction 
were  built  for  use  in  preference  to  the  form- 
er, the  presumption  is  warranted,  in  the  ab- 
sence of  testimony  establishing  a  satisfactory 
test,  that  such  device  was  not  successful. 
Marconi  v.  Shoemaker,  C.  D.  1907,  131  O.  G. 
1930. 

2539.  Where  a  device  was  tested  by  the 
assignee  of  the  inventor  for  half  a  day  in 
regular  work,  after  which  no  further  inter- 
est was  taken  in  it,  and  it  was  discarded  until 
after  the  opposing  party  filed  his  application, 
and  another  device  for  doing  the  same  work, 
invented  by  another  party,  who  was  the  em- 
ployee of  the  assignee,  was  made  and  tested, 
and  a  number  of  such  devices  were  built  and 
put  on  the  market,  and  no  application  was  filed 
until  knowledge  was  gained  of  the  invention 
of  the  opposing  party.  Held,  that  such  device 
was  merely  an  abandoned  experiment.  ♦Gor- 
don V.  Wentworth,  C.  D.  1908,  135  O.  G.  1125. 

2540.  A  delay  of  seven  years  by  an  inventor 
after  an  alleged  reduction  to  practice,  during 
which  time  he  was  active  in  developing  a  large 
number  of  other  inventions,  constitutes  con- 
vincing evidence  that  the  alleged  reduction  to 
practice  amounted  only  to  an  abandoned  ex- 
periment. *Moore  v.  Hewitt,  C.  D.  1908,  136 
O.  G.  1535. 

2541.  D.  constructed  a  model  pulley  em- 
bodying the  invention  in  issue  in  1895,  but 
made  no  attempt  to  introduce  the  invention 
into  commercial  use  or  patent  it,  but  passed  it 
over  in  favor  of  another  construction  until 
1904.  Held,  that  this  model  was  nothing  more 
than  an  abandoned  experiment,  which  was  un- 
availing as  against  a  later  conception  by  L. 
*Duff  V.  Latslaw,  C.  D.  1908,  136  O.  G.  658. 

2542.  Where  after  making  a  device  which 
while  capable  of  operation  was  still  in  a  crude 
stage  L-  turned  it  over  to  the  officers  of  his 
company,  who  laid  it  aside  and  later  set  other 
employees  to  work  to  devise  a  similar  im- 
provement, and  it  was  not  until  he  learned  of 
their  work  that  L.  took  any  further  interest 
in  his  invention.  Held,  that  the  device  made 
by  L.  was  a  mere  abandoned  experiment. 
Lawrence  v.  Voight,  C.  D.  1909,  147  O.  G.  235. 

2.  Not  Held  Abandoned  Experiment. 

2543.  The  fact  that  after  Brooks  made  a 
machine  embodying  the  invention  he  made  a 
second  machine  differing  from  the  first  mere- 


ly in  improvements  in  details  cannot  be  taken 
as  showing  that  the  first  machine  was  unsuc- 
cessful and  an  abandoned  experiment.  Brooks 
V.  Smith,  C.  D.  1904,  110  O.  G.  2013. 

2544.  A  delay  of  two  years  and  eight  months 
after  an  alleged  reduction  to  practice  of  the 
invention  raises  a  strong  presumption  that 
what  was  done  amounted  to  a  mere  aban- 
doned experiment ;  but  such  presumption  may 
be  overcome  by  satisfactory  proof  that  the 
machine  was  successfully  operated.  *Smith 
V.   Brooks,  C.   D.  1904,  112   O.  G.  953. 

2545.  Where  the  inventor  and  a  witness 
skilled  in  the  art  testify  that  the  operation  of 
the  machine  was  successful  in  1896,  and  the 
machine  in  its  present  condition,  although 
partly  dismantled  by  the  removal  of  parts, 
supports  their  allegations  as  to  it,  Held,  that 
it  must  be  regarded  as  a  reduction  to  prac- 
tice.    *Id. 

2546.  The  comparative  crudeness  of  an 
original  construction  as  contrasted  with  sub- 
sequent machines  is  no  ground  for  the  re- 
fusal of  the  merit  of  operative  success.  Few 
great  inventions  have  been  perfect  in  the  first 
instance.     *Id. 

2547.  Where  the  testimony  clearly  estab- 
lishes that  a  machine  was  made  and  operated 
successfully  and  then  photographed,  Held, 
that  the  fact  that  it  was  afterward  dismantled 
to  enable  its  parts  to  be  used  in  an  improved 
machine  does  not  warrant  the  conclusion  that 
it  was  merely  an  abandoned  experiment,  par- 
ticularly when  the  evidence  is  clear  that  it 
was  not.  Funk  &  Nickle  v.  Whitely,  C.  D. 
1905,  114  O.  G.  471. 

2548.  Where  the  evidence  satisfactorily 
shows  that  Hallwood  constructed  a  machine 
embodying  the  invention  in  issue  and  suc- 
cessfully operated  it  more  than  five  years 
prior  to  the  filing  of  his  application  and  that 
several  machines  were  afterward  constructed 
and  sent  to  various  parts  of  the  United  tSates, 
Held,  that  these  acts  should  not  be  considered 
merely  as  evidence  of  an  abandoned  experi- 
ment, but  as  evidence  of  a  reduction  to  prac- 
tice, although  other  machines  were  built  em- 
bodying an  older  form  of  device  for  perform- 
ing the  same  function,  where  it  appears  that 
the  old  devices  satisfactorily  performed  the 
desired  function  in  ordinary  use  and  that  they 
were  so  made  in  order  to  dispose  of  old  ma- 
terials then  on  hand.  *McCormick  v.  Hall- 
wood,  C.  D.  1907,  130  O.  G.  1487. 


380 


INTERFERENCE,  XXXV,   (e),  (f),  1. 


(e)  Model. 

2549.  A  small  experimental  model  of  a  size 
not  calculated  to  be  of  any  practical  value, 
never  intended  to  be  more  than  an  illustra- 
tion, put  away  after  it  was  made  and  of  which 
no  use  was  attempted  to  be  made  until  after 
the  declaration  of  interference  does  not  con- 
stitute a  reduction  to  practice.  *Hunter  v. 
Stikeman,  C.  D.  1898,  85  O.  G.  610. 

2550.  Complete  invention  must  amount  to 
demonstration.  It  must  be  shown  to  have 
passed  the  region  of  experiment — of  possible 
or  probable  failure — and  to  have  arrived  at 
certainty  by  being  embodied  in  the  form  in- 
tended, capable  of  producing  the  desired  re- 
sult. A  model  alone,  no  matter  how  com- 
plete in  detail  of  construction,  does  not  come 
within  the  operation  of  such  a  rule.  (Step- 
henson V.  Goodell,  C.  D.  1876,  133,  9  O.  G. 
1195,  cited.)     *Id. 

2551.  Held,  that  a  mere  model,  though  com- 
plete in  detail  and  illustrative  of  an  operative 
construction,  has  the  effect  of  establishing 
only  a  conception  of  the  invention  and  is  not 
a  reduction  to  practice.  Ocumpaugh  v.  Nor- 
ton, C.  D.  1904,  110  O.  G.  1723. 

2552.  Where  the  allegation  of  the  con- 
struction of  a  model  is  followed  by  a  separate 
allegation  of  reduction  to  practice  in  a  full- 
sized  device  upon  a  later  date,  the  idea  of 
intention  to  claim  for  the  first  construction 
anything  more  than  conception  is  precluded. 
The  opposing  party  may  have  rested  his  case 
on  later  dates  in  view  of  such  statement,  and 
to  admit  proof  of  an  earlier  date  of  reduction 
than  that  given  would  seriously  impair,  if 
not  destroy,  the  rule  of  certainty  in  pleading 
long  maintained  in  the  patent  office.  (Cross 
V.  Phillips,  C.  D.  1899,  342,  87  O.  G.  1399,  14 
App.  D.  C.  228,  236.)  *Hammond  v.  Basch, 
C.  D.  1905,  115  O.  G.  804. 

2553.  There  is  no  doubt  that  the  construc- 
tion of  a  full-size  device  capable  of  use  to  a 
sufficient  extent  to  demonstrate  the  practical 
utility  of  the  invention  may  often  be  regard- 
ed as  a  reduction  to  practice,  notwithstanding 
it  may  have  been  called  a  model,  as  well  as 
intended  by  the  inventor  to  be  used  as  a  model 
for  the  construction  of  a  like  device  of  better 
and  different  materials,  when  there  has  been 
some  test  or  application  to  use.  (Norden  v. 
Spaulding,  ante,  588,  114  O.  G.  1828;  Mason  v. 
Hepburn,  C.  D.  1898,  510,  84  O.  G.  147,  13  . 
App.  D.  C.  86,  89.)     *Id. 


2554.  Such  a  model,  so  called,  must  be  quite 
different  from  the  ordinary  model  which, 
while  it  may  show  the  invention,  is  incapable 
of  operation  to  effect  its  purpose,  and  the 
cases  must  be  few,  if  any,  indeed,  in  which 
the  construction  and  disclosure  of  a  device 
intended  as  an  illustrative  model  merely  with- 
out some  test  of  its  capacity  to  perform  the 
service  intended  could  be  accepted  not  only 
as  evidence  of  conception,  but  of  reduction  to 
practice  also.     *Id. 

2555.  Where  a  motor  was  constructed  as 
an  experimental  machine  and  was  not  intend- 
ed to  be  used  in  filling  an  order,  but  was  more 
than  a  mere  model  intended  to  illustrate  the 
invention.  Held,  that  if  it  completely  embodied 
the  invention  and  was  capable  of  testing  its 
efficiency  to  the  full  extent  of  its  power  the 
mere  fact,  that  later  manufactures  to  fill  or- 
ders may  have  been  on  a  larger  scale  cannot 
impair  its  effect  as  constituting  reduction  to 
practice.  *Robinson  v.  Thresher,  C.  D.  1906, 
123  O.  G.  2976. 

(f)    Tests. 

1.  In  General. 

2556.  Where  twelve  complete  scales  em- 
bodying every  feature  of  the  interference 
issue  were  made  and  shipped  to  customers 
for  test  in  practical  use  and  they  were  all 
returned  as  unsatisfactory.  Held,  not  a  re- 
duction to  practice  of  the  invention.  Swi- 
hart  V.  Mauldin,  C.  D.  1902,  99  O.  G.  665. 

2557.  The  mere  construction  of  a  device 
embodying  the  elements  of  the  issue  cannot 
be  accepted  as  a  reduction  to  practice  unless 
that  device  proves  so  satisfactory  in  use  as 
to  demonstrate  the  practicability  of  the  in- 
vention.    Id. 

2558.  Where  a  gun  embodying  the  extractor 
mechanism  in  controversy  was  made  by  D. 
and  successfully  subjected  to  a  preliminary 
test  with  less  than  the  service  charge  of  pow- 
der to  see  if  there  was  sufficient  probability 
of  its  success  in  actual  use  to  justify  sending 
it  to  Sandy  Hook  for  complete  tests,  Held, 
not  proof  of  reduction  to  practice.  Dashiell 
V.  Tasker,  C.  D.  1903,  103  O.  G.  1551. 

2559.  Where  upon  complete  tests  after  a 
successful  preliminary  test  the  gun  embodying 
the  invention  was  found  to  be  defective  in 
many  particulars  and  in  the  reports  of  the 
test  no  mention  is  made  of  the  particular 
feature  of  the  gun  in  controversy.  Held,  not 
proof  of  the  success  of  that  feature.     Id. 


INTERFERENCE,  XXV,  (f),  1. 


381 


2560.  Where  a  gun  embodying  the  inven- 
tion in  controversy  was  made  and  tested  by 
a  board  of  ordnance  officers  with  a  view  to 
its  adoption  by  the  government  as  a  type,  and 
it  was  not  thereafter  adopted  and  no  more 
Hke  it  were  built  and  it  appears  that  it  was 
not  as  a  whole  successful,  Held,  that  it  cannot 
be  assumed  that  it  was  successful  in  any  par- 
ticular in  the  absence  of  proof  of  the  fact. 
Id. 

2561.  Where  the  invention  consisted  in 
ejecting  mechanism  to  be  used  in  a  match- 
machine  and  it  appears  that  D.  made  such 
mechanism  and  applied  it  to  a  full-sized 
match-machine  and  satisfactorily  tested  it  in 
ejecting  dummy  matches,  Held,  a  reduction 
to  practice,  although  the  device  was  never 
put  into  use  with  real  matches.  Donnelly  v. 
Wyman,  C.  D.  1903,  103  O.  G.  637. 

2562.  Where  the  invention  relates  only  to 
the  ejecting  mechanism  of  a  match-machine. 
Held,  that  a  shop  test  with  dummy  matches 
made  under  all  of  the  other  conditions  of  ac- 
tual use,  and  which  demonstrated  that  the 
mechanism  would  successfully  eject  the 
splints,  must  be  considered  a  reduction  to 
practice.     Id. 

2563.  Where  one  full-sized  machine  is  made 
and  successfully  tested  and  thereafter  a  sec- 
ond machine  of  a  different  and  improved  con- 
struction is  made  for  the  same  purpose,  Held, 
not  proof  that  the  first  machine  was  unsat- 
isfactory.    Id. 

2564.  Where  the  invention  is  not  a  simple 
one,  the  mere  fact  of  the  construction  of  a 
machine  is  not  sufficient  to  establish  the  fact 
that  the  machine  as  constructed  was  capable 
of  successfully  performing  the  work  for 
which  it  was  designed.  If  it  is  not  shown  by 
the  testimony  that  the  machine  was  capable 
of  performing  the  work  for  which  it  was  de- 
signed, even  to  a  small  degree  of  efficiency, 
the  machine  docs  not  constitute  in  law  a  re- 
duction to  practice.  Macdonald  v.  Edison,  10") 
O.  G.  97.3. 

2565.  Where  it  is  incumbent  upon  the  ju- 
nior party  to  establish  the  fact  beyond  a  rea- 
sonable doubt  that  the  machine  which  he  had 
placed  in  evidence  and  on  which  he  relies  as 
his  reduction  to  practice  was  actually  capable 
of  successfully  performing  the  work  for 
which  it  was  built.  Held,  that  the  mere  state- 
ment that  the  machine  was  used  for  several 
months  succeeding  its  completion,  without  es- 
tablishing  by    competent    evidence    the   result 


of  that  use,  is  not  sufficient  to  establish  the 
fact  that  the  machine  was  successful  in  its 
operation.  From  the  testimony  it  is  left  whol- 
ly to  conjecture  as  to  the  success  or  non- 
success  of  the  test.     Id. 

2566.  Where  the  invention  is  a  mere  at- 
tachment to  automatically  turn  out  the  light 
in  a  printing-machine  and  is  of  such  a  sim- 
ple nature  that  a  test  is  scarcely  necessary  to 
prove  its  success  and  where  several  witnesses 
testify  that  it  was  successfully  used,  Held 
proof  of  reduction  to  practice.  Herman  v. 
Pullman,  C.  D.  1903,  107  O.  G.  1094. 

2567.  Where  it  appears  that  Thomas  con- 
structed a  hay-loader  and  the  testimony  is 
ample  and  satisfactory  to  show  that  the  device 
was  successfully  tested  and  operated  during 
three  successive  hay-making  seasons,  Held, 
that  the  device  is  a  reduction  to  practice  not- 
withstanding the  fact  that  another  device  was 
subsequently  constructed  embodying  an  im- 
provement not  necessarily  connected  at  all 
with  the  invention  of  the  issue,  even  though 
it  be  admitted  that  the  second  device  was  a 
better  one  than  the  first.  *Trisscll  v.  Thom- 
as, 109  O.  G.  809. 

2568.  From  the  length  of  time  taken  for  the 
tests  of  a  hay-loader — three  successive  years 
in  the  hay-making  seasons  of  the  year — no 
inference  can  be  deduced  unfavorable  to  the 
inventor.  On  the  contrary,  considering  the 
nature  of  the  device  and  the  purpose  for 
which  it  was  intended  and  that  the  best  pos- 
sible test  was  that  which  could  be  made  in 
the  outward  operation  of  the  machine  in  the 
field  in  the  work  for  which  it  was  intended, 
his  care  and  diligence  are  rather  to  be  com- 
mended, in  view  of  the  fact  that  there  were 
no  rivals  in  the  field  so  far  as  he  knew  and 
there  being  no  testimony  to  show  fraud,  sup- 
pression, concealment,  or  improper  action  of 
any  kind.     *Id. 

2569.  Where  the  evidence  shows  beyond 
question  that  Pullman  made  a  full-sized  blue- 
print machine  embodying  the  invention  in 
March,  1901,  and  the  witnesses  testify  that  it 
was  operated  to  see  how  it  would  work  and 
that  blue-prints  were  actually  made  by  it  and 
distributed  during  April,  Held,  that  the  ma- 
chine must  be  regarded  as  a  reduction  to  prac- 
tice. *Herman  v.  Pullman.  C.  D.  1904,  109 
O.  G.  2S8. 

2570.  Where  it  appears  that  D.  constructed 
a  full-sized  underrcamer  and  loaned  it  to  a 
practical  oil-well  driller  of  eighteen  years'  ex- 
perience to  test  with,  the  idea  that  if  success- 


383 


INTERFERENCE,  XXXV,  (f),  1. 


fui  orders  would  be  given  for  similar  ones, 
and  in  testing  it  the  underreamer  was  used 
for  two  weeks  satisfactorily,  underreaming  a 
well  for  a  distance  of  222  feet  to  the  point 
where  tools  of  its  size  ceased  to  be  used,  and 
where  it  further  appears  that,  relying  upon 
this  test,  orders  were  given  for  a  similar  tool 
even  after  it  was  discovered  that  one  of  the 
parts  of  the  underreamer  had  cracked.  Held, 
that  the  device  is  a  reduction  to  practice. 
Double  V.  Mills,  C.  D.  1904,  112  O.  G.  1747. 

2571.  The  fact  that  this  order  was  filled 
by  an  improved  tool  cheaper  to  manufacture, 
while  the  original  underreamer  was  rented 
to  an  inexperienced  oil-driller,  who  broke  it 
after  using  it  four  days,  during  which  he  had 
underreamed  a  well  some  forty  to  seventy- 
five  feet.  Held,  not  sufficient  to  warrant  hold- 
ing the  device  inoperative  in  the  light  of  the 
testimony  of  experienced  oil-well  drillers  that 
other  forms  of  tools  were  "being  torn  to 
pieces  all  the  time."     Id. 

2572.  Where  it  is  shown  by  the  record  that 
a  device  was  made  for  the  purpose  of  illus- 
tration and  experimental  test  and  that  the 
test  to  which  the  device  was  subjected  was  not 
under  conditions  of  actual  use,  yet  when  given 
the  test  which  was  deemed  necessary  the  de- 
vice failed  to  meet  the  requirements  of  the 
tests  and  was  crushed  into  fragments,  Held, 
that  such  device  is  not  an  actual  reduction  to 
practice,  but  a  mere  illustrative  model  made 
for  experimental  purposes  only.  Gallagher  v. 
Hien,  C.  D.  190.5,  114  O.  G.  974. 

2573.  Where  the  claim  to  reduction  to  prac- 
tice is  founded  on  a  type-writing  machine 
having  six  type  bars  embodying  the  issue  and 
the  inventor  testifies  that  he  manipulated  these 
bars,  and  thereby  satisfied  himself  of  the 
practical  mechanism  of  the  invention,  but  no 
paper  was  used  and  his  satisfaction  was  de- 
rived from  the  operation  of  the  bars  singly, 
Held,  that  this  is  not  sufficient  to  show  actual 
reduction  to  practice.  *Paul  v.  Hess,  C.  D. 
1905,  115  O.  G.  251. 

2574.  Where  new  devices  are  of  an  old 
type  and  the  novelty  resides  in  specific  con- 
struction, it  may  be  that  practical  utility  may 
be  determined  without  use  under  conditions 
of  industry;  but  where  the  device  is  of  a  new 
type  there  is  no  need  for  demonstration  of 
utility  under  the  conditions  of  practical  oper- 
ation.   *Id. 

2575.  Where  the  invention  is  a  knuckle  for 
car-couplers  and  it  appears  that  a  knuckle 
made  of  brass  was  given  a  short  test  on  an 


improvised  train  of  cars  in  the  freight  yards, 
and  that  during  this  test  the  parts  of  the 
knuckle  were  broken  and  it  was  found  as  a 
result  of  the  test  that  the  material  of  which 
the  device  was  made  and  the  shape  of  the 
same  should  be  changed,  Held,  that  the  evi- 
dence adduced  does  not  establish  the  fact  that 
the  device  was  a  reduction  to  practice  of  the 
invention  in  issue.  Gilman  and  Brown  v.  Hin- 
son,  C.  D.  1905,  118  O.  G.  1933. 

2576.  Where  the  invention  in  controversy  is 
a  friction-spring  and  it  appears  that  a  device 
embodying  the  invention  was  first  put  in  a 
vise  subjected  to  pressure,  but  there  are  no 
facts  appearing  of  record  which  show  what 
the  pressure  was,  nor  are  any  facts  stated 
which  enable  the  court  to  determine  whether 
the  inventor's  conclusion  is  justified  that  the 
result  of  the  test  was  satisfactory.  Held,  that 
the  fact  of  reduction  to  practice  is  not  proved. 
♦Gallagher,  Jr.  v.  Hien,  C.  D.  1905,  115  O.  G. 
1330. 

2577.  Where  a  friction-spring  was  tested 
in  a  vise  and  under  a  steam-hammer  and 
broken  under  the  last  test  and  no  measure- 
ments were  taken  to  show  the  tensile  strength 
of  the  spring  or  the  pressure  to  which  they 
were  subjected  and  no  facts  appear  of  record 
upon  which  the  court  can  have  a  conclusion 
that  the  device  was  adapted  to  perform  the 
work  for  which  it  was  built,  Held,  that  the  de- 
vice was  a  mere  experimental  device  and  not 
a  reduction  to  practice.     *Id. 

2578.  Where  a  device  is  shown  to  have  been 
constructed  and  such  device  requires  a  test 
in  order  to  demonstrate  its  practicability  and 
witnesses  merely  testify  that  in  their  opinion 
the  device  was  operative,  but  no  facts  appear 
of  record  which  enable  the  court  to  determine 
for  itself  whether  those  witnesses  were  justi- 
fied in  their  conclusion  that  the  result  of  the 
tests  was  satisfactory,  Held,  that  the  fact  of 
reduction  to  practice  is  not  established.  See- 
berger  v.  Russel,  C.  D.  1905,  117  O.  G.  2086. 

2579.  Held,  that  the  actions  of  the  inventor 
with  regard  to  an  invention  at  the  time  out- 
weigh mere  oral  testimony  as  to  the  opinion 
of  witnesses.     Id. 

2580.  Where  a  machine  was  constructed  and 
tested  for  a  short  time,  but  subsequently  dis- 
mantled and  parts  of  the  same  lost,  and  the 
machine  was  never  again  used,  nor  were  sim- 
ilar machines  made  for  several  years.  Held, 
that  these  acts  raise  a  presumption  that  the 
device  was  not  deemed  satisfactory  when  used. 
Id. 


INTERFERENCE,  XXXV,  (f),  1. 


383 


2581.  Where  it  is  the  practice  of  the  parties 
interested  to  take  photographs  of  a  device 
under  construction  to  show  the  progress  of 
the  work,  and  photographs  are  introduced  in 
evidence  which  were  taken  of  the  machine 
for  that  purpose  during  its  construction,  and 
in  no  one  of  the  photographs  is  the  invention 
of  the  issue  shown,  and  where  also  it  is  shown 
that  many  machines  of  the  kind  were  built, 
sold,  and  operated,  but  in  no  one  of  them  was 
the  invention  of  the  issue.  Held,  that  these 
facts  overcome  tlie  mere  oral  testimony  that 
the  machine  which  was  tested  for  a  short  time, 
but  afterward  dismantled  was  satisfactory  in 
its  operation.     Id. 

2582.  Where  e.xperiments  claimed  to  be 
such  operation  of  the  invention  as  to  show  re- 
duction to  practice  were  much  more  than  mere 
laboratory  tests,  but  it  does  not  appear  that 
the  invention  was  practically  carried  on  there- 
in or  that  possibility  of  practical  operation 
was  satisfactorily  demonstrated.  Held,  that 
the  experiments  could  not  be  accepted  as 
showing  reduction  to  practice.  Pohle  v.  Mc- 
Knight,  C.  D.  1905,  119  O.  G.  2519. 

2583.  Where  tests  relied  upon  as  reduction 
to  practice  are  admitted  not  to  be  very  satis- 
factory, and  the  plant  was  soon  dismantled 
and  never  re-erected,  and  friends  refused  to 
assist  in  view  of  these  tests,  and  no  applica- 
tion for  patent  was  made  in  view  thereof, 
though  a  caveat  had  been  filed,  and  no  further 
attempts  to  operate  the  invention  were  made 
for  several  years,  when  further  experiments 
were  undertaken,  Held,  that  the  so-called  re- 
duction to  practice  must  be  considered  as 
merely  an  abandoned  experiment.     Id. 

2584.  Where  the  invention  is  the  knuckle 
of  a  car-coupler  and  the  evidence  relied  upon 
to  establish  reduction  to  practice  showed  the 
making  of  a  knuckle  consisting  of  a  crude 
brass  casting,  which  was  broken  when  tested, 
and  a  knuckle  consisting  of  a  gray-iron  cast- 
ing, which  was  never  actually  tested,  Held, 
that  the  knuckles  were  made  of  metals  not 
suitable  for  practical  use,  but  were  models, 
and  that  they  did  not  prove  a  satisfactory  re- 
duction to  practice.  *Gilman  and  Brown  v. 
Hinson,  C.  D.  1906,  122  O.  G.  731. 

2585.  Where  the  device  was  tested  and 
broken  during  the  test  and  the  parts  were 
destroyed  or  lost  and  nothing  more  was  done 
on  the  invention  until  more  than  five  years 
later,  when  an  application  was  filed,  but  in 
the  meantime  an  earlier  device  for  the  same 
purpose,    patented    by    the    same    party,    was 


placed  on  the  market  in  large  quantities,  and 
it  appears  that  an  application  for  the  later 
device  was  only  filed  after  learning  that  his 
opponent  was  selling  a  similar  device,  Held, 
that  the  conduct  of  the  party  indicates  that 
the  device  was  unsatisfactory  and  that  what 
was  done  amounted  to  nothing  more  than  an 
abandoned  experiment.    *Id. 

2586.  Where  a  model  was  constructed  that 
clearly  disclosed  the  invention  and  would  en- 
able those  skilled  in  the  art  to  thoroughly 
understand  it,  in  brief  sufficient  to  enable  the 
utilization  of  the  invention  so  that  had  death 
removed  the  inventor  before  an  application 
for  patent  had  been  filed  the  invention  would 
have  survived.  Held  that  in  the  absence  of  any 
test  it  does  not  constitute  an  actual  reduction 
to  practice  unless  the  invention  belongs  to  that 
class  of  simple  inventions  which  require  no 
other  proof  of  their  practicability  than  the 
construction  of  a  model.  *0'Connell  v. 
Schmidt,  C.  D.  1906,  122  O.  G.  2065. 

2587.  Where  a  device  was  never  used  for 
its  intended  purpose  of  lighting  a  car,  but  for 
the  purpose  of  experiment  was  tested  in  the 
basement  of  a  building  and  after  the  test  was 
laid  aside  and  another  system  of  lighting  put 
into  use.  Held,  that  such  conduct  naturally 
tends  to  discredit  the  allegation  that  the  test 
of  the  invention  was  a  success.  Bliss  v.  Mc- 
Elroy,  C.  D.  1906,  122  O.  G.  2687. 

2588.  Where  a  device  was  tested  and  laid 
aside  and  an  attempt  to  rebut  the  presumption 
that  the  test  was  unsuccessful  is  made  by 
showing  that  the  party  was  dependent  upon 
his  father,  and  it  was  necessary  to  devote  his 
attention  to  inventions  which  would  make  bet- 
ter financial  returns,  and  it  appears  that  other 
applications  were  filed,  and  no  effort  was  made 
to  secure  the  adoption  and  use  practically  of 
the  present  invention,  Held,  that  the  show- 
ing is  insufficient.     Id. 

2589.  Where  the  award  of  priority  depends 
upon  the  sufficiency  of  the  proofs  of  success- 
ful reduction  to  practice  by  one  of  the  par- 
ties. Held,  that  the  witnesses  who  testify  to 
the  success  of  tests  and  operations  of  ma- 
chines should  give  clear,  full,  and  specific 
statements  as  to  all  essential  facts  and  that 
in  a  case  of  this  kind  it  is  not  sufficient  for 
the  witnesses  to  state  that  a  machine  was  tested 
and  found  satisfactory.  The  opinions  of  wit- 
nesses that  a  machine  contained  the  issue  and 
their  conclusions  from  observation  that  its 
operation  was  successful  are  entitled  to  some 
weight ;   but   wherever   possible   the   observed 


384 


INTERFERENCE,  XXXV,  (f),  1. 


facts  should  be  fully  stated,  so  that  the  tribu- 
nal trying  the  case  may  judge  the  reasonable- 
ness of  the  opinions  and  conclusions  stated. 
Robinson  v.  Thresher,  C.  D.  1906,  123  O.  G. 
2627. 

2590.  Where  changes  were  made  during  the 
tests  in  the  principal  elements  of  the  inven- 
tion and  explanations  arc  furnished  in  the 
testimony  why  some  of  the  various  changes 
were  made,  Held,  that  these  explanations,  if 
full  and  satisfactory,  would  not  take  the  place 
of  the  complete  and  detailed  description  of 
the  tests  of  the  invention,  which  information 
is  shown  to  be  necessary,  both  by  the  fact 
that  the  changes  were  made  and  by  the  nature 
of  the  changes,  to  an  intelligent  estimation  of 
the  alleged  success  of  the  early  operation  of 
the  invention.     Id. 

2591.  Where  it  is  contended  that  the  possi- 
bility of  successful  operation  of  the  invention 
in  issue  is  so  obvious  that  demonstration  by 
successful  operation  of  a  machine  embodying 
the  same  is  not  essential  to  reduction  to  prac- 
tice, Held,  that  practical  demonstration  by 
successful  operation  should  be  dispensed  with 
only  in  those  cases  where  the  inventions  are 
extremely  simple.  Seemingly  perfect  theor- 
etical demonstrations  are  not  infrequently 
shown  to  be  worthless  when  tested  by  actual 
conditions,  and  it  is  probably  for  that  reason 
that  the  law,  save  for  a  few  exceptional  cases, 
regards  successful  operation  of  the  invention 
an  essential  point  of  actual  reduction  to  prac- 
tice.    Id. 

2592.  Where  the  tirst  test  was  made  with 
an  incomplete  machine  and  several  essential 
parts  of  the  invention  were  lacking.  Held, 
not  to  show  successful  reduction  to  practice 
of  the  invention.    *Id. 

2593.  Where  this  court  is  not  without  doubt 
as  to  the  proper  conclusion  to  be  drawn  from 
a  second  test,  Held,  that  under  the  burden  of 
proof  that  doubt  must  be  resolved  in  favor 
of  the  holder  of  the  patent,  and  aside  from 
this  the  decision  of  the  commissioner  ought 
to  stand  when  there  is  doubt  whether  it  is 
founded  in  error.    *Id. 

2594.  Where  engineers,  draftsmen,  and 
keepers  of  records  and  files  were  called  to 
certify,  and  yet  the  engineer  who  personally 
made  the  test  which  is  the  crucial  point  of 
the  case,  and  subsequently  made  the  entries 
in  the  report,  was  neither  called  nor  his  ab- 
sence accounted  for,  and  it  was  this  report 
which  the  supervising  engineer  made  his  in- 
dorsement upon  and  referred  to  as  the  basis 


of  his  evidence.  Held,  that  this  indorsement 
of  the  supervising  engineer  that  the  machine 
operated  successfully  is  not  a  satisfactory 
substitute  for  specific  information  as  to  the 
details  of  the  test  upon  which  his  general  con- 
clusion was  based.    *Id. 

2595.  Where  the  evidence  shows  that  a 
segment  of  a  turbine-wheel  was  constructed 
as  an  experimental  device  and  was  subjected 
to  certain  tests  to  determine  the  strength  of 
riveting,  but  there  is  no  evidence  as  to  the 
nature  of  these  tests  or  the  strain  to  which  the 
riveting  was  subjected.  Held,  insufficient  to 
enable  a  determination  to  be  made  whether 
the  testimony  that  the  result  of  the  test  was 
satisfactory  is  justified,  and  that  even  if  the 
test  demonstrated  the  sufficiency  of  the  riveting 
it  did  not  demonstrate  the  practicability  of 
the  invention.  Emmett  v.  Fullagar,  C.  D.  1906, 
124  O.  G.  2178. 

2596.  Where  the  device  in  issue  is  said  to 
belong  to  that  class  of  simple  devices  the 
mere  production  of  which  without  test  is  re- 
garded as  an  actual  reduction  to  practice,  but 
the  device  originally  made  was  not  produced 
in  evidence,  and  the  testimony  tending  to  es- 
tablish the  identity  of  a  later  device,  which 
was  introduced  in  evidence,  with  the  original 
device  is  so  general  as  to  leave  it  uncertain 
whether  this  later  device  is  of  the  same 
strength,  size,  shape,  and  proportion  as  the 
original,  Held,  that  actual  reduction  to  prac- 
tice is  not  proved.  Richards  v.  Burkholder, 
C.    D.   1907,   128   O.   G.   2529. 

2597.  Where  it  appears  that  L.  and  W.  con- 
structed a  machine  embodying  the  tin-plate 
catcher  set  forth  in  the  issue  and  secretly 
tested  the  same  August  23,  1902,  but  it  is 
not  clear  that  freshly-tinned  plates  were  used 
in  the  test,  and  the  machine  was  at  once  dis- 
mantled, and  that  subsequently,  in  October, 
1903,  another  machine  was  constructed  which 
is  said  to  have  been  operated  until  November 
18,  1903,  but  was  not  again  used  until  Sep- 
tember, 1904,  after  L.  and  W.  heard  of  C.'s 
patent,  and  no  sheets  which  were  run  through 
this  catcher  are  produced,  and  where  another 
machine,  which  was  made  in  February,  1905, 
in  conformity  with  the  first  machine  and  test- 
ed in  the  presence  of  witnesses  called  in  this 
case,  required  frequent  adjustments  of  the 
catcher-disks  to  prevent  the  sheets  from  slip- 
ping and  yet  to  place  them  far  enough  apart 
to  avoid  denting  the  sheets,  Held,  that  the  ex- 
perimental stage  of  the  invention  had  not  been 
passed  and   that  such   tests  did  not  establish 


INTERFERENCE,  XXXV,  (f),  2. 


385 


reduction  to  practice  of  tlie  invention.  *Lewis 
and  Williams  v.  Cronemeyer,  C.  D.  1907,  130 
O.  G.  300. 

2598.  The  mere  general  statements  of  wit- 
nesses that  a  device  operated  successfully,  un- 
supported by  the  production  of  the  articles 
upon  which  the  machine  operated  at  the  time 
must  be  regarded  as  meager  evidence  of  a 
successful  test.  Gordon  v.  Wentworth,  C.  D. 
1907,  130  O.  G.  206.5. 

2599.  If  a  machine  may  be  successfully 
operated  at  the  time  testimony  is  taken,  this 
fact,  taken  in  connection  with  statements  of 
witnesses  that  it  operated  successfully  when 
first  constructed,  may  be  considered  sufficient 
evidence  of  a  successful  test  where  it  appears 
that  the  device  has  not  been  changed  in  the 
meantime.    Id. 

2600.  In  view  of  the  failure  of  the  inventor 
to  testify  as  to  the  character  or  results  of 
tests  of  a  magneto-receiver  for  wireless  tel- 
egraphy and  the  testimony  of  a  witness  who 
assisted  in  the  tests  that  the  signals  were  faint, 
the  unsupported  statement  of  an  electrical  en- 
gineer who  tested  the  device  that  his  operator 
received  intelligible  messages  is  not  sufficient 
to  establish  the  operativeness  of  the  device, 
especially  where  it  does  not  appear  with  what 
certainty  or  rapidity  the  signals  or  messages 
were  received.  Marconi  v.  Shoemaker,  C.  D. 
1907,   131  O.  G.  1939. 

2G01.  A  test  by  a  party  during  the  taking  of 
rebuttal  testimony  out  of  the  presence  of  the 
opposing  party  or  his  agent  is  entitled  to  no 
consideration  as  proof  of  the  operativeness  of 
the  device  several  years  previous  under  dif- 
ferent conditions.     Id. 

2602.  The  statement  of  witnesses  who  were 
thoroughly  familiar  with  construction  of  a 
device  that  it  operated  successfully.  Held,  suf- 
ficient to  establish  a  successful  test  where  the 
operation  of  the  device  is  easily  understood 
and  the  device  itself  is  in  evidence  and  found 
to  satisfactorily  perform  the  intended  func- 
tions. Ebersole  v.  Durkin.  C.  D.  1908,  132  O. 
G.  842. 

2603.  Where  the  testimony  as  to  the  testing 
of  a  device  was  given  by  witnesses  skilled  in 
the  art  and  is  clear  and  convincing,  the  fact 
that  no  record  was  kept  of  such  tests  does 
not  discredit  this  testimony.  *Horton  v.  Zim- 
mer,  C.  D.  1908,  137  O.  G.  2223. 

2604.  In  order  that  a  device  may  constitute 
a  reduction  to  practice,  it  is  necessary  in 
every  case,  except  that  of  a  very  simple  de- 

25 


vice,  that  it  be  tested.     *Pool  v.  Dunn,  C.  D. 
1910,  1.51  O.  G.  4.50. 

2605.  It  is  not  necessary  in  order  to  es- 
tablish reduction  to  practice  that  the  test  of 
the  device  relied  upon  should  be  one  of  com- 
plete accuracy.  It  is  seldom  that  an  inventor 
reaches  perfection  in  the  first  device  con- 
structed. The  test  should  be  to  ascertain 
whether  the  device  reasonably  meets  the  re- 
quirements of  the  specifications,  and  if  it 
does  not  measure  up  to  this  test  can  it  be 
made  to  meet  it  by  the  introduction  of  mere 
mechanical  changes?  If  it  can  it  should  be  re- 
garded as  a  reduction  to  practice.  *PooI  v. 
Dunn,  C.  D.  1910,  151  O.  G.  4.50. 

2606.  T.  offered  at  the  hearing  to  have  a 
certain  exhibit  which  had  been  offered  in  evi- 
dence tested,  in  order  to  show  that  it  was 
then  in  an  operative  condition.  Held,  that  the 
result  of  such  test  would  be  immaterial,  since 
the  question  of  reduction  to  practice  is  one 
which  must  be  decided  on  the  record  as  pre- 
sented. Taylor  v.  Gilman,  C.  D.  1910,  158  O. 
G.  883. 

2607.  Testimony  that  a  gun  embodying  the 
invention  was  built  under  D.'s  directions,  was 
shipped  to  the  government  proving-grounds, 
and  tested,  and  that  after  the  test  it  was 
adopted  by  the  government  and  other  guns 
were  made  exactly  like  it  for  the  government, 
Held,  sufficient  to  establish  reduction  to  prac- 
tice by  D.  Duggs  V.  Schneider,  C.  D.  1911, 
162  O.  G.  269. 

2.  Necessary. 

2608.  Where  it  is  a  conceded  fact  that  the 
original  machine  on  which  M.'s  claim  of  pri- 
ority is  founded  was  constructed  prior  to  the 
filing  of  E.'s  application,  which  resulted  in  a 
patent,  and  E.  took  no  testimony,  Held,  that 
inasmuch  as  the  invention  is  not  a  simple  one 
in  order  for  M.  to  succeed  it  was  necessary 
for  him  to  prove  that  his  machine  as  con- 
structed was  actually  capable  of  successfully 
performing  the  work  for  which  it  was  intend- 
ed. *Macdonald  v.  Edison,  C.  D.  1903,  105 
O.  G.  1263. 

2609.  Where  the  changes  in  the  roller-bear- 
ing in  controversy  over  those  previously  in 
use  are  slight,  Held,  nevertheless,  that  the 
device  is  not  of  such  a  simple  character  that 
its  success  will  be  obvious  without  a  test  in 
actual  use.  Winter  v.  Slick  v.  Volkonmer,  107 
O.  G.  1659. 


386 


INTERFERENCE,  XXXV,  (f),  2. 


2610.  Where  government  officers  subjected 
a  gun  embodying  the  invention  to  a  prelim- 
inary test  not  under  the  conditions  of  actual 
service  and  found  the  result  sufficiently  satis- 
factory to  warrant  sending  the  gun  to  the 
proving-grounds  for  a  complete  test,  Held, 
not  a  reduction  to  practice,  but  a  mere  experi- 
ment. *Dashiell  v.  Tasker,  C.  D.  1903,  103  O. 
G.  2174. 

2611.  Where  a  gun  embodying  the  extractor 
mechanism  in  controversy  was  tested  by  gov- 
ernment officers  at  the  proving-ground  and  a 
memorandum  was  made  of  defects  in  the  fir- 
ing mechanism  and  other  parts  of  the  breech 
mechanism,  but  nothing  was  said  of  the  ex- 
tractor, Held,  that  the  silence  as  to  the  ex- 
tractor is  not  proof  that  it  was  satisfactory. 
*Id. 

2612.  Where  a  gun  embodying  the  invention 
was  tested  by  the  government  with  a  view  to 
its  adoption  as  a  type  and  after  repeated  tests 
disclosing  many  defects  in  the  gun  as  a  whole 
no  more  guns  like  it  were  made  and  there  was 
no  recommendation  by  the  officers  that  it  be 
adopted,  Held,  that  it  cannot  be  regarded  as 
a  reduction  to  practice  of  the  invention.     *Id. 

2613.  A  breech  mechanism  for  a  rapid-firing 
gun  belongs  to  that  class  of  devices  in  which 
it  must  be  shown  that  all  of  the  parts  were 
functioning  properly  under  rigorous  and  ex- 
act requirements  of  actual  service,  before  the 
mechanism  can  be  said  to  be  adapted  and  per- 
fected for  practical  use.    *Id. 

2614.  Where  machinism  for  ejecting  match- 
splints  from  the  carrier  was  placed  upon  a 
full-sized  match-machine  and  tested  in  the 
shop  in  ejecting  dummy  matches  and  was 
found  to  be  successful.  Held,  to  be  a  reduc- 
tion to  practice.  *Wyman  v.  Donnelly,  C.  D. 
lOO.l,  104  O.  G.  310. 

2615.  Where  D.  was  not  a  match  manufac- 
turer, but  a  manufacturer  of  machines.  Held, 
that  his  failure  to  test  his  device  with  real 
matches  instead  of  dummy  matches  and  his 
failure  to  use  the  machine  commercially  can- 
not be  taken  as  discrediting  his  claim  that  the 
machine  was  successfully  reduced  to  practice. 
*Id. 

2616.  Where  it  was  contended  that  the  ex- 
hibit type-writing  machine  was  so  simple  that 
no  actual  test  thereof  was  required  to  estab- 
lish reduction  to  practice.  Held,  that  though 
the  change  from  prior  devices  is  slight  the  in- 
vention is  in  an  art  where  slight  changes  may 
have  material  effect  upon  the  operation,  and 


a  test  was  therefore  necessary  to  determine 
the  success  of  the  device.  Paul  v.  Hess,  C. 
D.   1904,  113  O.  G.  847. 

2617.  Held,  that  an  improvement  in  type 
bars  of  type-writers,  upon  the  efficacy  of 
which  the  successful  operation  of  the  whole 
machine  depends,  is  not  of  that  simple  char- 
acter which  requires  no  test  on  operation  in 
order  to  establish  reduction  to  practice.  *Paul 
v.  Hess,  C.  D.  1905,  115  O.  G.  251. 

2618.  Where  both  parties  subject  their  in- 
ventions to  tests.  Held,  that  it  is  therefore, 
in  effect,  admitted  by  both  parties  that  the  de- 
vices belongs  to  that  class  of  inventions  which 
requires  actual  use  or  thorough  tests  to  dem- 
onstrate its  practicability.  *Gallagher,  Jr.  v. 
Hien,  C.  D.  1905,  11.5  O.  G.  1330. 

2619.  Where  an  invention  undoubtedly  be- 
longs to  that  class  which  requires  either  actual 
use  or  thorough  tests  to  determine  its  prac- 
ticability. Held,  that  there  can  be  no  actual 
reduction  to  practice  until  one  or  the  other 
thing  takes  place  and  is  proven.     *Id. 

2620.  Where  it  appears  that  an  invention  is 
a  radical  departure  from  previous  methods. 
Held,  that  in  order  to  establish  the  fact  of 
reduction  to  practice  thorough  tests  are  neces- 
sary.    *Id. 

2621.  Where  an  invention  is  of  such  char- 
acter as  to  require  testing  to  demonstrate  its 
practicability  and  the  evidence  does  not  show 
the  result  of  the  test,  whether  satisfactory  or 
otherwise.  Held,  that  the  fact  of  actual  re- 
duction to  practice  is  not  established.  Bauer 
V.  Crone,  C.  D.  1905,  118  O.  G.  1071. 

2622.  Where  a  telephone  transmitter  device 
which  contains  a  disclosure  of  the  invention 
was  constructed  for  the  purpose  of  illustra- 
tion merely,  so  that  a  commercial  instrument 
could  be  built  from  its  design,  and  was  never 
put  in  circuit  and  tested.  Held,  not  to  be  a  re- 
duction to  practice,  but  only  an  evidence  of 
conception.  O'Connell  v.  Schmidt,  C.  D.  1905, 
118  O.  G.  588. 

2623.  Held,  that  a  mechanism  adapted  to 
be  put  in  a  telephone-circuit  is  not  a  simple 
invention,  such  as  needs  no  test,  and  that  an 
actual  operation  of  the  same  in  a  telephone- 
circuit  to  determine  whether  it  is  capable  of 
performing  the  work  for  which  it  is  con- 
structed is  essential  in  order  to  warrant  the 
conclusion  that  the  device  is  a  reduction  to 
practice.     Id. 

2624.  Where  the  invention  is  for  an  elec- 
trical circuit  protector  formed  of  delicate  co- 


INTERFERENCE,  XXXV,  ({),  3. 


387 


operative  parts  and  meant  to  be  used  in  an 
art  where  an  unexpected  change  in  the  cur- 
rent may  cause  vastly  different  effects.  Held, 
that  such  device  needs  a  test  in  order  to  es- 
tablish its  practicability  and  is  not  such  a 
simple  invention  that  the  mere  construction 
of  the  same  is  sufficient  to  warrant  the  hold- 
ing that  the  device  is  a  reduction  to  practice. 
Rolfe  V.  Hoffman,  C.  D.  1905,  118  O.  G.  833. 

2625.  Where  an  invention  needs  a  test  to 
demonstrate  its  practicability  and  the  testi- 
mony is  to  the  effect  that  it  was  operated  to 
some  extent,  but  whether  the  operation  was 
successful  or  not  is  left  entirely  to  conjecture. 
Held,  that  the  fact  of  reduction  to  practice 
is  not  established  beyond  a  reasonable  doubt. 
Id. 

2626.  The  mere  making  of  a  garment-hook 
without  successful  tests  cannot  be  regarded  as 
a  reduction  to  practice  on  the  theory  that  it 
is  so  simple  as  to  require  no  test  when  it  ap- 
pears that  defects  developed  in  the  first  de- 
vice made  and  also  in  the  second  one  made  to 
cure  the  defects  in  the  first.  Lowrie  v.  Tay- 
lor and  Taylor,  C.  D.  190.5,  118  O.  G.  1681. 

2627.  Where  the  object  of  the  invention, 
as  clearly  appears  from  the  applications  and 
testimony  of  the  various  parties  to  the  inter- 
ference, is  to  produce  a  graduated  printing- 
plate  which  will  practically  do  away  with  the 
necessity  for  "make-ready"  on  the  platen  or 
impression-cylinder.  Held,  that  a  partially- 
graduated  plate  which  will  produce  satisfac- 
tory prints  only  when  used  in  connection  with 
"make-ready"  does  not  disclose  the  invention 
and  is  not  a  reduction  to  practice  thereof. 
Wickers  and  Furlong  v.  McKee,  C.  D.  1906, 
124  O.  G.  905. 

2628.  Where  the  invention  consists  of  a 
plate  graduated  in  such  a  manner  as  to  obviate 
the  necessity  for  "make-ready,"  Held,  that  to 
establish  a  reduction  to  practice  requires  that 
the  plate  be  subjected  to  actual  printing  tests 
without  the  use  of  "make-ready,"  since  a  flat 
plate  printed  with  an  overlay  will  produce  the 
same  imprint  as  a  graduated  plate.     Id. 

2629.  Where  the  invention  is  a  cover-strip 
for  the  ends  of  the  blades  of  a  turbine-wheel. 
Held,  that  in  view  of  the  complex  conditions 
under  which  the  device  operates  it  can  be 
told  with  certainty  that  it  will  satisfactorily 
perform  its  function  only  after  subjecting  the 
device  to  tests  under  the  conditions  of  actual 
use.  Emmet  v.  Fullagar,  C.  D.  1906,  124  O. 
G.  2178. 


2630.  Where  the  invention  consists  of  a 
plate  graduated  in  such  manner  as  to  obviate 
the  necessity  for  "make-ready,"  Held,  that  to 
establish  a  successful  reduction  to  practice  re- 
quires a  printing  test  under  actual  working 
conditions  on  a  power-press  and  without  the 
use  of  a  "cut-overlay."  *Wickers  and  Fur- 
long V.  McKee,  C.  D.  1907,  129  O.  G.  869. 

2631.  As  a  general  rule,  before  a  machine 
can  be  considered  as  a  reduction  to  practice 
it  must  be  subjected  to  a  test,  and  the  test 
must  demonstrate  the  fitness  of  the  machine 
for  a  useful  purpose.  Gordon  v.  Wentworth, 
C.  D.   1907,  130  O.  G.  2065. 

2632.  The  making  of  drawings  of  a  cutter- 
head  for  a  planing  machine  and  the  disclosure 
of  the  invention  to  others,  Held,  not  suffi- 
cient to  entitle  the  inventor  to  an  award  of 
priority  as  against  one  later  to  conceive,  but 
first  to  reduce  the  invention  to  practice.  *Nel- 
son  v.  Faucette,  C.  D.  1909,  143  O.  G.  1438. 

2633.  A  mantle  for  an  inverted  gas-lamp 
is  not  such  a  simple  device  that  the  mere  con- 
struction thereof  without  a  test  to  demon- 
strate its  efficacy  constitutes  a  reduction  to 
practice.  *Daggett,  Jr.  v.  Kaufmann,  145  O. 
G.  1024. 

3.  Not  Necessary. 

2634.  What  is  successful  construction  is  a 
matter  the  determination  of  which  must  large- 
ly depend  upon  the  nature  and  purpose  of  the 
device  in  the  particular  case,  as  well  as  upon  the 
special  circumstances  surrounding  the  alleged 
construction  and  use.  Some  devices  are  so  sim- 
ple and  their  purpose  so  obvious  that  the  com- 
plete construction  of  one  of  a  size  and  form 
capable  of  practical  use  might  be  regarded  as 
a  sufficient  reduction  to  practice  without  ac- 
tual use  or  test  in  an  effort  to  demonstrate 
their  complete  success  or  probable  commercial 
value.  *Mason  v.  Hepburn,  C.  D.  1898,  84  O. 
G.  147. 

2635.  No  actual  test  of  the  practicability  of 
a  device  is  needed  where  the  device  is  itself 
complete  and  capable  of  practical  use.  (Mason 
v.  Hepburn,  C.  D.  1898,  510,  84  O.  G.  147.) 
*Lindemeyer  v.  Hoffman  et  al.,  C.  D.  1901,  95 
O.  G.  838. 

2636.  Some  inventions  are  so  simple  that 
no  actual  test  is  required  when  the  device  is 
a  complete  construction  of  full  size  and  form. 
(Citing  Mason  v.  Hepburn,  C.  D.  1898,  510, 
84  O.  G.  147.)  Loomis  v.  Hauser,  C.  D.  1902, 
99  O.  G.  448. 


388 


INTERFERENCE,  XXXV,  (g). 


2637.  An  envelop  constructed  by  hand  made 
from  a  sheet  of  light  brown  paper,  which  on 
inspection  is  clearly  seen  to  be  capable  of  se- 
curely holding  tickets,  for  which  use  the  in- 
vention is  intended,  though  never  put  into 
commercial  use,  Held,  to  constitute  a  full  and 
complete  reduction  to  practice.    Id. 

2638.  A  theater-ticket  holder  made  from  a 
sheet  of  ordinary  paper  and  constructed  as 
stated  in  the  issue.  Held,  a  reduction  to  prac- 
tice, although  the  advertisements,  program, 
time-table,  and  diagram  of  seats  usually  found 
on  such  holders  were  not  printed  thereon.  Id. 

2639.  The  ticket-holder  in  controversy  is  an 
exceedingly  simple  invention  consisting  main- 
ly in  the  folding  of  a  small  piece  of  paper,  and 
there  can  scarcely  be  any  practical  difference 
between  what  is  designated  as  an  illustrative 
model  and  the  perfected  device.  Held,  there- 
fore, that  the  making  of  such  a  holder  by 
Hauser  was  a  reduction  to  practice.  *Loomis 
V.  Hauser,  C.  D.  1902,  99  O.  G.  1172. 

2640.  Some  devices  are  so  simple  and  their 
purpose  and  efficiency  so  obvious  that  the  com- 
plete construction  of  one  of  a  size  and  form 
intended  for  and  capable  of  practical  use  may 
well  be  regarded  as  a  sufficient  reduction  to 
practice  without  actual  use  or  test  in  an  ef- 
fort to  demonstrate  their  complete  success  or 
probable  commercial  value.  (Citing  Mason 
V.  Hepburn,  C.  D.  1898,  510,  84  O.  G.  147,  13 
App.  D.  C.  86.)     *Id. 

2641.  This  case  distinguished  from  Linde- 
meyr  v.  Hoffman  (C.  D.  1901,  353,  95  O.  G. 
S38),  wherein  the  inventor  expressly  admitted 
that  his  device  was  not  fit  for  practical  use. 
*Id. 

2642.  Where  it  appeared  that  a  gas-burner 
forming  the  subject-matter  of  an  interference 
had  never  been  put  to  an  actual  test,  but  that 
a  tip  differing  therefrom  only  in  a  slight 
variance  in  the  inclination  of  the  air-inlets 
had  operated  successfully,  Held,  that  the  oper- 
ation of  the  device  in  issue  was  evident  from 
the  operation  of  the  prior  device  and  that  no 
test  of  the  burner  in  issue  was  necessary  to 
constitute  reduction  to  practice.  Shaffer  v. 
Dolan,  C.  D.  1903,  107  O.  G.  539. 

2643.  A  common  cloth-cased  horse-collar 
stuffed  with  cotton  is  one  of  those  devices 
which  are  so  simple  and  their  purpose  and 
efficiency  so  obvious  that  the  complete  con- 
struction of  one  of  a  size  and  form  intended 
for  and  capable  of  practical  use  is  to  be  re- 


garded as  a  sufficient  reduction  to  practice 
without  actual  use  or  test.  *Couch  v.  Barnett, 
C.  D.  1904,  110  O.  G.  1431. 

2644.  Where  devices  of  the  kind  involved 
were  well  understood  and  the  only  point  to 
be  determined  by  a  test  was  whether  upon  the 
operation  of  the  controller-handle  the  dog 
which  was  attached  thereto  would  move  in 
the  way  stated,  Held,  that  it  was  not  neces- 
sary that  a  test  be  performed  under  condi- 
tions of  actual  service  in  order  to  establish  a 
reduction  to  practice.  Id.  Ebersole  v.  Dur- 
kin,  C.  D.   1908,  132  O.  G.  842. 

2645.  The  making  of  a  sample  ringing-key 
for  a  four-party  telephone-line.  Held,  to  con- 
stitute a  reduction  to  practice,  as  the  opera- 
tiveness  of  the  device  would  be  apparent  to 
any  one  skilled  in  the  art,  there  being  little  in 
the  key  that  was  new,  and  several  witnesses 
who  examined  it  carefully  having  pronounced 
the  invention  a  success.  *Connor  v.  Dean, 
C.   D.   1909,  142  O.  G.  856. 

2646.  The  mere  construction  without  test 
of  an  electrical-circuit  protector  comprising 
means  operable  upon  an  excess  of  current  for 
protecting  the  circuit  and  having  provision 
whereby  it  is  automatically  reset  and  resol- 
dercd  in  reset  condition,  Held,  to  constitute  a 
reduction  to  practice  in  view  of  the  condition 
of  the  prior  art.  *Rolfe  v.  Kaisling  v.  Leeper, 
C.   D.  1909,  143  O.  G.   562. 

2647.  A  key-cup  made  of  a  single  piece  of 
sheet  metal.  Held,  to  be  of  that  simple  char- 
acter which  requires  no  test  to  demonstrate 
its  practicability.  Landa  v.  Kavle,  C.  D.  1910, 
158  O.  G.  228. 

2648.  An  improvement  in  safety-razors  of 
which  the  only  novel  feature  is  the  clamp  by 
which  the  blade  is  held  in  position.  Held,  such 
a  simple  device  that  the  making  thereof 
amounted  to  a  demonstration  of  utility  and- 
constituted  reduction  to  practice.  *Garsman  v. 
Gillette,  C.  D.  1911,  165  O.  G.  244. 

(g)  Accidental  Production. 

2649.  Where  the  invention  consists  of  a 
draft-pipe  for  a  motor-vehicle  having  an  open 
upper  end  and  it  appears  that  W.  lost  the  cap 
on  his  draft-pipe  and  ran  his  machine  one 
day  without  it.  Held,  that  this  accidental  em- 
bodiment of  the  invention  cannot  be  regarded 
as  showing  either  reduction  to  practice  or 
conception.  Whitney  v.  Howard  v.  Stanley 
and  Stanley,  C.  D.  1903,  104  O.  G.  1391. 


INTERFERENCE,  XXXV,  (h),  (i),  (j). 


389 


(h)  Process,   Product,   Composition    of  Mat- 
ter, Etc. 

2650.  After  reviewing  the  testimony,  Held, 
that  while  Schmertz  may  have  come  very  near 
to  developing  the  process  of  the  issue  prior 
to  the  date  of  Appert's  constructive  reduction 
to  practice  he  lacl<ed  at  least  the  linal  step 
that  would  have  demonstrated  the  thorough- 
ness of  his  conception  and  crowned  his  labors 
with  success,  and  priority  awarded  to  Appert. 
*Appert  V.  Schmertz,  C.  D.  1898,  84  O.  G.  508. 

2651.  By  actual  reduction  to  practice  the 
right  to  the  invention  becomes  perfect  and 
can  only  become  subordinate  to  the  claim  of 
a  subsequent  bona  fide  inventor  by  some  such 
course  of  conduct  as  that  shown  in  Mason  v. 
Hepburn  (C.  D.  1898,  510,  84  O.  G.  147.)  *Id. 
Estey  V.  Newton,  C.  D.  1899,  86  O.  G.  799. 

2652.  The  importance  of  mere  delay  while 
the  inventor  is  engaged  in  the  prosecution  of 
other  improvements  in  the  same  art  is  of  more 
or  less  weight,  according  to  circumstances,  in 
determining  whether  the  attempted  reduction 
to  practice  amounted  to  an  actual  reduction 
or  an  abandoned  experiment.    *Id. 

2653.  Where  testimony  in  an  interference 
proceeding  establishes  the  fact  of  a  concep- 
tion and  the  reduction  to  practice  of  a  process, 
Held,  that  the  same  testimony  also  establishes 
the  fact  of  the  conception  and  reduction  to 
practice  of  the  article  of  manufacture  which 
results  from  that  process.  Kyle  v.  Corner, 
C.  D.  1904,  113  O.  G.  2216. 

2654.  The  successful  performance  of  a  pro- 
cess constitutes  a  reduction  to  practice  there- 
of even  if  the  apparatus  used  was  not  the 
best  available  for  producing  the  result  (citing 
Croskey  v.  Atterbury,  C.  D.  1896,  437,  76  O. 
G.  163,  9  App.  D.  C.  207.)  Whitman  v.  King, 
C.  D.  1910,  160  O.  G.  259. 

2655.  Evidence  considered  and  Held,  insuf- 
ficient to  establish  that  W.  conceived  the  in- 
vention of  counts  2  and  3  prior  to  the  date  of 
K.'s  reduction  to  practice  thereof.     Id. 

2656.  In  order  to  establish  reduction  to 
practice  of  a  chemical  compound,  it  is  not 
necessary  to  show  that  it  is  capable  of  use 
in  some  commercial  process  and  that  such  pro- 
cess has  been  successfully  practiced ;  but  it 
is  sufficient  if  it  be  established  that  this  com- 
pound has  apparent  usefulness.  *Potter  v. 
Tyne,  C.  D.  1911,  163  O.  G.  729. 

2657.  Where  T.  discovered  a  chemical  com- 
pound embodying  the  issue  of  the  interference 
and  prior  to  P.'s   date   of  conception   it  was 


established  that  this  compound  was  a  non- 
conductor of  electricity  and  acted  as  a  re- 
ducing agent,  Held,  that  priority  of  invention 
was  properly  awarded  to  T.    *Id. 

(i)   In  Foreign  Country. 

2658.  Where  K.  completed  the  invention  in 
issue  in  a  foreign  country  and  knowledge  of 
such  invention  was  brought  into  this  country 
and  disclosed  to  others.  Held,  that  K.  can  de- 
rive no  benefit  from  the  work  done  in  such 
foreign  country  and  that  the  disclosure  of  the 
invention  to  others  in  this  country  is  not 
equivalent  to  a  reduction  to  practice  of  the 
invention,  but  is  merely  evidence  of  conception 
thereof.  *De  Kando  v.  Armstrong,  C.  D. 
1911,  169  O.  G.  1185. 

2659.  A.  conceived  the  invention  in  issue  in 
1902  and  filed  his  application  therefor  in  1905. 
K.  completed  the  invention  in  a  foreign  coun- 
try in  1904,  disclosed  it  to  others  in  this  coun- 
try in  1904,  and  filed  his  application  therefor 
in  1906.  Held,  that  priority  was  properly 
awarded  to  A.     *Id. 

(j)  Drawings  and  Sketches. 

2660.  Perfected  drawings  showing  an  in- 
vention cannot  be  regarded  as  a  reduction  to 
practice  of  the  invention.  *McCormick  v. 
Cleal,  C.  D.  1898,  83  O.  G.  1514. 

2661.  A  drawing  perfect  in  every  detail 
and  plainly  demonstrating  the  principle  and 
practical  utility  of  an  invention  is  not  reduc- 
tion to  practice,  nor  is  a  model,  designed,  con- 
structed, and  intended  merely  as  a  model. 
♦Mason  v.  Hepburn,  C.  D.  1898.  84  O.  G.  147. 

2662.  The  contention  that  a  drawing  demon- 
strating efficiency  and  operativeness  is  the  full 
equivalent  of  an  actual  machine  and  just  as 
effectively  embodies  the  adoption  and  perfec- 
tion of  the  invention  cannot  be  sustained  by 
any  authority.  Kasson  v.  Hetherington,  C.  D. 
1890,  88  O.  G.   1157. 

2663.  Long  and  unexplained  delay  yielding 
to  activity  only  when  the  knowledge  comes 
of  the  entrance  of  a  rival  on  the  field  is  al- 
ways presumptive  evidence  that  what  is  claim- 
ed to  have  been  a  reduction  to  practice  was 
no  more  than  an  unsatisfactory  or  abandoned 
experiment.  *01iver  v.  Felbel,  C.  D.  1902, 
100  O.  G.  2384. 

2664.  It  is  well  settled  that  drawings  alone, 
however  perfect,  are  not  equivalent  to  a  re- 
duction to  practice.     (Mason  v.  Hepburn,  84 


390 


INTERFERENCE,  XXXVI. 


O.  G.  147,  13  App.  D.  C.  8G;  Automatic 
Weighing  Machine  Co.  v.  Pneumatic  Scale 
Corporation,  139  O.  G.  991,  1G6  Fed.  Rep.  288.) 
Ames  V.  Lindstrom,  C.  D.  1911,  167  O.  G.  241. 

XXXVI.  Rehearing. 

2665.  It  is  not  the  practice  of  the  office  to 
set  for  hearing  motions  for  rehearing  unless 
an  examination  of  the  record  shows  that  a  re- 
hearing ought  to  be  granted.  Adams  v.  Mur- 
phy, C.  D.  1900,  91  O.  G.  2373. 

2666.  From  a  decision  of  a  lower  tribunal 
refusing  to  grant  a  rehearing  no  appeal  lies. 
Reynolds  v.  Bean,  C.  D.  1902,  101  O.  G.  2821. 

2667.  The  jurisdiction  of  the  primary  ex- 
aminer will  not  be  restored  after  an  appeal  to 
consider  a  motion  for  rehearing  when  no  new 
facts  are  alleged  and  the  moving  party  merely 
wishes  to  reargue  the  question  in  connection 
with  a  motion  by  another  party  relating  to 
the  same  subject.  Davis  v.  Ocumpaugh  v. 
Garrett,  C.  D.  1903,  103  O.  G.  227. 

2668.  There  is  no  appeal  from  the  refusal 
to  grant  a  rehearing.  Carmichael  v.  Fox,  C. 
I).   1903,  104  O.  G.  1656. 

2669.  Where  a  party  fails  to  appeal  within 
the  limit  set  and  thereafter  asks  for  an  exten- 
sion of  the  limit  of  appeal  in  order  to  permit 
him  to  make  a  motion  for  a  rehearing,  Held, 
that  the  extension  will  not  be  granted.     Id. 

2670.  If  a  party  wishes  to  and  is  entitled  to 
strengthen  his  case  after  decision,  it  must  be 
done  by  a  motion  for  rehearing  or  to  reopen 
before  the  tribunal  rendering  the  decision. 
McHarg  v.  Schmidt  and  Mayland,  C.  D.  1903, 
105  O.  G.  263. 

2671.  Held,  that  there  is  no  appeal  from  a 
decision  refusing  to  grant  a  rehearing.  Cole 
V.  Zarbock  v.  Greene,  C.  D.  1905,  116  O.  G. 
1451. 

2672.  Where  a  decision  is  rendered  by  a 
tribunal  and  it  appears  that  an  affidavit  re- 
lating to  the  matters  at  issue  was  filed  too 
late  to  be  considered.  Held,  that  the  appellant 
should  move  for  a  rehearing,  rather  than  ap- 
peal, since  matters  not  considered  by  the  tribu- 
nal of  original  jurisdiction  will  not  be  review- 
ed on  appeal.  Ocumpaugh  v.  McElroy,  C.  D. 
1905.  115  O.  G.  1847. 

2673.  Where  upon  petition  that  the  exam- 
iner be  directed  to  hear  further  a  party  on 
motion  in  interference  it  appears  that  no 
hardship  or  irreparable  injury  will  be  suffered 
through  the  examiner's  refusal  to  hear,  Held, 


that  the  examiner  would  not  be  controlled  in 
the  exercise  of  his  discretion  as  to  the  dura- 
tion of  the  hearing.  Moore  v.  Curtis,  C.  D. 
1906,  120  O.  G.  324. 

2674.  Where  a  petition  is  brought  that  jur- 
isdiction be  restored  to  the  examiners-in-chief 
in  order  that  they  may  rehear  the  appeal  upon 
priority  of  invention  and  it  does  not  appear 
that  the  examiners-in-chief  desire  to  recon- 
sider their  decision.  Held,  that  they  should 
not  be  required  to  do  so.  Duryca  and  White 
V.   Rice,  Jr..  C.  D.   1906,  122  O.  G.   1395. 

2675.  There  is  no  provision  in  the  rules  for 
a  motion  before  the  examiner  of  interfer- 
ences to  require  a  party  to  file  a  supplemental 
oath,  and  from  a  decision  thereon  no  appeal 
lies.  Dukesmith  v.  Corrington  v.  Turner,  C. 
D.   1906,  125  O.  G.  348. 

2676.  The  question  of  the  examiner's  re- 
taining jurisdiction  to  determine,  after  the 
expiration  of  the  limit  of  appeal,  a  motion 
for  rehearing  brought  before  the  expiration 
of  the  limit  of  appeal  is  a  dififerent  matter 
from  that  of  the  termination  of  the  limit  of 
appeal.  No  good  reason  appears  for  holding 
that  a  tribunal  may  not  properly  render  a 
decision  on  a  motion  for  rehearing  brought 
before  the  expiration  of  the  limit  of  appeal, 
even  though  the  date  of  the  decision  is  after 
the  limit  of  appeal  has  expired.  Naulty  v. 
Cutler,  C.  D.   1907,  126  O.  G.  389. 

2677.  The  filing  of  the  motion  for  rehearing 
does  not  extend  the  limit  of  appeal,  and  in 
case  the  motion  is  denied  the  moving  party 
will  have  lost  his  right  of  appeal  unless  he 
has  taken  the  precaution  to  file  his  appeal 
within  the  limit  originally  set  or  has  obtained 
an  extension  of  the  limit  of  appeal.     Id. 

2678.  The  rule  that  there  is  no  appeal  from 
a  decision  denying  a  rehearing  does  not  cover 
the  case  where  the  holding  is  want  of  juris- 
diction to  entertain  the  motion.     Id. 

2679.  It  is  not  the  practice  to  require  serv- 
ice of  requests  or  motions  for  rehearing  upon 
the  opposite  party  (Townsend  v.  Copeland  v. 
Robinson,  C.  D.  1906,  379,  124  O.  G.  1845),  or 
to  set  such  motions  for  hearing,  unless  ex- 
amination of  the  motion  and  of  the  record 
shows  that  a  rehearing  ought  to  be  granted. 
(Adams  v.  Murphy,  C.  D.  1900,  100,  91  O.  G. 
2373.)  Id.  Naulty  v.  Cutler,  C.  D.  1907,  126 
O.  G.  389. 

2680.  Where  a  motion  is  filed  for  rehearing 
of  the  examiner's  decision  and  also  an  appeal 
from   said   decision,   Held,  that   the   filing  of 


INTERFERENCE,  XXXVII,  1,  2. 


391 


the  appeal  does  not  oust  the  examiner  of  jur- 
isdiction to  entertain  the  motion.     Id. 

2681.  Where  a  party  requested  that  a  second 
date  for  final  hearing  be  set  to  give  him  an 
opportunity  to  argue  his  opponent's  right  to 
make  the  claims,  Held,  that  the  extent  to 
which  a  case  pending  before  the  examiner  of 
interferences  shall  be  heard  or  reheard  by 
him  is  a  matter  peculiarly  within  his  own  dis- 
cretion, and  his  decision  on  such  a  point  will 
not  be  disturbed  unless  in  case  of  clear  abuse 
of  such  discretion.  Dunlap  v.  Creveling  v. 
Rector,  C.  D.  1910,  160  O.  G.  774. 

XXXVII.  Reinstatement  or  Reopening. 
1.  In  General. 

2682.  Where  a  motion  is  made  to  reopen 
an  interference  on  the  last  day  of  the  limit 
of  appeal,  the  moving  party  should,  out  of 
an  abundance  of  caution,  also  file  the  appeal. 
Greuter  v.  Mathieu,  C.  D.  1904,  112  O.  G.  254. 

2G83.  Where  a  motion  is  brought  to  restore 
the  jurisdiction  of  the  examiner  of  interfer- 
ences for  the  purpose  of  considering  a  mo- 
tion to  reopen  the  interference  after  judgment 
against  the  moving  party  and  after  the  limit 
of  appeal  has  expired.  Held,  that  said  party 
should  have  a  hearing  upon  the  question 
whether  the  showing  made  by  him  is  sufficient 
to  warrant  reopening  the  case,  and  the  juris- 
diction of  the  examiner  of  interferences  is 
therefore  restored.  Lipscomb  v.  Pfeiffer,  C. 
D.  1906,  122  O.  G.  351. 

2684.  The  commissioner  will  not  control  the 
discretion  of  the  examiner  of  interferences 
upon  the  questions  of  rehearing  and  reconsid- 
eration. Hewitt  v.  Thomas  v.  Kruh  v.  Wein- 
traub,  C.  D.  1906,  122  O.  G.  1045, 

2.  To  Take  More  Testimony. 

2685.  In  order  to  warrant  the  reopening  of 
a  case  to  take  further  testimony  on  the  ground 
that  the  testimony  is  newly  discovered,  it  is 
not  sufficient  to  show  merely  that  the  testi- 
mony is  material  and  that  the  motion  to  re- 
open is  brought  with  diligence  after  the  dis- 
covery of  the  testimony,  but  it  must  appear 
also  that  the  testimony  could  not  have  been 
discovered  previously  by  the  exercise  of  due 
diligence.  Fordyce  v.  Torsey,  C.  D.  1903,  102 
O.  G.  829. 

2686.  Motions  to  reopen  and  take  further 
testimony  should  be  heard  and  determined  in 
the  first  instance  bv  the  examiner  of  interfer- 


ences. (Bowen  v.  Bradley,  C.  D.  1892,  13, 
58  O.  G.  386.)  Robinson  v.  Townsend  v. 
Copeland,  C.  D.  1903,  106  O.  G.  997. 

2687.  Where  a  motion  is  brought  to  trans- 
mit a  motion  to  reopen  an  interference  and 
take  further  testimony  and  upon  an  inspection 
it  appears  that  the  motions  are  brought  in 
good  faith  and  not  for  the  purpose  of  delay 
and  that  under  all  the  circumstances  of  the 
case  it  appears  that  the  motion  to  reopen 
should  be  considered  and  determined  on  its 
merits.  Held,  that  the  motion  to  transmit  the 
interference  to  the  examiner  of  interferences 
for  that  purpose  should  be  granted.    Id. 

2688.  Where  an  affidavit  wholly  expert  in 
character  is  filed  in  connection  with  a  motion 
to  reopen  and  take  more  testimony.  Held,  that 
the  aflldavit  should  be  stricken  from  the  rec- 
ord.    Id. 

2689.  Held,  that  two  weeks'  delay  in  bring- 
ing motion  to  reopen  a  case  and  take  addi- 
tional testimony  is  not  unreasonable  and  that 
the  motion  was  brought  with  diligence.  Rob- 
inson V.  Townsend  v.  Copeland,  C.  D.  1903, 
107  O.  G.   1376. 

2690.  Where  a  party  is  in  interference  with 
joint  applicants  and  makes  a  motion  to  re- 
open to  take  newly-discovered  evidence  tend- 
ing to  show  that  the  joint  applicants  are  not 
joint  inventors.  Held,  that  the  question  relates 
to  a  statutory  bar  and  not  to  the  question  of 
priority  of  invention,  and  therefore  the  motion 
denied.  Ritter  v.  Kraukau  and  Conner,  C. 
D.   1904,   108  O.  G.    1050. 

2691.  Motions  to  reopen  and  take  further 
testimony  should  be  heard  and  determined  in 
the  first  instance  by  the  examiner  of  inter- 
ferences. Clement  v.  Richards  v.  Meissner, 
C.  D.  1904,  111  O.  G.  1626. 

2692.  A  motion  to  reopen  to  introduce  evi- 
dence must  be  brought  promptly  after  its  al- 
leged discovery.  French  v.  Halcomb,  C.  D. 
1904,  no  O.  G.  1727. 

2693.  Where  pending  an  appeal  to  the  court 
of  appeals  a  motion  is  made  to  reopen  and 
take  further  testimony  and  it  appears  that 
said  motion  is  brought  in  good  faith  and  not 
for  the  purpose  of  delay  and  upon  considera- 
tion of  the  same  the  facts  alleged  are  such  as 
to  warrant  that  the  motion  should  be  heard 
and  determined  on  its  merits.  Held,  that  jur- 
isdiction will  be  conferred  upon  the  examiner 
of  interferences  for  that  purpose.  Clement 
v.  Richards  v.  Meissner,  C.  D.  1904,  111  O. 
G.  1626. 


U92 


INTERFERENCE,  XXXVII,  3,  XXXVIII. 


2694.  Held,  that  the  commissioner  of  pat- 
ents has  jurisdiction  pending  an  appeal  to  the 
court  of  appeals  to  hear  and  determine  a  mo- 
tion to  reopen  a  case  for  the  purpose  of  tak- 
ing additional  testimony.  Clement  v.  Richards 
V.  Meissner,  C.  D.  1904,  111  O.  G.  1627. 

2695.  Held,  that  pending  an  appeal  to  the 
court  of  appeals  the  commissioner  of  patents 
has  jurisdiction  to  modify  or  set  aside  his  de- 
cision from  which  the  appeal  is  taken  and  that 
the  granting  of  a  motion  for  a  new  trial  has 
the  legal  effect  of  setting  aside  the  decision 
already  rendered.    Id. 

2696.  Held,  tliat  the  reopening  of  a  cause 
for  the  introduction  of  newly-discovered  evi- 
dence is  always  a  matter  for  the  trial  court 
and  is  in  its  discretion,  and  that  discretion  is 
not  subject  to  review  by  a  purely  appellate 
tribunal.  *Richards  v.  Meissner,  C.  D.  1905, 
114  O.  G.  1831. 

2697.  Where  the  commissioner  of  patents 
has  refused  to  reopen  an  interference  for  the 
purpose  of  permitting  the  introduction  of  al- 
leged newly-discovered  evidence,  and  has  also 
refused  to  allow  the  amendment  of  a  pre- 
liminary statement,  Held,  that  the  court  of 
appeals  will  not  remand  the  case  nor  review 
the  decision  of  the  commissioner  on  these 
questions  where  no  abuse  of  discretion  is 
found.     *Id. 

2698.  Where  an  interference  is  declared  be- 
tween three  parties  and  all  present  testimony 
and  but  one  of  these  parties  takes  an  appeal 
to  the  court  of  appeals.  Held,  that  the  case 
made  out  by  the  party  who  has  not  appealed 
cannot  be  considered  in  the  determination  of 
the  controversy.    *Id. 

2699.  Upon  a  motion  to  restore  the  juris- 
diction of  the  examiner  of  interferences  in  a 
case  pending  on  appeal  before  the  examiners- 
in-chief  for  the  purpose  of  considering  a  mo- 
tion to  reopen  the  interference  to  take  newly- 
discovered  evidence,  wherein  it  was  alleged 
that  after  the  appeal  to  the  examiners-in-chief 
the  opposing  party  in  another  interference 
gave  testimony  which  discredited  the  allega- 
tions made  by  him  in  the  present  interference, 
Held,  that  the  motion  should  be  granted,  al- 
though the  evidence  may  be  incompetent  and 
immaterial,  this  being  a  question  for  the  ex- 
aminer of  interferences  in  the  first  instance. 
Dunbar  v.  Schellenger,  C.  D.  1905,  118  O.  G. 
253G. 

2700.  Where  the  tribunals  of  the  patent  of- 
fice  in  the   exercise  of   their  discretion  have 


refused  to  reopen  a  case  for  the  introduction 
of  newly-discovered  evidence,  their  conclu- 
sions will  be  reviewed  by  the  court  of  appeals 
only  in  case  of  an  abuse  of  discretion.  ♦Dun- 
bar v.  Schellenger,  C.  D.  1907,  128  O.  G.  2837. 

.3.  Newly  Discovered  Evidence. 

2701.  To  reopen  a  decided  case,  it  must 
clearly  appear  that  the  alleged  newly-discov- 
ered evidence  would  change  or  modify  the 
decision.  French  v.  Halcomb,  C.  D.  1904,  110 
O.  G.  1727. 

2702.  On  a  motion  to  restore  jurisdiction 
to  the  examiner  of  interferences  of  an  inter- 
ference, pending  on  appeal  before  the  exam- 
iners-in-chief on  the  question  of  priority,  for 
the  consideration  of  a  motion  to  reopen  to 
admit  newly-discovered  evidence  the  only 
questions  for  consideration  are  whether  the 
motion  to  reopen  is  in  proper  form  and 
whether,  so  far  as  can  be  seen,  without  going 
into  the  merits  of  the  motion,  it  is  brought  in 
good  faith.  Newell  v.  Clifford  v.  Rose,  C.  D. 
190r.,  122  O.  G.  730. 

2703.  The  reopening  of  a  case  for  the  in- 
troduction of  newly-discovered  evidence  is  al- 
ways a  matter  for  the  trial  court  and  in  its 
discretion,  and  the  court  of  appeals  of  the 
District  of  Columbia  will  not  review  the  deci- 
sion of  the  commissioner  of  patents  upon  this 
point,  except  where  it  appears  that  there  has 
been  an  abuse  of  discretion.  *American  Stove 
Company  v.  Detroit  Stove  Works  et  al,  C.  D. 
1908,  134  O.  G.  2245. 

XXXVIII.  Reopened   to   Take   More  Testi- 
mony. 

2704.  In  order  to  warrant  reopening  a  de- 
cided case  to  take  more  testimony,  a  showing 
of  the  utmost  diligence  and  a  very  clear  and 
satisfactory  showing  of  newly-discovered  evi- 
dence are  required ;  but  the  rule  is  not  so 
strictly  enforced  where  a  party  in  effect  mere- 
ly wishes  more  time  to  take  testimony.  Wat- 
son V.  Thomas,  C.  D.  1902,  98  O.  G.  2361. 

2705.  To  permit  a  party  to  take  more  testi- 
mony where  it  appears  that  his  opponent  has 
taken  none  would  work  no  injury  to  that  op- 
ponent, except  in  so  far  as  delay  may  be  in- 
jurious, and  therefore  the  strict  rule  in  re- 
gard to  reopening  cases  does  not  apply.    Id. 

2706.  Where  a  nominal  party  although  not 
the  real  party  in  interest  is  unable  to  find 
drawings  which  he  remembers  making  and  is 


INTERFERENCE,  XXXIX,  1. 


393 


not  called  as  a  witness  because  hostile  and 
he  afterward  discovers  the  drawings  and  is 
willing  to  testify,  Held,  that  the  party  in  in- 
terest should  be  permitted  to  introduce  the 
new  evidence.     Id. 

XXXIX.  Not  Reopened. 
1.  In  General. 

2707.  Where  judgment  of  priority  has  been 
rendered  by  the  examiner  of  interferences  and 
his  action  affirmed  by  the  board  of  examiners- 
in-chief,  a  petition  to  reopen  the  case  for  the 
purpose  of  presenting  additional  testimony  not 
newly  discovered  denied.  Estes  v.  Cause,  C. 
D.  1899,  88  O.  G.  1336. 

2708.  There  is  no  precedent  or  practice 
which  would  justify  the  court  in  granting  a 
motion  for  leave  to  apply  to  patent  office  to 
have  an  interference  that  has  been  finally  de- 
termined reopened  with  permission  to  intro- 
duce additional  evidence  to  supply  defects  and 
omissions  that  are  supposed  to  exist.  The 
court  has  no  power  to  authorize  the  taking 
of  new  or  additional  testimony  upon  a  motion 
like  the  present.  *Nielson  v.  Bradshaw,  C.  D. 
1900,  91  O.  G.   648. 

2709.  A  motion  to  restore  the  jurisdiction 
of  the  examiner  of  interferences  to  consider 
a  motion  to  reopen  and  to  amend  the  pre- 
liminary statement  denied  where  it  was  pre- 
sented five  months  after  the  decision  on  pri- 
ority and  a  prima  facie  case  of  diligence  is 
not  made  out.  Beckert  v.  Currier,  C.  D.  1903, 
104  O.  G.  2439. 

2710.  If  on  the  production  of  an  instrument 
it  appears  to  have  been  altered,  it  is  incumbent 
on  the  party  offering  it  in  evidence  to  explain 
this  appearance,  and  he  is  not  entitled  to  have 
the  case  reopened  after  decision  to  make  that 
explanation  merely  because  an  unfavorable  in- 
ference has  been  drawn  from  the  condition 
of  the  instrument.  Blackman  v.  Alexander, 
104  O.  G.  2441. 

2711.  A  party  is  not  entitled  to  have  a  case 
reopened  to  rebut  unfavorable  inferences 
which  are  drawn  from  the  facts  shown  by  the 
record.  If  the  inferences  are  unwarranted, 
the  decision  may  be  corrected  on  appeal.     Id. 

2712.  An  interference  will  not  be  reopened 
after  decision  upon  an  ex  parte  request  of  one 
of  the  parties,  but  only  upon  motion  served 
upon  the  opposing  party  and  supported  by  a 
showing  of  good  reasons.  Smith  v.  Locklin, 
C.  D.  1905.  116  O.  G.  2009. 


2713.  An  interference  case  will  not  be  re- 
opened after  decision  merely  because  the  mov- 
ing party,  under  the  advice  of  different  attor- 
neys, has  changed  her  mind  as  to  her  ability 
to  prove  her  case  if  she  is  permitted  to  take 
testimony.  Hall  v.  McGill,  C.  D.  1905,  117  O. 
G.  597. 

2714.  Where  after  judgment  had  been  ren- 
dered against  C,  a  junior  party,  for  failure  to 
take  testimony,  and  later  in  another  interfer- 
ence S.  admitted  a  disclosure  of  the  issue  of 
this  interference  to  him  by  C,  but  C.  waited 
over  a  year  after  obtaining  knowledge  of  this 
fact  before  bringing  a  motion  to  reopen.  Held, 
that  the  long  delay  indicates  that  the  motion 
was  not  brought  in  good  faith,  but  merely  for 
the  purpose  of  delay  and  the  motion  to  reopen 
denied.  Clausen  v.  Dunbar  v.  Schellenger,  C. 
D.   1907,    129  O.   G.  2499. 

2715.  Where  judgment  was  rendered  against 
C.  by  default  and  long  afterward  it  appeared 
from  testimony  in  a  different  interference 
that  C.  disclosed  the  invention  to  S.,  the  suc- 
cessful party,  Held,  that  C,  having  failed  to 
contest  the  question  of  originality  or  to  move 
promptly  to  have  the  case  reopened  for  the 
introduction  of  newly-discovered  evidence  as 
to  this  fact,  has  no  greater  right  to  contest 
the  patentability  of  the  issue  to  S.  than  any 
other  member  of  the  public  and  that  right  of 
S.  to  make  the  claim  is  not  a  matter  for  inter- 
paries  consideration.    Id. 

2716.  A  refusal  to  reopen  a  case  to  permit 
examiner  of  interferences  to  consider  a  peti- 
tion and  set  case  down  for  hearing  under 
Rule  130  proper  where  it  appears  from  a  con- 
sideration of  the  record  that  the  question 
sought  to  be  raised  is  not  one  of  priority. 
Pym  V.  Hadaway,  C.  D.  1907,  129  O.  G.  2073. 

2717.  A  party  is  deprived  of  no  rights  by  a 
refusal  to  set  for  hearing  under  Rule  130  a 
case  where  the  objections  urged  against  one 
party's  case  apply  equally  well  to  that  of  the 
other.     Id. 

2718.  A  motion  to  reopen  a  case  for  the 
purpose  of  allowing  a  party  to  print  testimony 
taken  by  his  opponent  will  be  denied  where 
such  motion  was  brought  after  the  decision 
of  the  examiner  of  interferences  was  rendered 
and  no  satisfactory  reason  for  such  delay  is 
given.  Parker  v.  Corkhill,  C.  D.  1907,  130 
O.  G.  2067. 

2719.  A  piecemeal  conduct  of  a  case  cannot 
be  allowed.  Where  a  contestant  elects  to 
stand   upon  the  record  as  presented  at  final 


394 


INTERFERENCE,  XXXIX,  2. 


hearing,  he  is  bound  by  the  decision  rendered 
thereon.     Id. 

2720.  After  a  decision  of  the  court  of  ap- 
peals awarding  priority  of  invention  an  inter- 
ference cannot  be  reopened  for  further  inter 
partes  consideration  of  the  question  of  the 
patentability  of  the  issue.  Gold  v.  Gold,  C.  D. 
1910,  l.-)3  O.  G.  1081. 

2721.  It  is  well  settled  that  a  party  is  not 
entitled  to  conduct  his  case  experimentally  to 
a  final  adverse  decision ;  also  that  after  an 
appeal  to  the  court  of  appeals  of  the  District 
of  Columbia  the  case  will  not  be  reopened  for 
the  consideration  of  additional  claims  except 
under  unusual  circumstances.  (Ex  parte  Star- 
key,  105  O.  G.  745,  and  Ex  parte  Milans,  135 
O.  G.  1122.)  Ex  parte  Russell,  C.  D.  1911, 
166  O.  G.  511. 

2.  To  Take  More  Testimony. 

2722.  Where  a  motion  to  reopen  an  inter- 
ference to  take  more  testimony  is  made  after 
decision  on  appeal  on  the  question  of  prior- 
ity, Held,  that  it  should  be  accompanied  by  a 
motion  before  the  commissioner  to  restore  to 
the  examiner  of  interferences  jurisdiction  to 
consider  it.  McCallum  v.  Bremer,  C.  D.  1900, 
93  O.  G.  1917. 

2723.  The  allegation  that  a  party  failed  to 
present  all  of  his  evidence  through  overcon- 
fidcnce  and  through  a  desire  not  to  disclose 
the  full  strength  of  his  proofs  constitutes  no 
valid  ground  for  reopening  the  case  to  take 
more  testimony  and  does  not  warrant  trans- 
mitting the  case  to  the  examiner  of  interfer- 
ences to  consider  the  motion  to  reopen.     Id. 

2724.  Where  it  is  shown  that  the  alleged 
new  evidence  was  discovered  before  a  deci- 
sion on  priority,  but  the  party  allowed  the 
case  to  go  to  decision  and  took  successive  ap- 
peals from  adverse  decisions  on  that  ques- 
tion before  making  a  motion  to  reopen  to  take 
more  testimony.  Held,  that  the  motion  is  made 
too  late.  Motions  to  reopen  should  be  made 
with  diligence.     Id. 

2725.  Where  a  party  through  mistake  or 
ignorance  failed  to  present  his  best  evidence, 
the  interference  will  not  be  reopened  there- 
after merely  to  permit  him  to  strengthen  his 
case.  Suiter  v.  McDonnell  v.  Jolly  v.  Neff, 
C.  D.  1902,  98  O.  G.  1484. 

2726.  A  practice  which  would  allow  a  con- 
testant to  experimentally  conduct  his  case  to 
a  probable  failure  and  then  permit  him  after 
consultation  and  with  competent  assistance  to 


make  further  endeavors  to  show  what  he 
could  and  should  have  earlier  shown  with  such 
assistance  would  be  contrary  to  all  well- 
established  rules  and  legal  principles.     Id. 

2727.  Where  a  party  moves  that  he  be  al- 
lowed to  introduce  and  identify  certain  ex- 
hibits referred  to  in  the  testimony  on  his  be- 
half and  there  is  nothing  in  the  testimony  to 
show  that  the  exhibits  were  present  or  even  in 
existence  at  the  time.  Held,  that  the  motion 
involves  merely  reopening  the  interference  to 
strengthen  a  showing  which  was  complete,  but 
weak,  and  that  it  will  not  be  granted.     Id. 

2728.  Where  an  interference  is  reopened  to 
permit  the  taking  of  the  testimony  of  a  single 
witness  and  after  the  case  is  again  closed  a 
motion  is  made  to  take  the  testimony  of  other 
witnesses  to  corroborate  him.  Held,  that  the 
motion  should  be  denied  in  the  absence  of  a 
showing  that  the  testimony  could  not  have 
been  produced  by  the  exercise  of  diligence. 
Dudley  v.  Blickensderfer  and  Barnes  v.  Sedg- 
wick, C.  D.  1902,  99  O.  G.  228. 

2729.  A  new  trial  will  not  be  granted  on 
the  ground  of  newly-discovered  evidence 
where  that  evidence  could  have  been  discov- 
ered before  trial  by  the  exercise  of  reasonable 
diligence.     Id. 

2730.  On  a  motion  to  reopen  an  interfer- 
ence which  has  been  decided  to  take  more  tes- 
timony good  reasons  must  be  shown  why  it 
was  not  sooner  produced  and  why  the  new 
evidence  could  not  have  been  discovered  by 
the  exercise  of  reasonable  diligence.  Mosher 
V.  Tully  and  Clark,  C.  D.  1902,  99  O.  G.  2968. 

2731.  Where  a  witness  testifies  as  to  the 
making  of  a  certain  device  and  the  opposing 
party  after  closing  his  proof  in  rebuttal  and 
two  months  after  a  decision  has  been  rendered 
on  priority  moves  to  reopen  the  interference 
to  permit  him  to  show  that  the  device  was  in- 
operative, Held,  that  the  motion  will  be  de- 
nied in  the  absence  of  a  satisfactory  showing 
why  the  evidence  was  not  produced  at  the 
proper  time.     Id. 

2732.  Where  a  motion  is  brought  to  reopen 
an  interference  proceeding  and  take  additional 
testimony  and  the  facts  in  support  of  said 
motion  are  that  a  certain  letter  which  is 
thought  to  be  material  to  the  case  is  subse- 
quently found  in  an  envelop  placed  among 
other  papers,  which  papers  were  searched 
prior  to  and  during  the  taking  of  the  testi- 
mony, and  the  only  reason  for  not  primarily 
finding  the  said  letter  was  that  because  of  an 


INTERFERENCE,  XXXIX,  2. 


393 


indorsement  on  the  envelop  containing  the 
same  the  contents  of  the  envelop  were  not 
looked  into,  Held,  not  to  constitute  sufficient 
ground  for  granting  the  motion.  Robinson  v. 
Townsend  v.  Copeland,  C.  D.  1902,  100  O.  G. 
683. 

2733.  After  an  interference  has  been  decid- 
ed by  the  examiner  of  interferences  it  will 
not  be  reopened  for  the  purpose  of  permit- 
ting one  of  the  parties  to  take  additional  tes- 
timony when  it  appears  that  said  testimony  is 
unimportant  and,  further,  that  the  facts  could 
have  been  discovered  with  reasonable  dili- 
gence before  the  testimony  was  originally 
taken.  Shaffer  v.  Dolan,  C.  D.  1902,  100  O. 
G.  3012. 

2734.  Where  a  witness  testifies  as  to  an  ex- 
hibit which  is  said  to  be  a  copy  of  the  orig- 
inal and  says  that  he  believes  that  the  orig- 
inal is  in  his  safe  in  his  office  and  after  a  deci- 
sion by  the  examiner  of  interferences  the 
party  wishes  to  reopen  the  interference  to 
show  that  the  original  could  not  have  been 
produced,  Held,  that  he  could  and  should  have 
produced  the  evidence  originally.     Id. 

2735.  Where  a  motion  to  reopen  an  inter- 
ference to  take  further  testimony  does  not 
set  forth  the  facts  to  which  the  proposed  wit- 
nesses will  testify.  Held,  that  the  motion  will 
not  be  granted.  Robinson  v.  Townsend  v. 
Copeland,  C.  D.  1902,  100  O.  G.  683. 

2736.  A  motion  to  reopen  an  interference 
after  a  decision  on  priority  to  permit  a  party 
to  strengthen  his  case  by  presenting  evidence 
which  could  and  should  have  been  presented 
before  will  not  be  granted.  Harris  v.  Stem 
and  Lotz,  C.  D.  1902,  101  O.  G.  1132. 

2737.  In  order  to  warrant  the  reopening  of 
an  interference  to  take  further  testimony  al- 
leged to  be  newly  discovered,  it  must  appear 
that  the  party  in  whose  behalf  the  testimony 
is  desired  to  be  taken  has  exercised  due  dili- 
gence in  his  search  for  it,  and,  further,  that 
it  is  material  to  the  case.  Robinson  v.  Town- 
send  V.  Copeland,  C.  D.  1902,  101  O.  G.  IGll. 

2738.  Where  a  party  fails  to  adduce  certain 
evidence  in  his  possession  because  he  does 
not  regard  it  as  material,  he  cannot  afterward 
have  the  case  reopened  for  the  purpose  of 
introducing  it  because  a  tribunal  of  the  office 
may  have  regarded  it  as  material.  After  a 
case  has  gone  to  final  hearing  it  is  an  injus- 
tice to  the  office,  as  well  as  to  the  victorious 
party,  to  reopen  the  case  and  give  it  entirely 
new  consideration  merely  because  the  defeated 


party  has  failed  to  realize  that  facts  which 
were  at  all  times  within  his  possession  were 
material  to  a  determination  of  the  case.  Rob- 
erts V.  Bachelle,  C.  D.  1902,  101  O.  G.  1831. 

2739.  Where  after  a  decision  on  priority 
a  motion  is  made  to  reopen  the  interference 
to  take  testimony  to  explain  certain  apparent 
alterations  in  exhibits  in  evidence  which  were 
regarded  as  discrediting  the  exhibits.  Held, 
that  the  motion  will  be  denied.  Blackman  v. 
Alexander,  C.  D.  1903,  104  O.  G.  2441. 

2740.  Where  an  applicant  files  an  applica- 
tion for  the  express  purpose  of  obtaining  an 
interference  with  a  patent.  Held,  that  he  will 
be  required  to  exercise  diligence  in  gathering 
and  presenting  all  his  testimony  in  the  time 
originally  given  him  for  that  purpose.  French 
v.  Halcomb,  C.  D.  1904,  110  O.  G.  1727. 

2741.  Where  the  showing  consists  of  an  af- 
fidavit that  the  reason  why  the  evidence  was 
not  introduced  was  that  the  moving  party 
failed  to  recollect  it.  Held,  that  such  a  ground 
for  reopening  is  intangible,  in  the  knowledge 
solely  of  the  party  who  desires  to  introduce 
it,  is  therefore  incapable  of  rebuttal,  and  is  an 
insufficient  showing.     Id. 

2742.  Where  it  appears  that  an  inventor 
knew  of  the  whereabouts  of  a  certain  exhibit 
before  he  took  testimony  and  did  not  attempt 
to  produce  the  exhibit  at  that  time  because 
he  did  not  deem  it  expedient  to  expend  the 
money  necessary  to  obtain  the  same,  but  chose 
to  proceed  to  take  the  testimony,  supposing 
that  he  was  in  the  possession  of  sufficient  evi- 
dence to  establish  his  case.  Held,  that  the 
case  should  not  be  reopened  to  permit  the 
introduction  of  the  exhibit,  as  the  same  does 
not  constitute  newly-discovered  evidence. 
Greuter  v.  Mathieu,  C.  D.  1904,  111  O.  G.  582. 

2743.  Where  it  appears  that  an  inventor  was 
diligently  in  search  of  a  witness  during  the 
time  that  he  took  testimony  and  he  was  unable 
at  that  time  to  procure  the  attendance  of  that 
witness,  Held,  that  a  motion  should  have  been 
brought  to  extend  the  times  for  taking  testi- 
mony, accompanied  with  a  showing  of  facts 
to  warrant  such  extension,  and  that  an  inter- 
ference will  not  be  reopened  for  the  purpose 
of  taking  the  testimony  of  this  witness  where 
it  appears  that  the  inventor  instead  of  taking 
that  course  deliberately  chose  to  proceed  with 
the  taking  of  testimony,  with  the  hope  that 
the  testimony  would  be  found  sufficient  to  es- 
tablish his  case,  and  also  where  it  appears  that 
the  testimony  to  be  given  by  the  new  witness 


:>.or, 


INTERFERENCE,  XXXIX,  2. 


is  merely   cumulative  of   that  already   in   the 
case.    Id. 

2744.  Where  the  question  of  priority  of  in- 
vention has  been  decided  in  favor  of  the  se- 
nior party  on  the  ground  that  the  junior  party 
has  failed  to  file  his  testimony  within  the 
time  assigned  for  that  purpose,  Held,  that  the 
case  will  not  be  reopened  and  the  junior  party 
permitted  to  file  his  testimony  when  it  appears 
that  the  testimony  which  has  been  taken  re- 
lates in  no  way  to  the  question  of  priority  of 
invention,  but  solely  to  the  right  of  the  oppo- 
sing party  to  make  the  claims  of  the  issue. 
Osborn  v.  Austin,  C.  D.  1905,  115  O.  G.  1065. 

2745.  Where  after  decision  upon  priority  the 
losing  party  moves  that  case  be  reopened  to 
take  new  testimony  in  view  of  a  newly-found 
letter  which  is  alleged  to  relate  to  the  inven- 
tion, but  the  letter  itself  does  not  bring  to 
light  anything  which  might  change  the  orig- 
inal conclusion.  Held,  that  the  motion  will  be 
denied.  Ball  v.  Flora,  C.  D.  1905,  117  O.  G. 
20S8. 

2746.  Where  decision  upon  priority  has  been 
rendered  by  each  of  the  tribunals  of  the  pat- 
ent office  and  notice  given  of  appeal  to  the 
court  of  appeals,  Held,  that  the  showing  which 
would  justify  reopening  the  case  to  take  fur- 
ther testimony  must  make  it  clearly  and  cer- 
tainly appear  that  reopening  is  essential  to 
the  ends  of  justice.     Id. 

2747.  Where  motion  to  reopen  case  is  based 
upon  newly-discovered  evidence  and  it  is  also 
proposed  to  take  additional  testimony  as  to 
certain  matters  said  to  be  indefinitely  brought 
out  in  the  original  testimony.  Held,  that  as 
there  is  no  apparent  connection  between  the 
letter  and  the  testimony  said  to  be  ambiguous 
the  finding  of  the  letter  does  not  justify  re- 
opening the  case  for  taking  testimony  supple- 
mentary to  such  originally  ambiguous  testi- 
mony.    Id. 

2748.  Where  the  testimony  in  an  interfer- 
ence refers  to  a  certain  exhibit  which  is  not 
introduced  in  evidence,  although  its  where- 
abouts is  known,  and  the  interference  is  re- 
opened for  the  purpose  of  taking  an  additional 
deposition  to  properly  connect  such  exhibit 
with  the  original  testimony,  the  interference 
will  not  be  reopened  a  second  time  because 
of  the  insufficiency  of  such  deposition.  Au- 
tenrieth  and  Kane  v.  Sorensen,  C.  D.  1906, 
120  O.  G.  1164. 

2749.  Where  the  examiner  of  interferences 
denied    a   motion   to   reopen   the   interference 


for  the  purpose  of  introducing  testimony  given 
by  one  of  the  parties  as  a  witness  in  another 
proceeding  and  which,  it  is  claimed,  tends  to 
discredit  his  testimony  in  the  present  inter- 
ference, Held,  that  in  the  absence  of  a  show- 
ing of  an  abuse  of  discretion  by  the  examiner 
of  interferences  his  decision  will  not  be  dis- 
turbed on  interlocutory  appeal;  but  should  it 
appear  on  consideration  of  the  entire  record 
on  appeal  that  the  decision  on  priority  would 
be  changed  the  case  may  be  reopened  to  admit 
the  said  testimony.  Dunl)ar  v.  Schellenger, 
C.   D.   1906,   121  O.  G.   260:!. 

2750.  Where  it  appeared  that  a  substitute 
attorney  because  of  his  unfamiliarity  with  the 
case  closed  his  proofs  without  the  introduc- 
tion of  evidence  necessary  to  the  success  of 
his  cause  and  the  examiner  of  interferences 
thereupon  reopened  the  proofs  and  set  new 
times  for  taking  testimony,  Held,  that  the  case 
is  not  of  such  peculiar  difficulty  as  to  consti- 
tute an  exception  to  the  general  rule  that  de- 
cisions by  the  examiner  of  interferences  ex- 
tending times  for  taking  testimony  will  not 
be  reviewed  on  appeal.  Dalton  v.  Hopkins  v. 
Newman,  C.  D.  1906,  321  O.  G.  2666. 

2751.  An  interference  will  not  be  reopened 
after  testimony  has  been  taken  and  a  decision 
on  priority  rendered  thereon  for  the  purpose 
of  introducing  evidence  tending  to  show  that 
the  invention  in  issue  was  first  invented  by  a 
third  party.  Dunbar  v.  Schellenger,  C.  D. 
1906,  125  O.  G.  348. 

2752.  Where  an  inventor,  testifying  in  his 
own  behalf,  states  that  he  constructed  a  four- 
relay  telephone  system  upon  a  certain  date 
and  he  subsequently  testifies  in  an  interference 
between  entirely  different  parties  that  under 
the  direction  of  one  of  said  parties  he  set  up 
a  three-relay  telephone  system  at  an  earlier 
date  and  it  appears  that  some  of  his  claims  in- 
volved in  the  issue  are  broad  enough  to  cover 
both  systems,  Held,  that  the  interference  will 
not  be  reopened  for  the  taking  of  further 
proofs  on  the  theory  that  the  inventor's  later 
testimony  tends  to  show  that  his  first  testi- 
mony was  false.  The  testimony  in  the  two 
cases  is  not  necessarily  inconsistent,  as  the 
inventor  was  testifying  to  the  construction  of 
specific  devices  without  regard  to  the  broad 
invention  common  to  both.    Id. 

2753.  An  interference  will  not  be  reopened 
for  the  purpose  of  introducing  newly-dis- 
covered evidence  where  it  does  not  appear 
that   the   evidence   could   not   have   been   dis- 


INTERFERENCE,  XXXIX,  3. 


397 


covered  at  the  time  of  taking  testimony.    Lat- 
shaw  V.  Duff  V.  Kaplan,  C.  D.  1907,  130  O.  G. 

980. 

2754.  An  appeal  from  the  e.xaminers-in-chief 
will  not  be  reheard  for  the  purpose  of  consid- 
ering a  patent  of  one  of  the  parties  to  the  in- 
terference which  is  not  in  evidence.     Id. 

2755.  A  practice  which  would  allow  a  con- 
testant to  experimentally  conduct  his  case  to 
a  probable  failure  and  then  permit  him  after 
consultation  and  with  competent  assistance 
to  make  further  endeavors  to  show  what  he 
could  and  should  have  earlier  shown  with  such 
assistance  would  be  contrary  to  all  well-estab- 
lished rules  and  legal  principles.  Standard 
Import  Co.,  Ltd.  v.  New  Orleans  Import  Co., 
Ltd.,  C.  D.  1907,  131  O.  G.  1164. 

2756.  The  fact  that  a  motion  to  reopen  an 
interference  to  take  additional  evidence  was 
brought  before  final  hearing  is  no  reason  why 
it  should  be  granted.     Id. 

2757.  A  motion  to  reopen  an  interference 
for  the  purpose  of  taking  further  testimony 
with  respect  to  a  blueprint  which  is  in  evidence 
as  an  exhibit  was  properly  denied  where  it  ap- 
peared that  the  moving  party  had  had  an  op- 
portunity during  the  taking  of  the  testimony  to 
adduce  all  the  material  evidence  concerning 
the  exhibit  and  it  did  not  appear  that  the  ad- 
mission of  the  proposed  testimony  would  in 
any  way  modify  the  decision.  Struble  v. 
Young  and  Townsend  v.  Sawyer,  C.  D.  1909, 
139  O.  G.  729. 

2758.  On  a  motion  to  remand  an  interfer- 
ence to  the  examiner  of  interferences  to  re- 
open the  same  and  take  further  testimony, 
Held,  that  while  motions  to  reopen  an  inter- 
ference and  take  further  testimony  should 
generally  be  heard  and  determined  in  the  first 
instance  by  the  examiner  of  interferences 
(Robinson  v.  Townsend  v.  Copeland,  C.  D. 
1003,  327,  106  O.  G.  997)  it  is  well  settled  that 
in  order  to  justify  remanding  the  case  to  the 
examiner  of  interferences  the  moving  party 
should  make  out  a  frima  facie  case.  (Estes 
V.  Cause,  C.  D.  1899,  164,  88  O.  G.  1336.) 
Otis  V.  Ingoldsby  and  Bowling,  C.  D.  1909, 
143  O.  G.  1346. 

2759.  The  fact  that  the  junior  party  took  no 
testimony,  but  relied  on  his  contention  that 
the  senior  party  had  no  right  to  make  the 
claims,  and  the  further  fact  that  on  appeal 
the  examiners-in-chief  reversed  the  holding 
of  the  primary  examiner  and  the  examiner  of 
interferences  that  the  senior  party  had  a  right 


to  make  the  claims.  Held,  to  constitute  no 
ground  for  reopening  the  case  to  allow  the 
senior  parties  to  take  testimony  on  the  ques- 
tion of  their  right  to  make  the  claims,  which 
testimony  was  in  their  possession  and  could 
have  been  taken  within  the  time  set.     Id. 

2760.  "Motions  to  reopen  an  interference 
and  take  further  testimony  should  generally 
be  heard  and  determined  in  the  first  instance 
by  the  examiner  of  interferences;  but  it  is 
well  settled  that  in  order  to  justify  restoring 
the  jurisdiction  of  the  examiner  of  interfer- 
ences to  consider  such  a  motion  the  moving 
party  should  make  out  a  t'rima  facie  case." 
Rolfc  V.  Leeper,  C.  D.  1910,  159  O.  G.  991. 

2761.  Where  a  junior  party  to  an  interfer- 
ence, who  had  taken  no  testimony  but  his 
own,  brought  a  motion,  after  the  time  set  for 
taking  testimony  had  expired,  to  extend  the 
time  for  final  hearing,  which  the  examiner  of 
interferences  denied,  and  two  months  later 
he  brought  a  motion  to  restore  the  jurisdic- 
tion of  the  examiner  of  interferences  to  con- 
sider a  motion  to  reopen  the  interference, 
Held,  that  in  the  absence  of  any  showing  why 
a  motion  for  an  extension  of  time  was  not 
brought  in  the  first  instance  and  of  any  ex- 
cuse for  the  delay  after  the  decision  of  the 
examiner  of  interferences  jurisdiction  would 
not  be  restored.    Id. 

3.  Newly  Discovered  Evidence. 

2762.  Where  motion  is  made  to  reopen  the 
interference  for  the  admission  of  alleged 
"newly-discovered  evidence,"  but  it  appears 
that  much  of  said  evidence  is  not  properly 
"newly-discovered"  and  that  no  satisfactory 
excuse  has  been  made  for  the  delay  in  bring- 
ing the  motion,  Held,  that  the  motion  was 
properly  denied.  Newell  v.  Clifford  v.  Rose, 
C.  D.  1906,  125  O.  G.  665. 

2763.  Where  appeal  is  taken  from  the  ad- 
verse decision  of  the  examiner  of  interfer- 
ences on  motion  to  reopen  the  interference 
for  the  admission  of  additional  evidence  after 
a  decision  has  been  rendered  by  him  on  prior- 
ity and  said  appeal  is  accompanied  by  a  re- 
quest that  consideration  of  the  appeal  on  the 
motion  be  held  in  abeyance  until  the  case 
reaches  the  commissioner  on  appeal  on  pri- 
ority, Held,  that  if  the  interference  is  to  be 
reopened  at  all  it  should  be  done  at  once  and 
not  delayed  until  appellant  has  had  an  oppor- 
tunity  to  test  the  sufficiency  of   the  present 


398 


INTERFERENCE,  XL. 


record  before  the  various  appellate  tribunals. 
Id. 

2764.  Where  an  interference  had  been  de- 
cided adversely  to  C.  upon  the  ground  that 
although  first  to  conceive  he  had  concealed 
the  invention  and  had  thereby  lost  his  rights 
to  a  patent  under  the  doctrine  stated  in  Mason 
V.  Hepburn  (C.  D.  1898,  r,10,  84  O.  G.  147), 
and  it  is  alleged  that  it  was  found  after  the 
termination  of  the  interference  that  an  earlier 
application  by  C.  disclosed  the  invention  in 
issue,  Held,  that  such  circumstances  do  not 
justify  the  reopening  of  the  interference  to 
include  said  earlier  application,  since  the  al- 
leged newly-discovered  evidence  is  such  as 
might  have  been  utilized  in  the  original  inter- 
ference, and  that  for  this  reason  the  case  is 
res  odjudicata  under  the  doctrine  stated  in 
Blackford  v.  Wilder  (C.  D.  1907,  491,  127  O. 
G.  1235),  and  Horinc  v.  Wende  (C.  D.  1907, 
615,  129  O.  G.  2858).  Cutler  v.  Hall,  C.  D. 
1908,  135  O.  G.  449. 

2765.  Where  counsel  was  of  the  opinion  that 
certain  testimony  which  it  was  proposed  to 
take  might  be  introduced  in  rebuttal  and  after 
the  expiration  of  the  time  set  for  taking  re- 
buttal testimony,  upon  a  motion  to  extend 
such  time,  the  examiner  of  interferences  de- 
nied the  motion,  upon  the  ground  that  the 
testimony  sought  to  be  taken  was  not  proper 
rebuttal,  but  was  part  of  the  case  in  chief,  and 
thereupon  a  motion  to  reopen  the  case  was 
filed  for  the  purpose  of  taking  such  testimony 
as  newly-discovered  evidence.  Held,  that  the 
excuse  for  the  delay  was  insufficient.  Crescent 
Oil  Company  v.  W.  C.  Robinson  &  Son  Com- 
pany, C.  D.  1909,  142  O.  G.  1113. 

2766.  In  order  to  warrant  the  grant  of  a 
motion  to  take  newly-discovered  evidence,  it 
must  appear  that  the  proposed  evidence  is 
material.    Id. 

XL.  Reissue  Application. 

2767.  Where  Austin  contended  that  Wins- 
low  is  estopped  from  asserting  his  right  to 
the  subject-matter  of  the  issue,  as  claims  cov- 
ering the  matter  were  presented  in  an  original 
application  and  after  rejection  on  references 
were  canceled.  Held,  that  while  it  is  well 
settled  that  claims  contained  in  the  reissue 
patent  which  were  asserted  in  the  original 
application,  but  were  rejected  and  canceled, 
will  not  be  sustained  by  the  courts,  and  there- 
fore should  not  be  allowed  by  the  office,  yet 
this  question   is   one   between   tb?  public  and 


the  applicant  making  the  claims.  This  ques- 
tion of  estoppel  has  no  bearing  upon  the  ques- 
tion of  priority,  the  question  for  considera-  • 
tion  in  an  interference  proceeding,  and  there- 
fore will  not  be  considered  here.  (Hoeveler 
et  al.  V.  Verner  et  al.,  43  MS.  Dec,  444,  448.) 
Austin  V.  Winslow,  C.  D.  1898,  83  O.  G.  1991. 

2768.  Where  it  is  contended  on  a  motion  to 
dissolve  on  the  ground  of  irregularity  in  the 
declaration  that  a  reissue  application  does  not 
cover  the  same  invention  as  the  original  pat- 
ent and  this  motion  is  denied.  Held,  that  the 
question  involves  the  right  of  a  party  to  make 
the  claim  and  no  appeal  lies  from  a  favorable 
decision  on  that  question.  Holt  v.  Ingersoll, 
C.  D.   1898,  84  O.  G.  1873. 

2769.  The  rules  do  not  expressly  provide  for 
an  interference  between  an  application  for  the 
reissue  of  an  unexpired  patent  and  a  patent 
granted  on  an  application  filed  subsequent  to 
the  grant  of  the  patent  sought  to  be  reissued, 
and  it  is  open  to  doubt  whether  such  an  in- 
terference should  ordinarily  be  declared.     Id. 

2770.  Where,  however,  H.'s  application  was 
withheld  from  issue  for  long  time  in  view  of 
a  probable  interference  with  certain  rejected 
claims  in  I.'s  reissue  application,  but  was 
finally  passed  to  issue  in  view  of  I.'s  unrea- 
sonable delay  in  taking  an  appeal  from  the 
rejection  of  his  claims,  Held,  that  I.  cannot 
take  advantage  of  his  own  delay  until  H.'s 
patent  issued  and  thus  avoid  a  contest  on  the 
question  of  priority.  L'nder  the  circumstances 
the  interference  was  properly  declared.     Id. 

2771.  Paragraph  7  of  Rule  94  does  not  mean 
that  an  interference  must  be  declared  between 
a  reissue  application  and  an  unexpired  patent 
merely  because  the  original  applications  were 
pending  at  the  same  time  and  the  reissue  ap- 
plicant filed  an  affidavit  showing  that  he  made 
the  invention  before  the  original  application 
of  the  patentee  was  filed,  regardless  of  wheth- 
er the  reissue  applicant  is  entitled  to  have  his. 
patent  reissued.  It  does  not  mean  that  the 
interference  must  be  declared  merely  because 
the  applications  were  pending  concurrently. 
Boyer  v.  Breitenstein,  C.  D.  1900,  91  O.  G. 
1801. 

2772.  Before  an  interference  is  declared 
under  paragraph  7  of  Rule  94  the  examiner 
should  determine  affirmatively  that  under  all 
the  authorities  governing  reissues  the  reissue 
applicant  is  entitled  to  have  his  patent  reis-. 
sued.     Id. 


INTERFERENCE,  XL. 


399 


2773.  Where  a  reissue  application  is  in- 
volved in  an  interference  with  a  patent,  Held, 
that  the  application  is  regarded  as  a  continu- 
ation of  the  original  application  and  that  the 
party  is  entitled  to  the  date  of  that  original 
application  for  a  constructive  reduction  to 
practice.  *Austin  v.  Johnson  et  al.,  C.  D. 
1901,  95  O.  G.  2685. 

2774.  Where  a  patentee  involved  in  an  in- 
terference reissues  his  patent  omitting  the 
claims  of  the  issue  and  the  examiner  of  in- 
terferences renders  judgment  against  him  on 
the  ground  that  he  has  abandoned  the  inven- 
tion, Held,  that  the  examiner's  decision  will 
not  be  reviewed  by  the  commissioner  on  peti- 
tion, since  the  remedy  is  by  appeal  to  the 
examiners-in-chief.  Lattig  and  Goodrum  v. 
Dean,  C.  D.  1904,  111  O.  G.  301. 

2775.  While  it  was  irregular  and  improper 
to  permit  a  patentee  to  reissue  his  patent  dur- 
ing the  progress  of  an  interference,  the  ques- 
tion whether  that  reissue  omitting  the  claims 
of  the  issue  amounts  to  an  abandonment  of 
the  invention  is  a  matter  involving  the  merits 
and  is  appealable  to  the  examiners-in-chief. 
Id. 

2776.  Where  an  interference  is  declared  be- 
tween a  patentee  and  an  applicant  and  during 
the  pendency  of  the  interference  the  patentee 
obtains  a  reissue  patent  from  which  are  omit- 
ted the  claims  corresponding  to  the  issue, 
Held,  that  this  action  of  the  patentee  in  sur- 
rendering to  the  public  the  right  to  the  claims 
corresponding  to  the  issue  of  the  interference 
cannot  be  regarded  in  any  other  light  than  a 
formal  written  abandonment  of  the  invention 
of  the  issue,  and  priority  of  invention  as  to 
the  issue  should  be  awarded  to  the  applicant. 
(Rule  125.)  Lattig  and  Goodrum  v.  Dean, 
C.  n.  1905,  115  O.  G.  505. 

2777.  Where  during  interference  proceed- 
ings between  applicant  and  patentee  the  pat- 
entee reissues  the  patent  in  interference  with- 
out the  interfering  claims.  Held,  that  the  ex- 
aminer of  interferences  was  without  jurisdic- 
tion to  render  any  judgment  for  or  against 
cither  party,  as  the  patent  office  had  ousted 
itself  of  jurisdiction  by  extinguishing  the  pat- 
ent in  interference  through  the  reissue  there- 
of. *Lattig  and  Goodrum  v.  Dean,  C.  D. 
1905,   117  O.  G.   1798. 

2778.  Where  during  interference  proceed- 
ings between  applicant  and  patentee  the  pat- 
entee applies  for  and  obtains  reissue  of  the 
patent  in  interference  and  the  interfering 
claims  are  omitted  from  the  reissue  and  there- 


after decisions  awarding  priority  in  said  in- 
terference proceeding  are  rendered  in  the  pat- 
ent office  and  appeal  is  taken  to  the  court  of 
appeals.  Held,  that  the  court,  equally  with  the 
various  tribunals  of  the  patent  office,  is  with- 
out legal  authority  to  render  any  judgment 
for  the  relief  of  either  party  and  that  the  ap- 
peal must  be  dismissed.     *Id. 

2779.  Rule  125  of  the  Rules  of  Practice  of 
the  patent  office,  if  interpreted  to  require  judg- 
ment to  be  rendered  upon  priority  of  inven- 
tion after  the  patent  involved  in  interference 
has  been  extinguished,  would  conflict  with  the 
statutes  as  interpreted  by  the  courts  and  be 
invalid ;  but  a  fair  interpretation  of  said  rule 
does  not  prevent  dissolution  of  interference 
without  judgment  of  priority  under  such  con- 
ditions.    *Id. 

2780.  Where  the  senior  party  to  an  inter- 
ference is  an  applicant  for  reissue  and  pre- 
sents no  evidence  of  possession  of  the  inven- 
tion in  issue  at  a  date  earlier  than  the  filing 
of  the  junior  party's  application  except  the 
original  application  for  the  patent  upon  which 
the  reissue  application  is  based  and  the  ex- 
aminer of  interferences  is  of  the  opinion  that 
the  original  application  does  not  disclose  the 
invention.  Held,  that  he  should  make  his  opin- 
ion the  basis  of  a  judgment  upon  priority  of 
invention  instead  of  directing  attention  to  the 
matter  under  Rule  126,  as  has  previously  been 
the  practice.  Brown  v.  Hodgkinson,  C.  D. 
1906,  123  O.  G.  2973. 

2781.  As  stated  by  the  court  of  appeals  in 
Podlesak  and  Podlesak  v.  Mclnnerney  (ante, 
558,  120  O.  G.  2127),  a  decision  holding  erro- 
neously that  one  party  has  a  right  to  make 
claims,  if  not  set  aside,  will,  under  conditions 
similar  to  those  in  the  present  case,  result  in 
the  grant  of  a  patent  to  one  who  is  not  the 
first  inventor,  and  in  such  a  case  the  question 
should  not  be  finally  determined  by  the  pri- 
mary examiner  who  declared  the  interference, 
but  should  be  decided  by  the  examiner  of  in- 
terferences and  made  the  basis  of  his  decision 
on  priority  of  invention.     Id. 

2782.  Where  it  appeared  in  an  interference 
proceeding  between  a  patent  and  an  applica- 
tion for  the  reissue  of  a  patent  that  the  re- 
issue applicant  is  not  entitled  to  make  the 
claim  because  it  is  not  for  the  same  invention 
intended  to  be  secured  in  the  original  patent, 
the  decision  on  priority  was  awarded  in  favor 
of  the  patentee.  *Nelson  v.  Felsing  and  Fel- 
sing  V.  Nelson,  C.  D.  1909,  142  O.  G.  289. 


•JOl) 


INTERFERENCE,  XLI. 


2783.  Held,  that  in  an  interference  involv- 
ing an  application  for  the  reissue  of  a  patent 
the  court  of  appeals  of  the  District  of  Colum- 
bia has  no  jurisdiction  to  pass  upon  the  ques- 
tion whether  such  intervening  rights  exist  as 
will  constitute  a  ground  for  refusing  the  re- 
issue. (Skinner  v.  Carpenter,  166  O.  G.  1281, 
construed.)  *Norling  v.  Hayes,  C.  D.  1911, 
166  O.  G.  1282. 

2784.  Held,  that  in  an  interference  involving 
a  reissue  application  the  question  whether 
such  intervening  rights  exist  as  will  consti- 
tute a  ground  for  refusing  the  reissue  will  not 
be  considered  (citing  Norling  v.  Hayes,  166 
O.  G.  1282).  *Frost  v.  Chase,  C.  D.  1011,  169 
O.  G.  945. 

XLI.  Renew.^l  Applic.'\tion. 

2785.  As  between  an  applicant  resting  on  a 
mere  constructive  reduction  to  practice,  espe- 
cially where  his  application  is  a  renewal  of  a 
forfeited  application,  and  a  party  who  is  really 
the  first  inventor  and  to  whom  a  patent  has 
been  issued  for  the  invention,  Held,  that  pri- 
ority must  be  found  for  the  patentee.  *Chris- 
tensen  v.  Noyes,  C.  D.  1900,  90  O.  G.  223. 

2786.  Ilcld.  further,  that  the  mere  construc- 
tive reduction  to  practice  cannot  be  set  up  to 
defeat  an  existing  patent  granted  to  the  first 
inventor.  A  patent  stands  for  something  more 
than  a  mere  written  description  of  an  inven- 
tion, and  against  a  pending  application  for 
the  same  invention  resting  upon  no  better 
foundation  than  a  constructive  reduction  to 
practice  the  patent  must  prevail.    *Id. 

2787.  Noyes  filed  his  application  on  May  13, 
180,'>,  which  was  allowed  November  26,  1895, 
and  became  forfeited  on  May  26,  1896,  by 
failure   to   pay   the   final    fee.     On    April   30, 

1896,  Christensen  filed  his  application,  upon 
which  a  patent  issued  April  20,  1897.  Noyes 
filed  a  renewal  of  his  application  on  June  28, 

1897,  after  the  patent  had  issued  to  Christen- 
sen. Christensen  proved  that  he  was  the 
first  to  conceive  the  invention.  Noyes 
did  not  reduce  to  practice  in  any  form 
prior  to  the  filing  of  his  application. 
Held,  that  priority  of  invention  should  be 
awarded  to  Christensen.  (65  MS.  Dec,  472, 
deversed.)     *Id. 

2788.  Because  Noyes,  the  second  party  to 
conceive,  was  the  first  to  file  an  allowable  ap- 
plication, which  application  was  passed  and 
allowed,  though  it  became  forfeited,  he  does 
not   obtain  a  superior   right  to   priority  over 


Christensen  upon  the  renewal  or  second  ap- 
plication filed  within  the  time  authorized  by 
the  statutes,  notwithstanding  that  Christen- 
sen was  the  first  inventor  and  that  within  he 
time  that  the  application  of  Noyes  stood  as  for- 
feited a  patent  had  been  issued  to  Christensen. 
♦Christensen  v.  Noyes,  C.  D.  1900,  90  O.  G. 
237. 

2789.  The  forfeited  application  of  Noyes 
conferred  no  right  except  that  of  renewal  in 
the  manner  and  within  the  time  prescribed, 
and  the  renewed  application  conferred  no 
right  in  addition  to  that  of  the  first  applica- 
tion. It  certainly  conferred  no  right  as  against 
a  prior  inventor  who  happened  to  file  his  ap- 
plication subsequent  to  that  of  the  second  in- 
ventor.   *Id. 

2790.  The  first  applicant  could  only  acquire 
an  inchoate  right  as  against  a  prior  inventor, 
dependent  upon  it  being  made  to  appear  that 
the  first  inventor  had  either  abandoned  his  in- 
vention or  lost  the  right  to  it  by  the  want  of 
reasonable  diligence  in  perfecting  it  and  mak- 
ing application  for  a  patent.     *Id. 

2791.  Whether  the  first  application  was  for- 
feited or  not,  or  supposing  it  had  been  re- 
newed before  the  patent  was  issued  to  the  first 
inventor,  or  even  if  the  patent  had  been  issued 
on  the  first  application,  the  first  inventor  upon 
showing  a  compliance  with  the  requirement  of 
the  statute  would  be  entitled  to  a  patent  for 
his  invention,  and  he  could  not  be  deprived 
of  his  right  of  priority  by  any  mere  technical 
rule  of  procedure  adopted  in  the  patent  office. 
*Id. 

2792.  After  reviewing  the  facts  in  the  case, 
Held,  that  Christensen  was  entitled  to  priority 
of  invention,  and  the  motion  for  rehearing 
denied.     *Id. 

2793.  The  description  and  drawings  filed  in 
the  patent  office  as  part  of  an  application,  as 
against  an  existing  patent  issued  to  the  first 
inventor,  cannot  be  accepted  as  an  actual  re- 
duction to  practice.  *Christensen  v.  Noyes, 
C.  D.  1900,  90  O.  G.  223. 

2794.  If  such  written  description,  illustrated 
by  drawings,  will  not  be  allowed  to  defeat  or 
affect  a  subsequent  patent  issued  to  an  inde- 
pendent inventor,  a  fortiori  will  not  such  de- 
scription and  illustrative  drawings  be  allowed 
to  defeat  or  affect  a  patent  granted  to  the 
first  or  prior  inventor  after  the  forfeiture  of 
an  application  first  filed,  but  on  a  subsequent 
conception  of  the  invention.    *Id. 


INTERFERENCE,  XLII. 


401 


2795.  Generally  in  the  case  of  a  forfeited 
application  and  the  filing  of  a  second  or  re- 
newed application  within  two  years,  the  in 
ventor  may,  under  proper  circumstances,  be- 
come entitled  to  the  original  or  forfeited  ap- 
plication as  a  constructive  reduction  to  prac- 
tice.    *Id. 

2796.  Where  an  application  is  allowed  and 
becomes  forfeited  through  a  failure  to  pay 
the  final  fee  within  six  months  and  during  the 
time  that  it  is  forfeited  an  application  is  filed 
by  another  party  covering  the  same  invention 
and  a  patent  is  granted  thereon,  Held,  that  in 
an  interference  between  the  patent  and  a  re- 
newal of  the  first  application  the  burden  of 
proof  is  upon  the  applicant  notwithstanding 
the  earlier  date  of  his  first  application.  Asen- 
cio  V.  Russell,  C.  D.  1902,  99  O.  G.  2321. 

2797.  Where  an  application  is  allowed,  for- 
feited, and  renewed.  Held,  that  the  applicant 
is  entitled  to  his  original  filing  date  for  a  con- 
structive reduction  to  practice.  Woods  v. 
Waddell,  C.  D.  1903,  106  O.  G.  2017. 

2798.  Where  an  application  is  allowed  and 
is  forfeited  by  a  failure  to  pay  the  final  fee 
and  before  the  case  is  abandoned  a  second  ap- 
plication is  filed  for  the  same  invention,  Held. 
that  the  applicant  is  entitled  to  his  first  filing 
date  for  a  constructive  reduction  to  practice 
of  the  invention.  *Lotterhand  v.  Hanson,  C. 
D.  1904,  110  O.  G.  861. 

2799.  Where  during  the  time  that  an  appli- 
cation is  forfeited  another  party  files  an  ap- 
plication for  the  same  invention  which  goes  to 
patent.  Held,  that  in  an  interference  between 
the  patent  and  a  renewal  of  the  first  applica- 
tion the  burden  of  proof  is  upon  the  appli- 
cant notwithstanding  the  earlier  date  of  the 
first  application.  Lutz  v.  Lewis,  C.  D.  1904, 
110  O.  G.  2014. 

2800.  The  burden  of  proof  should  not  be 
placed  upon  the  patentee  even  though  his  pre- 
liminary statement  alleges  a  date  of  concep- 
tion subsequent  to  the  applicant's  original 
filing  date.     Id. 

XLII.  Second  .'\ppucation  on  Same  Subject. 

2801.  The  practice  of  the  defeated  party  to 
an  interference  attempting  to  retry  the  inter- 
ference by  filing  or  having  filed  in  his  behalf 
another  application  or  by  amending  an  appli- 
cation, and  thus  delaying  the  issue  of  a  patent 
to  the  successful  party  to  the  first  interfer- 
ence, cannot  be  too  strongly  condemned.  Bech- 
man  v.  Wood,  C.  D.  1899,  87  O.  G.  1073. 

26 


2802.  Where  two  parties  are  involved  in  an 
interference  and  one  of  them  files  a  second 
application  containing  allowable  claims  which 
the  other  party  could  make  and  it  appears 
that  the  decision  in  the  interference  cannot 
settle  the  question  of  priority  as  to  those 
claims.  Held,  that  the  jurisdiction  of  the  pri- 
mary examiner  will  be  restored  to  suggest  the 
claims  to  the  second  party  without  suspending 
the  interference.  Ex  parte  Robinson,  C.  D. 
1902,  98  O.  G.  792. 

2803.  Where  after  a  decision  against  him 
in  an  interference  a  party  files  a  new  appli- 
cation as  a  substitute  for  the  one  involved. 
Held,  that  he  is  entitled  to  take  any  action  in 
the  new  case  which  he  could  have  taken  in  the 
old  and  that  the  office  cannot  refuse  to  con- 
sider the  new  case.  Ex  parte  Schupphaus,  C. 
D.  1902,  100  O.  G.  2775. 

2804.  Where  an  interference  is  in  progress 
and  one  of  the  parties  files  a  second  applica- 
tion containing  claims  which  other  parties  to 
the  interference  could  make.  Held,  that  action 
upon  the  second  case  should  not  be 
suspended  indefinitely  to  await  a  deci- 
sion in  the  interference.  If  the  claims  are  not 
patentable  over  the  issue,  they  should  be  re- 
jected, and  if  they  are  materially  different 
they  should  be  suggested  to  the  other  parties 
and  a  second  interference  declared.  Ex  parte 
Robinson.  C.  D.  1903,  106  O.  G.  1242. 

2805.  Where  a  party  is  involved  in  an  in- 
terference and  files  a  second  application,  Held, 
that  as  to  the  second  application  the  subject- 
matter  of  the  interference  must  be  regarded 
as  equivalent  in  force  to  the  prior  art  pending 
a  final  determination  of  the  question  of  pri- 
ority.   Id. 

2806.  Where  an  application  is  filed  contain- 
ing claims  not  patentably  different  from  claims 
in  another  application  by  the  same  party  in- 
volved in  interference.  Held,  that  action  on 
the  second  case  may  be  suspended;  but  if  the 
applicant  insists  upon  action  upon  the  merits 
such  action  should  be  given,  treating  the  sub- 
ject-matter of  the  interference  as  part  of  the 
prior  art.  Ex  parte  McCormick,  C.  D.  1904, 
113  O.  G.  2508. 

2807.  Where  in  considering  an  application 
for  patent  the  court  has  ruled  that  the  evi- 
dence in  possession  of  the  office  showed  pub- 
lic use  of  the  invention  for  more  than  two 
years  before  the  filing  date,  Held,  that  the  of- 
fice is  justified  in  rejecting  a  subsequent  appli- 
cation by  the  same  party  claiming  the  same  de- 


402 


INTERFERENCE,  XLIII. 


vice  on  the  ground  of  public  use.     Ex  parte 
Tournier,  C.  D.  1904,  108  O.  G.  798. 

2808.  Where  public  use  is  shown  by  testi- 
mony regularly  taken,  Held,  that  its  effect 
cannot  be  overcome  by  ex  parte  affidavits,  but 
only  by  evidence  taken  in  the  regular  way.    Id. 

2809.  An  application  containing  process 
claims  will  not  be  withdrawn  from  issue  to 
await  the  result  of  an  interference  involving 
a  companion  application  containing  apparatus 
claims.  Ex  parte  Stuart,  C.  D.  1904,  113  O.  G. 
850. 

2810.  Where  a  party  whose  application  is 
involved  in  interference  proceedings  presents 
another  application  based  upon  the  invention 
involved  in  the  interference,  it  is  proper  to  re- 
fuse a  patent  upon  the  later  application  until 
the  interference  has  been  terminated.  In  such 
case  it  is  just  to  suspend  action  on  the  later 
application.  *In  re  Wickers  and  Furlong,  C. 
D.  1907,  129  O.  G.  2074. 

XLIII.  Second  Interference. 

2811.  Where  an  interference  is  dissolved  be- 
cause the  issue  is  not  patentable  and  one  party 
presents  an  amended  claim  which  he  asks  be 
substituted  for  the  issue,  Held,  that  the  re- 
quest was  properly  denied.  If  the  new  claim 
is  patentable  and  the  other  parties  make  it,  a 
new  interference  may  be  declared  and  the 
old  testimony  may  be  used  under  the  condi- 
tions specified  in  Rule  157.  Brooks  v.  Foote  v. 
Wenk,  C.  D.  1904,  108  O.  G.  287. 

2812.  A  single  interference  between  the 
same  parties  upon  the  same  applications  should 
be  sufficient  ordinarily,  and  a  second  interfer- 
ence should  be  necessary  only  under  very  ex- 
ceptional circumstances.  Sarfert  v.  Meyer, 
C.  D.  1904,  109  O.  G.  1885. 

2813.  Where  an  interference  was  decided  in 
favor  of  S.  because  of  limitations  in  the  issue, 
it  being  suggested  that  M.  was  the  first  in- 
ventor of  the  broad  invention,  and  where  in 
view  of  that  suggestion  a  second  interference 
was  declared  and  was  decided  in  favor  of  S., 
Held,  that  M.  is  not  entitled  to  present  other 
claims  and  contest  a  third  interference.  He 
is  estopped,  since  upon  entering  the  second 
interference  he  should  have  asserted  all  claims 
to  the  common  invention  which  he  wished  to 
contest  w'ith  S.     Id. 

2814.  The  declaration  of  a  second  interfer- 
ence between  the  same  applications  should  be 
necessary  only  in  rare  cases  and  under  very 


exceptional  circumstances.  It  should  not  or- 
dinarily be  declared  upon  claims  to  the  same 
device  and  differing  from  the  first  issue  merely 
in  scope.  Corry  and  Barker  v.  Trout  v.  Mc- 
Dermott,  C.  D.  1904,  110  O.  G.  306. 

2815.  The  office  is  justified  in  taking  the  de- 
cision as  to  priority  of  invention  as  prima 
facie  evidence  that  the  successful  party  was 
the  first  inventor  not  merely  of  the  particular 
issue  in  controversy,  but  of  the  invention  com- 
mon to  the  two  cases,  whether  more  broadly 
or  more  specifically  stated.     Id. 

2816.  To  justify  a  second  interference  be- 
tween the  same  parties  upon  claims  differing 
merely  in  scope,  the  burden  is  upon  the  defeat- 
ed party  to  show  special  circumstances  of  the 
particular  case  which  make  it  improper  to 
apply  the  first  decision  to  the  new  claims.    Id. 

2817.  The  question  which  party  made  the  in- 
vention first  does  not  become  a  new  question 
merely  because  the  invention  is  described  in 
different  words  in  a  new  claim.    Id. 

2818.  Where  Trout  was  defeated  in  an  in- 
terference with  Corry  and  Barker  relating  to 
the  present  invention,  the  issue  in  that  inter- 
ference differing  from  the  present  issue  mere- 
ly in  scope,  and  where  the  decision  did  not 
turn  upon  the  scope  of  the  issue,  Held,  that 
Trout  should  not  have  been  included  in  this 
interference.     Id. 

2819.  A  party  cannot  be  refused  the  right 
to  make  a  motion  for  dissolution  in  one  inter- 
ference on  the  ground  that  the  issue  is  not 
patentable  merely  because  he  has  contested  an 
interference  with  another  party  upon  the  same 
issue  without  making  a  motion  for  dissolution. 
Gray  v.  McKenzie  v.  McElroy,  C.  D.  1904,  113 
O.  G.  1968. 

2820.  Where  if  a  second  interference  is  de- 
clared it  must  be  regarded  as  due  to  the  fault 
of  the  successful  party  in  the  first  interfer- 
ence in  neglecting  to  present  certain  claims 
until  after  the  termination  of  the  first  inter- 
ference. Held,  that  said  successful  party 
should  not  be  heard  to  complain  because  of 
the  declaration  of  a  second  interference.  Ex 
parte  Cramer  and  Haak,  C.  D.  1908,  118  O. 
G.  1068. 

2821.  Where  upon  termination  of  interfer- 
ence new  claims  are  made  by  successful  party 
that  differ  from  the  issue  in  other  respects 
than  in  scope  and  the  defeated  party  already 
has  allowable  claims  relating  to  the  same  sub- 
ject-matter. Held,  that  the  new  claims  may  be 


INTERFERENCE,  XLIII. 


403 


properly  suggested  to  the  defeated  party  under 
Rule  96.     Id. 

2822.  Where  the  successful  party  to  an  in- 
terference inserts  broader  claims  and  his  pat- 
ent issues  containing  those  claims,  Held,  that 
the  defeated  party  may  contest  the  issue  of 
priority  of  invention  as  to  the  broad  claims 
upon  making  a  prima  facie  showing  that  he 
invented  the  broad  issue  prior  to  the  date 
established  by  the  successful  party.  Wende 
V.  Horine,  C.  D.  190.5,  118  O.  G.  1070. 

2823.  Where  a  second  interference  is  de- 
clared, Held,  that  the  primary  examiner  should 
not  on  motion  to  dissolve  attempt  to  decide 
priority  as  to  the  new  issue  from  the  evidence 
in  the  first  interference,  but  should  merely  de- 
termine whether  such  prima  facie  case  is  made 
for  the  defeated  party  as  justifies  continuing 
the  interference.    Id. 

2824.  Held,  that  the  presentation  after  ter- 
mination of  interference  of  new  claims  for 
the  purpose  of  securing  a  second  interference 
and  taking  new  proofs  is  objectionable  and 
should  not  be  permitted,  as  the  proofs  taken 
in  the  one  proceeding  should  be  sufficient  to 
determine  the  question  of  priority  as  to  the 
subject-matter  common  to  the  cases  involved. 
Phelps  V.  Wormley  v.  McCullough,  C.  D.  190.5, 
118  O.  G.  1069. 

2825.  Where  on  a  motion  for  dissolution  on 
the  ground  of  irregularity  in  declaration  the 
irregularity  is  stated  to  consist  in  declaring  a 
second  interference  on  claims  which  one  of 
the  parties  should  have  copied  under  Rule  109 
in  a  prior  interference  if  they  wanted  to  con- 
test the  same,  Held,  that  the  subject-matter 
for  consideration  is  not  properly  presented 
under  the  head  of  irregularity  in  declaration. 
Corey  v.  Eiseman  and  Misar,  C.  D.  1906,  123 
O.  G.  2003. 

2826.  Objection  that  a  second  interference 
should  not  have  been  declared  upon  claims 
which  one  of  the  parties  could  have  made 
under  Rule  109  in  a  prior  interference  may 
be  raised  by  a  motion  for  dissolution  based 
on  the  grounds  designated  in  Rule  122  as  non- 
patentability  and  lack  of  right  to  make  claims. 
Id. 

2827.  Where  it  is  contended  by  B.  that  the 
present  interference  should  be  disposed  of  by 
application  of  the  doctrine  of  res  adjudicata 
or  estoppel  by  reason  of  the  judgment  in  a 
former  interference  involving  the  same  appli- 
cations, Held,  that  for  reasons  similar  to  those 
stated  in   Potter  v.  Mcintosh   (ante,  183,  ISS 


O.  G.  1721)  and  Sobey  v.  Holsclaw  (C.  D. 
1905,  523,  119  O.  G.  1922)  this  question  will 
not  be  considered  upon  appeal  on  priority  of 
invention.  Blackford  v.  Wilder,  C.  D.  1906, 
124  O.  G.  319. 

2828.  Where  the  question  involved  in  the 
contention  of  B.  relates  to  the  patentability  of 
the  present  issue  over  the  subject-matter  of 
the  issue  of  the  former  interference,  and  not 
to  the  right  of  W.  to  make  the  claim  by  rea- 
son of  the  nature  of  this  disclosure  in  his  ap- 
plication, Held,  that  the  question  is  not  in  the 
class  indicated  in  Pohle  v.  McKnight  (C.  D. 
1905,  549,  119  O.  G.  2519),  Kilbourn  v.  Hinner 
(ante,  161,  122  O.  G.  729),  and  Podlesak  and 
Podlesak  v.  Mclnnerney  (ante,  558,  120  O.  G. 
2127),  as  subject  to  consideration  in  deter- 
mining the  award  of  priority.     Id. 

2829.  Held,  that  the  primary  purpose  of 
Rule  127  and  of  the  doctrine  of  estoppel  in 
interference  cases  is  to  save  the  successful 
party  in  one  interference  the  trouble,  expense, 
and  delay  of  again  contesting  the  same  sub- 
ject-matter with  the  same  opponent,  and  that 
where  B.,  after  raising  the  question  of  res 
adjudicata  at  the  proper  time  and  exhausting 
his  remedies  without  avail,  proceeded  to  take 
testimony  the  question  of  right  to  the  claim 
should  be  awarded  to  the  prior  inventor  of 
the  subject-matter  of  the  issue  as  disclosed  by 
the  evidence  taken.    Id. 

2830.  Where  the  issue  of  the  present  inter- 
ference is  broader  with  respect  to  the  igni- 
ting member  than  the  prior  interference,  a 
holding  that  the  testimony  shows  that  "Ex- 
hibit E"  was  provided  with  the  igniting  mem- 
ber of  the  issue  of  this  interference  is  not 
inconsistent  with  the  holding  of  the  court  in 
the  former  interference  that  said  exhibit  did 
not  disclose  the  invention  of  that  interference. 
Id. 

2831.  Where  a  second  interference  is  de- 
clared between  the  same  applications  on  an 
issue  relating  to  the  subject-matter  of  inven- 
tion as  that  of  a  prior  interference,  of  broader 
scope  than  the  first  issue,  and  the  construc- 
tions relied  on,  respectively,  as  evidencing  con- 
ception and  reduction  to  practice  of  the  inven- 
tion of  both  issues  are  the  same  and  the  fun- 
damental facts  of  both  cases  are  the  same, 
Held,  that  the  final  decision  in  the  first  in- 
terference is  conclusive  and  that  the  question 
of  priority  is  res  adjudicata  unless  it  can  be 
made  to  appear  that  the  question  upon  which 
the  determination  of  the  second  case  rests  is 


404 


INTERFERENCE,  XLIII. 


one  that  neither  was  nor  could  have  been  pre- 
sented and  determined  in  the  first  case. 
♦Blackford  v.  Wilder,  C.  D.  1907,  127  O.  G. 
1255. 

2832.  Where  judgment  is  rendered  in  an 
interference  proceeding  in  the  patent  office 
holding  that  the  issue  was  limited  to  matters 
not  found  in  certain  exhibits  upon  which  a 
party  relics  for  an  award  of  priority,  although 
such  party  contends  to  the  contrary,  and  no 
appeal  is  taken  from  such  holding  and  the 
case  is  finally  decided,  adversely  to  such  party, 
Held,  that  in  a  subsequent  interference  be- 
tween the  same  parties  on  an  issue  which  is 
the  same  as  the  prior  issue,  with  the  excep- 
tion that  in  the  second  interference  such  lim- 
itations were  omitted,  the  question  of  priority 
is  res  adjudicata.  *Horine  v.  Wende,  C.  D. 
1907,  128  O.  G.  2858. 

2833.  As  to  claims  involved  in  a  second  in- 
terference between  the  same  parties  which 
could  have  been  made  in  the  first  interference. 
Held,  that  a  final  decision  in  the  first  inter- 
ference on  the  question  of  priority  renders 
that  question  res  adjudicata.  Id.  Hopkins  v. 
Newman,  C.  D.  1907,  131  O.  G.  1161. 

2834.  Where  in  the  first  interference  be- 
tween the  same  parties  C.  formally  abandoned 
the  invention  specifically  stated  in  the  issue, 
Held,  that  in  a  second  interference  the  issue 
of  which  is  based  upon  the  same  disclosure  as 
that  upon  which  the  issue  of  the  first  inter- 
ference was  based  judgment  must  be  render- 
ed against  C.  upon  the  ground  that  the  matter 
is  res  adjudicata.  Hallwood  v.  Carroll,  C.  D. 
1907,  131  O.  G.  2417. 

2835.  The  fact  that  no  testimony  was  taken 
in  the  first  interference  does  not  avoid  the  ap- 
plication of  the  doctrine  of  res  adjudicata  to 
the  second  interference,  even  though  the  issue 
of  the  latter  includes  details  not  expressly  re- 
cited in  the  first  interference  (citing  Black- 
ford V.  Wilder,  ante,  491,  127  O.  G.  12,55,  and 
Wende  v.  Horine,  ante,  615,  129  O.  G.  28.58). 
Id. 

2836.  Where  in  a  second  interference  the 
question  of  priority  was  held  to  be  res  ad- 
judicata and  a  decision  rendered  in  favor  of 
Blackford,  Blackford's  claims  corresponding 
to  the  issue  of  the  interference  cannot  be  re- 
jected upon  the  ground  that  they  are  antici- 
pated by  an  exhibit  introduced  into 
the  second  interference  by  Wilder.  In- 
asmuch as  the  second  interference  should  not 


have  been  declared,  the  testimony  taken  there- 
in is  of  no  force  and  is  to  be  given  no  effect 
for  any  purpose  whatever.  In  re  Wilder,  C. 
D.  1907,  128  O.  G.  455. 

2837.  The  court  of  appeals  of  the  District 
of  Columbia  having  held  that  a  second  inter- 
ference involving  claims  differing  merely  in 
scope  from  those  involved  in  the  first  inter- 
ference should  not  have  been  declared,  the 
latter  will  not  be  reopened  for  the  purpose 
of  allowing  the  issue  of  the  second  interfer- 
ence to  be  contested  therein.  Wende  v.  Hor- 
ine. C.  D.  1907,  130  O.  G.  1311. 

2838.  The  fact  that  a  proceeding  by  bill  in 
equity  under  section  4915,  Revised  Statutes, 
might  prove  slow  and  expensive  should  not 
outweigh  the  necessity  for  proper  and  or- 
derly procedure  in  an  interference.     Id. 

2839.  Whether  or  not  the  question  of  pri- 
ority of  invention  is  res  adjudicata  by  reason 
of  a  judgment  in  a  prior  interference  is  a 
question  which  may  be  raised  at  any  stage  of 
the  interference  proceedings,  and  it  is  not  only 
proper,  but  is  the  duty  of  the  tribunal  before 
whom  the  case  is  tried  to  take  up  and  con- 
sider this  question  of  its  own  motion  where  it 
is  not  raised  by  the  parties.  *CarrolI  v.  Hall- 
wood,  C.  D.  1908,  135  O.  G.  896. 

2840.  Where,  in  an  interference  proceeding, 
after  bringing  a  motion  to  dissolve  the  inter- 
ference, alleging  non-patentability  and  non- 
interference in  fact,  and  unsuccessfully  con- 
testing the  same,  the  senior  party  abandoned 
the  invention  of  the  issue  and  the  patent  office 
rendered  judgment  of  priority  in  favor  of 
the  junior  party,  the  senior  party  can  not 
thereafter  file  an  amendment  to  his  applica- 
tion claiming  the  invention  which  is  compre- 
hended in  the  prior  issue  and  have  the  ques- 
tion of  priority  between  the  same  parties  re- 
adjudicated  ;  the  decision  in  the  first  interfer- 
ence renders  the  question  of  priority  of  the 
more  limited  issue  of  the  second  interference 
res  adjudicata.    *Id. 

2841.  Where  no  appeal  was  taken  from  the 
decision  of  the  primary  examiner  dissolving 
an  interference  on  the  ground  that  the  claims 
in  issue  are  not  patentable  and  a  second  inter- 
ference was  declared  involving  claims  not  es- 
sentially different  from  those  involved  in  the 
former  interference.  Held,  that  the  question 
of  patentability  was  not  concluded  by  the  de- 
cision in  the  prior  interference.  *Gold  v. 
Gold,  C.  D.  1910,  150  O.  G.  510. 


INTERFERENCE,  XUV,  (a),  (b). 


405 


XLIV.  Statutory  Bars. 

(a)  III  General. 

2842.  The  question  of  a  statutory  bar  aris- 
ing out  of  the  grant  of  a  patent  to  a  party 
other  than  the  applicant  and  one  arising  out 
of  the  grant  of  a  patent  to  the  applicant  relate 
to  the  merits,  and  there  is  no  distinction  be- 
tween them  in  so  far  as  the  right  of  appeal  is 
concerned.  An  appeal  from  a  favorable  deci- 
sion of  the  examiners-in-chief  on  the  merits 
dismissed.  Rule  124.  (Fowler  v.  Dodge,  C. 
D.  1898,  257,  85  O.  G.  1584.)  Sharer  v.  Mc- 
Henry,  C.  D.   190U,  91  O.  G.  1034. 

2843.  Where  the  examiners-in-chief  in  their 
decision  on  priority  call  attention  to  the  fact 
under  Rule  12G  that  one  party  is  not  entitled 
to  make  the  claims  by  reason  of  a  prior  patent 
granted  to  him,  but  the  record  shows  him  to 
be  the  first  inventor.  Held,  that  the  interfer- 
ence should  not  be  dissolved  without  deciding 
priority,  since  to  do  so  would  be  to  allow  a 
patent  to  the  other  party  who  is  not  the  first 
inventor.  Jones  v.  Larter,  C.  D.  1900,  92  O. 
G.  383. 

2844.  Where  a  party  raises  the  question  of 
a  bar  to  the  grant  of  his  opponent's  claims 
for  the  first  time  at  final  hearing  and  the  al- 
leged bar  does  not  affect  his  own  claims.  Held, 
that  the  interference  will  not  be  dissolved, 
but  the  examiner  directed  to  act  on  the  ques- 
tion of  a  bar  after  the  limit  of  appeal  from 
the  decision  on  priority  has  expired.    Id. 

2845.  The  question  whether  one  of  the  par- 
ties to  an  interference  proceeding  is  debarred 
from  receiving  a  patent  by  reason  of  his  hav- 
ing secured  a  foreign  patent  for  the  same  in- 
vention is  a  question  for  ex  parte  considera- 
tion after  the  termination  of  the  interference. 
Gueniffet,  Benoit,  and  Nicault  v.  Wictorsohn, 
C.  D.  1908,  134  O.  G.  255. 

(b)  Public  Use. 

2846.  It  is  the  established  practice  of  the 
office  to  refuse  to  suspend  interference  pro- 
ceedings for  the  purpose  of  trying  the  issue 
of  public  use,  since  the  determination  of  pri- 
ority by  means  of  the  interference  already 
established  is  of  as  much  importance  as  the 
establishment  of  another  statutory  bar  by 
means  of  public-use  proceedings.  Tyler  v. 
Arnold,  C.  D.  1898,  84  O.  G.  1584. 

4847.  The  question  of  public  use  will  not 
be   inquired   into   during  the   progress   of   an 


interference.  The  fact  that  it  is  alleged  to 
be  shown  by  the  statements  of  the  parties  in 
interest  in  another  proceeding  in  which  they 
were  involved  is  no  ground  for  making  this 
case  an  exception  to  the  rule.  Howard  v.  Hey, 
C.  D.  1899,  86  O.  G.  184. 

2848.  Even  where  the  commissioner's  at- 
tention is  called  to  an  alleged  statutory  bar 
as  provided  in  the  rule  the  interference  will 
not  be  suspended  for  a  determination  thereof 
unless  substantial  justice  demands  it.  Shiels 
v,  Lawrence,  et  al.,  C.  D.  1899,  87  O.  G.  180. 

2849.  Where  it  appeared  that  a  statutory 
bar  of  two  years'  public  use  existed,  which 
would  prevent  the  issue  of  a  patent  to  Ave- 
yard.  Held,  that  as  no  testimony  had  been 
taken  by  either  party  the  interference  should 
be  suspended  and  the  statutory  bar  determined. 
(Thomson  et  al.  v.  Hisley,  C.  D.  1894,  43,  66 
O.  G.  1596;  Tyler  v.  Arnold,  C.  D.  1898,  172, 
84  O.  G.  1584,  and  Howard  v.  Hey,  ante,  8, 
86  O.  G.  184,  distinguished  from  the  present 
case.)  Sanford  Mills  v.  Aveyard,  C.  D.  1899, 
88   O.   G.  385. 

2850.  To  refuse  to  institute  public-use  pro- 
ceedings at  this  time  and  to  refuse  to  suspend 
the  interference  would  be  a  hardship  and 
would  add  unnecessarily  to  the  expense  of 
both  parties.     Id. 

2851.  It  being  a  well  settled  rule  of  law  that 
it  is  within  the  sound  discretion  of  a  court  to 
stay  proceedings  when  there  is  another  action 
between  the  same  parties  involving  the  same 
issues  pending  in  a  court  of  a  sister  state  or 
in  a  court  of  the  United  States,  by  analogy 
the  facts  herein  set  forth  warrant  staying  the 
interference  proceedings  in  this  case  and  the 
institution  of  public-use  proceedings.     Id. 

2852.  As  Rule  126  provides  for  the  suspen- 
sion of  an  interference  proceeding  by  the  com- 
missioner before  judgment  on  priority  to  de- 
termine a  statutory  bar  which  has  been  called 
to  his  attention  by  the  examiner  of  interfer- 
ences or  the  examiners-in-chief,  there  is  no 
reason  for  delaying  the  institution  of  public- 
use  proceedings  in  this  case  until  after  one 
of  these  tribunals  has  called  the  commission- 
er's attention  to  the  existence  of  the  statutory 
bar.    Id. 

2853.  Protestants  having  made  out  a  prima 
facie  case  against  the  grant  of  a  patent  to 
Aveyard,  formal  proceedings  to  establish  le- 
gally the  alleged  facts  set  forth  by  protes- 
tants  will  be  instituted  upon  certain  conditions 
to  be  complied  with.     Id. 


40fi 


INTERFERENCE,  XUV,  (b). 


2854.  A  protest  was  filed  against  the  grant 
of  a  patent  to  D.  on  the  ground  that  the  in- 
vention had  been  in  public  use  for  more  than 
two  years  prior  to  the  filing  of  D.'s  applica- 
tion. M.,  who  claimed  the  same  invention, 
was  put  in  interference  with  D.,  and  his  as- 
signee was  permitted  to  take  part  in  the  inter- 
ference proceeding.  A  copy  of  M.'s  applica- 
tion was  obtained  by  protestants  against  the 
wish  of  M.  Held,  that  it  is  not  necessary 
for  the  conduct  of  public  use  proceedings  that 
the  protestants  should  have  a  copy  of  M.'s 
application,  and  the  copy  obtained  by  them 
should  be  returned  to  the  ofhce.  In  re  Na- 
tional Phonograph  Company,  C.  D.  1899,  89 
O.  G.   1669. 

2855.  Held,  further,  that  as  protestants  have 
filed  affidavits  alleging  that  certain  machines 
had  been  made  and  were  in  public  use  it  is 
incumbent  upon  them  to  prove  their  allega- 
tions by  proper  evidence.  When  this  evi- 
dence is  before  the  office  it  will  judge  whether 
the  machines  were  in  public  use  at  the  time 
alleged  and  whether  the  evidence  is  sufficient 
to  prevent  the  grant  of  a  patent.     Id. 

2856.  Held,  further,  that  as  M.'s  assignee 
has  been  made  a  party  to  the  public  use  pro- 
ceeding at  its  request  and  has  the  right  to 
cross-examine  the  witnesses  produced  on  be- 
half of  protestants  the  evidence  may  be  used 
against  M.  in  the  consideration  of  his  appli- 
cation on  the  question  of  patentability.    Id. 

2857.  An  interference  between  an  applicant 
and  a  patentee  is  instituted  merely  to  deter- 
mine whether  a  patent  shall  be  granted  to  the 
applicant,  and  when  the  office  discovers  some 
bar  to  the  grant  of  a  patent  to  him  not  in- 
volving the  question  of  priority  of  invention 
it  should  dissolve  the  interference  without 
deciding  priority.  Weston  v.  Jewell,  C.  D. 
1903,  98  O.  G.  417. 

2858.  Where  an  applicant  is  in  interference 
with  a  patentee  and  the  testimony  shows  that 
his  invention  had  been  in  public  use  for  more 
than  two  years  before  his  application  and  he 
admits  that  he  does  not  desire  or  expect  a 
patent,  Held,  that  the  question  of  priority  of 
invention  is  a  moot  question  which  will  not 
be  decided.    Id. 

2859.  Where  it  appears  that  a  prima  facie 
case  of  public  use  is  made  out,  which  if  sub- 
stantiated would  prevent  a  grant  of  a  patent 
to  Meyer,  Held,  that  as  Sarfert  is  a  patentee 
and  as  no  testimony  has  been  taken  by  either 
party    the    interference    should    be    suspended 


and  the  statutory  bar  determined.  (Sanford 
Mills  V.  Aveyard,  C.  D.  1899,  129,  88  O.  G. 
38.').)  Sarfert  v.  Meyer,  C.  D.  1902,  98  O.  G. 
793. 

2860.  Where  the  interference  is  between 
pending  applications,  the  institution  of  public- 
use  proceedings  prior  to  the  final  determina- 
tion of  priority  is  uniformly  refused,  for  the 
reason  that  if  the  bar  of  public  use  or  sale  be 
established  against  one  of  the  parties  it  might 
leave  the  road  clear  to  the  grant  of  a  patent 
to  the  other,  who  perhaps  might  not  be  the 
prior  inventor  as  against  the  debarred  appli- 
cant. (Chinnock  v.  Edison  v.  Wheeler,  46 
MS.  Dec,  398.)     Id. 

2861.  Public-use  proceedings  will  not  ordi- 
narily be  instituted  prior  to  the  final  deter- 
mination of  priority  in  cases  where  the  alle- 
gation of  public  use  was  based  upon  facts 
which  appear  by  means  of  admissions  or  state- 
ments made  in  the  testimony  which  has  been 
taken  by  either  party  during  the  interference 
prt)cccdings.     Id. 

2862.  Where  one  of  the  parties  to  an  in- 
terference is  a  patentee  and  the  other  is  an  ap- 
plicant, it  is  for  the  office  to  determine  wheth- 
er or  not  said  applicant  is  legally  entitled  to 
the  grant  of  a  patent.  This  being  the  sole 
question  for  determination,  it  is  incumbent 
upon  the  office  to  decide,  in  view  of  all  the 
facts,  what  procedure  is  the  best  to  pursue  in 
the  interest  of  all  parties  concerned.     Id. 

2863.  The  delay  incident  to  establishing  pub- 
lic-use proceedings  before  the  final  determina- 
tion of  the  question  of  priority  is  an  impor- 
tant consideration.  Where  it  appears,  how- 
ever, that  no  testimony  has  been  taken  and 
that  a  suit  for  infringement  of  the  patent 
which  is  involved  in  the  interference  is  pend- 
ing, the  question  of  delay  is  not  an  important 
one,  because  testimony  showing  priority  of 
invention  can  be  taken  in  the  pending  suit  and 
this  testimony  can  be  used  in  the  interference 
proceedings.     Id. 

2864.  Where  it  appears  from  the  testimony 
of  Meyer  taken  in  a  prior  interference  that 
the  invention  here  involved  has  been  in  pub- 
lic use,  Held,  that  said  testimony  is  only  suf- 
ficient to  establish  a  prima  facie  case  and 
that  Meyer  is  not  estopped  by  reason  of  this 
sworn  testimony  from  showing  what  the  ac- 
tual facts  may  be.  (Mead  v.  Brown,  C.  D. 
1889,  173,  48  O.  G.  397;  Howard  v.  Hey,  C. 
D.  1899,  8,  86  O.  G.   184.)      Id. 


INTERFERENCE,  XLIV,  (b). 


407 


2865.  Protestants  having  made  out  a  prima 
facie  case  against  the  grant  of  a  patent  to 
Meyer,  formal  proceedings  to  estabhsh  legally 
the  alleged  facts  set  forth  by  protestants  will 
be  instituted  upon  certain  conditions  to  be 
complied  with.     Id. 

2866.  Where  the  evidence  in  a  party's  behalf 
in  an  interference  shows  that  his  invention 
had  been  in  public  use  for  more  than  two 
years  before  the  date  of  his  application,  Held, 
that  the  issue  of  public  use  will  be  formulated 
and  the  evidence  will  be  used  as  the  prima 
facie  case  upon  that  issue  and  the  party  will 
be  permitted  to  recall  the  witnesses  and  cross- 
examine  them  and  to  produce  further  evi- 
dence. Ex  parte  Weber,  C.  D.  1902,  101  O. 
G.  S.ITO. 

2867.  The  testimony  in  an  interference  be- 
ing given  in  reference  to  the  issue  of  priority 
of  invention  cannot  be  used  upon  the  issue 
of  public  use  without  giving  the  party  an  op- 
portunity to  cross-examine  the  witnesses  upon 
that  issue  and  to  produce  further  explanatory 
evidence.    Id. 

2868.  Where  the  evidence  was  given  by  the 
applicant  himself  and  his  witnesses  in  a  pro- 
ceeding instituted  to  investigate  one  phase  of 
the  question  whether  his  patent  should  issue 
no  fundamental  rule  of  evidence  will  be  vio- 
lated by  using  it  upon  another  phase  of  that 
question  when  he  is  given  the  right  to  recall 
the  same  witnesses  and  cross-examine  them 
further  in  regard  to  that  matter  and  produce 
further  testimony.     Id. 

2869.  A  motion  to  remand  an  interference 
to  the  primary  examiner  to  consider  the  ques- 
tion of  public  use  which  it  is  alleged  is  shown 
by  the  testimony  in  the  interference  denied, 
since  that  testimony  relates  to  priority  and 
cannot  be  used  as  a  basis  for  rejection  of 
claims  without  further  proceedings.  Dittgen 
v.  Parmcnter,  C.  D.  1903,  103  O.  G.  1164. 

2870.  Where  on  appeal  the  suggestion  is 
made  that  the  testimony  in  the  interference 
shows  that  the  invention  had  been  in  public 
use  for  more  than  two  years  before  the  de- 
feated party  filed  his  application,  Held,  that 
the  question  of  priority  of  invention  should  be 
decided,  leaving  the  question  of  public  use  for 
subsequent  investigation  in  case  it  becomes 
necessary  to  decide  it.  Winter  v.  Slick  v. 
Volkommer,  C.  D.  1903,  107  O.  G.  1659. 

2871.  It  is  contrary  to  the  usual  practice 
to  suspend  an  interference  between  two  ap- 
plications to  investigate  the  question  of  public 


use  of  the  invention.     Perrault  v.  Pierce,  C. 
D.  1904,  108  O.  G.  2146. 

2872.  Where  one  of  two  applicants  involved 
in  an  interference  expresses  a  willingness  to 
abandon  the  claims  of  the  issue  if  public-use 
proceedings  are  instituted,  but  it  appears  that 
the  case  is  ready  for  final  hearing  upon  the 
question  of  priority  of  invention  and  affi- 
davits have  not  been  filed  making  out  a  prima 
facie  case  of  public  use.  Held,  that  the  inter- 
ference should  proceed  to  a  decision  upon  the 
question  of  priority  before  investigating  the 
question  of  public  use.     Id. 

2873.  Where  an  interference  was  suspend- 
ed to  investigate  the  question  of  public  use 
of  the  invention.  Held,  that  it  was  proper 
to  consider  the  testimony  inter  partes  and  to 
dissolve  the  interference  on  the  ground  that 
the  applicant  is  not  entitled  to  a  patent,  be- 
cause of  two  years'  public  use.  Mills  v.  Tor- 
rance, C.  D.  1904,  110  O.  G.  857. 

2874.  Where  in  an  interference  between  an 
applicant  and  patentee  a  showing  of  two  years' 
public  use  is  made  as  to  some  counts  of  the 
issue,  but  not  all,  Held,  that  the  interference 
will  not  be  suspended  to  institute  public-use 
proceedings.  Moss  v.  Blaisdell,  C.  D.  1904, 
113  O.  G.  1703. 

2875.  Where  the  examiners-in-chief  in  their 
decision  on  priority  call  attention  to  the  fact 
that  in  their  opinion  the  testimony  taken  in  the 
interference  shows  public  use  of  the  inven- 
tion more  than  two  years  before  the  applica- 
tion date  of  any  of  the  parties  and  other  bars, 
Directed,  that  proceeding  be  suspended  and 
the  case  be  referred  to  the  primary  examiner 
for  report  upon  the  matters  to  which  atten- 
tion is  called  by  the  examiners-in-chief.  Nied- 
ringhaus  v.  Marquard  v.  McConnell,  C.  D. 
1905,  118  O.  G.  1683. 

2876.  Where  the  party  defeated  before  the 
lower  tribunals  upon  the  question  of  prior- 
ity urges  that  a  patent  to  the  successful  party 
is  barred  by  public  use  of  the  invention.  Held, 
that  the  matter  will  not  be  considered  until 
the  decision  on  priority  becomes  final.  Doble 
v.  Henry,  C.  D.  1905,  118  O.  G.  2249. 

2877.  The  rules  of  law  as  to  what  consti- 
tutes a  "prior  use"  and  what  constitutes  a  "re- 
duction to  practice"  are  the  same,  and  as  there 
is  not  sufficient  proof  of  reduction  to  prac- 
tice so  also  there  is  not  sufficient  proof  of 
"prior  use."  *Gilman  and  Brown  v.  Hinson, 
C.  D.  1906,  122  O.  G.  731. 


408 


INTERFERENCE,  XLIV,   (b). 


2878.  Where  the  evidence  taken  in  an  in- 
terference shows,  in  the  opinion  of  the  exam- 
iner, that  the  subject-matter  of  the  issue  was 
in  public  use  for  more  than  two  years  before 
any  of  the  applications  involved  were  filed, 
Held,  that  the  office  is  not  justified  in  con- 
tinuing the  interference  without  investigating 
and  finally  determining  the  question  of  public 
use.  Niedringhaus  v.  Marquard  v.  McConnell, 
C.  D.  1906,  121  O.  G.  337. 

2879.  Evidence  which  was  presented  upon 
the  issue  of  priority  of  invention  and  not 
upon  that  of  public  use  cannot  be  used  by 
this  office  as  a  basis  for  a  final  determination 
of  the  question  of  public  use  without  giving 
the  parties  an  opportunity  to  take  further  tes- 
timony in  explanation  or  rebuttal.     Id. 

2880.  Where  the  examiners-in-chief,  under 
Rule  126,  call  attention  to  the  fact  that  in 
their  opinion  the  evidence  in  an  interference 
showed  public  use  of  the  invention  in  issue 
for  more  than  two  years  prior  to  the  filing 
date  of  any  of  the  parties  and  that  the  issue 
was  therefore  unpatentable,  and  the  case  is 
referred  to  the  primary  examiner  for  con- 
sideration and  report,  and  he  agrees  with  the 
examiners-in-chief,  the  fact  that  the  primary 
examiner  previously  held  the  issue  patentable 
does  not  present  a  case  of  conflicting  deci- 
sions of  lower  tribunals  which  the  commis- 
sioner should  decide  under  the  practice  an- 
nounced in  Snider  v.  Bunnell  (C.  D.  1903, 
117,  103  O.  G.  890).  Niedringhaus  v.  Mar- 
quardt  v.  McConnell,  C.  D.  1906,  121  O.  G. 
338. 

2881.  Where  the  examiners-in-chief,  under 
Rule  126,  call  attention  to  the  fact  that  in 
their  opinion  the  evidence  in  an  interference 
shows  that  the  issue  is  not  patentable  because 
of  two  years'  public  use,  the  question  pre- 
sented is  whether  the  interference  should  be 
stopped  for  the  purpose  of  permitting  the 
parties  to  present  further  evidence  upon  the 
question  of  public  use,  so  that  judgment  can 
be  rendered  upon  this  question  prior  to  a 
final  determination  of  the  question  of  prior- 
ity. Under  these  circumstances  the  case  is 
referred  to  the  primary  examiner  for  his 
report  and  not  for  decision.     Id. 

2882.  Where  an  applicant  is  ordered  to  show 
cause  why  public-use  proceedings  should  not 
be  instituted  against  him,  and  no  showing  is 
made  save  an  argument  that  the  depositions 
and  affidavit  filed  do  not  so  identify  the  com- 
plete invention  of  the  claim  as  to  make  out  a 


prima  facie  case  of  public  use,  Held,  that  tes- 
timony will  be  taken  in  regard  to  the  question 
of  public  use.  Ex  parte  Aston,  C.  D.  1906, 
122  O.  G.  730. 

2883.  Where  upon  consideration  of  the  affi- 
davit and  testimony  referred  to  by  the  pro- 
testant  it  seems  probable  that  the  bar  of  pub- 
lic use  of  the  invention  exists.  Held,  that  it  is 
not  necessary  to  analyze  that  testimony  to  de- 
termine whether  it  is  technically  sufficient  if 
true  to  prove  public  use.     Id. 

2884.  Where  it  is  ordered  that  testimony 
be  taken  in  regard  to  the  question  of  public 
use.  Held,  that  the  protestant  should  promptly 
notify  this  office  of  the  names  of  the  witnesses 
and  the  times  when  and  place  where  they  will 
be  produced   for  examination.     Id. 

2885.  Where  affidavits  state  the  conclusions 
of  the  witnesses  largely  to  the  exclusion  of 
the  facts,  and  the  facts  given  are  not  recited 
with  particularity  and  certainty,  and  a  portion 
of  the  showing  made  is  hearsay.  Held,  that  a 
prima  facie  case  of  public  use  is  not  made  out. 
Siebert  v.  Bloomberg,  C.  D.  1906,  124  O.  G. 
628. 

2886.  Where  a  petition  and  affidavits  are 
filed  seeking  public-use  proceedings,  but  it 
does  not  appear  that  they  have  been  served 
upon  the  applicant  and  are  not  accompanied 
by  an  offer  to  produce  the  witnesses  nor  to 
bear  the  expense  of  investigation,  Held,  that 
the  proceeding  will  not  be  instituted.    Id. 

2887.  Where  in  response  to  an  order  to 
show  cause  why  public  use  proceedings  should 
not  be  instituted  against  his  application  an 
applicant  states  that  an  interference  is  in 
progress  involving  the  same  subject-matter 
and  it  appears  that  his  application  was  not 
added  to  the  interference  by  reason  of  the 
progress  in  that  interference  already  made 
when  his  application  was  filed.  Held,  that 
public  use  proceedings  should  be  instituted, 
as  a  finding  of  public  use  applicable  to  this 
application  would  cause  all  proceedings  upon 
the  applications  in  interference  and  this  ap- 
plication to  terminate  with  the  interference 
now  pending.  In  re  Setter,  C.  D.  1907,  126  O. 
G.  3421. 

2888.  The  question  whether  the  invention 
in  issue  was  placed  in  public  use  by  one  of 
the  parties  to  an  interference  is  not  one  which 
can  be  raised  in  an  interference  proceeding, 
but  is  one  for  the  consideration  of  the  com- 
missioner of  patents  on  thp  final  allowance  of 


INTERFERENCE,  XLV,  (a). 


409 


the  patent.    ♦Biirson  v.  Vogel,  C.  D.  1907,  131 
O.  G.  942. 

2889.  Where  after  a  decision  on  priority 
in  favor  of  G.  has  become  final  public-use  pro- 
ceedings are  instituted  in  view  of  a  protest  of 
W.  and  O.,  the  decision  on  priority  will  not 
be  set  aside  in  view  of  the  testimony  taken 
in  that  proceeding.  Ex  parte  Wenzelmann 
and  Overholt,  C.  D.  1908,  132  O.  G.  232. 

2890.  The  matters  at  issue  in  an  interfer- 
ence and  in  public-use  proceedings  are  differ- 
ent, and  the  testimony  taken  in  the  latter 
cannot  be  held  conclusive  of  the  question  of 
priority  of  invention.     Id. 

2891.  "Whether  there  exists  a  statutory  bar 
of  public  use  to  the  issuance  of  a  patent  to 
Tyberg,  as  is  contended  by  appellant,  is  not 
an  issue  here.  (Burson  v.  V'ogel,  C.  D.  1907, 
669,  131  O.  G.  942,  App.  D.  C.)"  Lacroix  v. 
Tyberg,  C.  D.  1910,  150  O.  G.  267. 

2892.  Where  the  testimony  taken  in  an  in- 
terference which  is  relied  on  to  establish  the 
statutory  bar  of  public  use  or  sale  against  the 
issuance  of  a  patent  on  the  application  of  the 
successful  party  to  such  interference  does  not 
show  that  certain  samples  or  test  devices  made 
by  the  other  party  were  offered  for  sale,  or 
that  if  they  were  shown  to  prospective  cus- 
tomers more  than  two  years  prior  to  the 
filing  of  said  application  preparation  had  then 
been  made  to  manufacture  the  device  or  place 
it  on  the  market,  Held,  that  a  prima  facie 
case  of  public  use  is  not  made  out.  In  re 
Rolfe,  C.  D.  1910,  155  O.  G.  799. 

2893.  While  motions  to  dissolve  certain  re- 
lated interferences  on  the  ground  of  the  ex- 
istence of  statutory  bars  to  the  issuance  of 
a  patent  on  any  of  the  applications  involved 
were  pending  before  the  primary  examiner 
a  petition  for  the  institution  of  public-use 
proceedings  was  filed  which  made  out  a  prima 
facie  case  of  public-use.  Held,  that  institu- 
tion of  public-use  proceedings  should  be  de- 
ferred pending  the  final  determination  of  the 
motions  to  dissolve.  In  re  United  States 
Wood  Preserving  Company,  C.  D.  1910,  133 
O.  G.  271. 

2894.  Where  a  petition  for  the  institution 
of  public-use  proceedings  with  reference  to 
certain  applications  involved  in  interference 
is  filed  and  a  prima  facie  case  of  public  use 
is  made  out.  Held,  that  if  no  testimony  has 
been  taken  in  the  interference  the  public-use 
proceedings  should  take  precedence.     Id. 

2895.  It  is  the  well-established  practice  of  the 
office  not  to  suspend  action  in  an  interference 


proceeding  where  testimony  has  been  taken 
and  the  case  is  ready  for  final  hearing  in  order 
to  institute  a  public-use  proceeding.  (Doble 
V.  Henry,  118  O.  G.  2249;  Wert  v.  Borst  and 
Groscop,  122  O.  G.  2062.)  Brenizer  v.  Robin- 
son, C.  D.  1911,  166  O.  G.  1281. 

2896.  Where  after  the  filing  of  a  motion 
to  dissolve  an  interference  on  the  ground 
that  the  issue  thereof  is  not  patentable  and  the 
opposing  party  has  no  right  to  make  the  claims 
the  moving  party  filed  a  petition  for  the  in- 
stitution of  public-use  proceedings.  Held,  that 
the  motion  to  dissolve  should  be  first  heard 
and  determined.  Snyder  v.  Woodward,  C.  D. 
1911,  173  O.  G.  863. 

XLV.  Suspension. 
(a)  In  General. 

2897.  A  motion  to  dissolve  will  not  operate 
as  a  stay  of  proceedings  in  any  case,  and  the 
pendency  of  such  motion  does  not  relieve  the 
parties  from  the  necessity  for  taking  testi- 
mony within  the  time  set.  Leonard  v.  Chase, 
C.   D.  1898,  84  O.  G.  1727. 

2898.  A  separate  motion  for  suspension 
should  be  filed  and  should  be  supported  by  a 
showing  as  to  why  a  suspension  is  necessary 
during  the  consideration  of  the  other  mo- 
tion filed.  Unless  and  until  an  order  suspend- 
ing proceedings  is  made  the  requirement  that 
testimony  be  taken  remains  in  force.  (Birrell 
V.  Regan,  62  MS.  Dec,  149.)     Id. 

2899.  When  a  party  relies  on  his  motion 
being  granted  and  thus  fails  to  take  testimony 
within  the  time  set,  he  does  so  at  his  own 
risk,  since  he  has  no  right  to  an  extension 
of  time  if  his  motion  is  denied.    Id. 

2900.  Under  Rule  126  a  suspension  of  pro- 
ceedings for  the  consideration  of  an  alleged 
statutory  bar  is  not  granted  as  a  matter  of 
right  on  the  part  of  one  of  the  parties,  but 
merely  in  the  discretion  of  the  commi<=<;ioner 
in  a  proper  case  in  order  to  terminate  need- 
less contests.  Shiels  v.  Lawrence  et  al.,  C.  D. 
1899,  87  O.  G.  180. 

2901.  Where  at  the  beginning  of  the  twen- 
ty days  allowed  by  the  rules  for  making  mo- 
tions to  dissolve  the  attorneys  entered  into  a 
verbal  agreement  to  suspend  proceedings  so 
that  one  of  them  could  go  abroad,  and  he  ac- 
tually went  abroad  before  the  twenty  days 
expired.  Held,  that  the  obvious  intent  was 
to  postpone  the  making  of  motions  as  well  as 
the  taking  of  testimony,  notwithstanding  the 


410 


INTERFERENCE,  XLV,    (a). 


fact  that  the  written  stipulation  filed  in  this 
oflfice  merely  referred  to  an  extension  of  time 
for  taking  testimony.  McKean  v.  Morse,  C. 
D.   1901,  94  O.  G.  1577. 

2902.  A  party  cannot  be  presumed  to  have 
finally  determined  whether  or  not  he  will  make 
a  motion  to  dissolve  until  the  twenty  days 
allowed  by  the  rule  have  expired,  and  where 
all  proceedings  are  suspended  prior  to  that 
time.  Held,  that  he  has  the  right  to  make  such 
motion  after  the  suspension  is  at  an  end.    Id. 

2903.  The  procedure  upon  a  suspension  of 
an  interference  under  Rule  128  for  the  con- 
sideration of  references  should  follow  as 
closely  as  possible  that  upon  a  motion  to  dis- 
solve under  Rule  122.  Macey  v.  Tobey  v. 
Laning,  C.  D.  1901,  97  O.  G.  1172. 

2904.  Under  present  Rule  128  the  primary 
examiner  should  render  an  inter  paries  deci- 
sion as  to  the  pertinency  of  the  references 
and  should  not  merely  reject  the  claims  in  the 
application  c.r  parte.  (Westinghouse  v.  Thom- 
son, C.  D.  1891,  110,  56  O.  G.  142,  modified.) 
Id. 

2905.  Where  an  interference  is  suspended 
and  remanded  to  the  primary  examiner  to  de- 
termine the  right  of  one  of  the  parties  to 
make  the  claim.  Held,  that  the  examiner 
should  render  a  formal  decision  on  the  ques- 
tion and  if  in  his  opinion  he  has  no  right  to 
make  the  claim  should  set  a  limit  of  appeal 
from  the  decision.  Hutin  and  Leblanc  v. 
Steinmetz  v.  Scott  v.  Fairfax,  C.  D.  1901,  97 
O.  G.  2743. 

2906.  Where  it  is  held  that  one  of  the  par- 
ties to  an  interference  has  no  right  to  make 
the  claim,  the  other  parties  are  entitled  to  ex- 
pect that  he  will  appeal  without  unreasonable 
delay  or  if  he  does  not  that  their  applications 
will  not  be  further  delayed,  and  it  is  to  the 
interest  of  all  parties  to  know  in  advance 
what  period  of  delay  will  be  permitted.    Id. 

2907.  Where  a  motion  is  brought  to  sus- 
pend proceedings  after  an  appeal  has  been 
taken  from  a  decision  of  the  examiners-in- 
chief,  Held,  that  as  there  is  no  limit  of  appeal 
running  a  suspension  of  proceedings  in  un- 
necessary, but  that  if  the  occasion  requires  it 
the  hearing  on  the  appeal  may  be  continued. 
Robinson  v.  Townsend  v.  Copeland,  C.  D.  1903, 
106  O.  G.  997. 

2908.  The  mere  filing  of  a  petition  to  the 
commissioner  is  no  good  reason  for  suspend- 
ing proceedings  in  an  interference.  Church- 
ward V.  Douglas  V.  Cutler,  C.  D.  1903,  106  O. 
G.  2016. 


2909.  Where  after  judgment  by  the  exam- 
iner of  interferences  certain  motions  are  made 
and  appeal  taken  thereon  within  the  limit  of 
appeal  from  the  judgment.  Held,  that  neither 
the  motions  nor  the  appeal  operated  as  a 
stay,  since  Rule  123  specifically  requires  a 
separate  motion  for  a  stay  of  proceedings. 
Hocgh  V.  Gordon,  C.  D.  1904,  108  O.  G.  797. 

2910.  Where  both  parties  have  completed 
their  lestiraony-in-chief,  the  interference  will 
not  be  suspended  to  add  new  counts  consist- 
ing of  claims  made  by  one  party,  which  claims 
the  opposing  parly  is  presumed  to  have  known 
even  before  the  declaration  of  the  interfer- 
ence. If  there  is  to  be  a  contest  as  to  them, 
it  must  be  a  separate  interference.  Newell  v. 
Hubbard,  C.  D.  1904,  108  O.  G.  1053. 

2911.  Where  one  of  the  parties  to  the  in- 
terference is  a  patentee  and  he  has  brought 
suit  in  the  courts  against  the  other  party  for 
infringement,  Held,  that  the  pendency  of  such 
suit  is  no  reason  for  suspending  the  interfer- 
ence until  its  conclusion.  McBride  v.  Kemp, 
C.   D.   1904,   109  O.   G.   1069. 

2912.  An  interference  is  the  only  proceeding 
provided  by  law  for  directly  determining 
which  of  two  claimants  is  the  first  inventor, 
and  such  interference  must  proceed  in  a  reg- 
ular and  orderly  way  without  regard  to  any 
collateral  investigation  of  that  matter  in  a 
suit  pending  in  the  courts.     Id. 

2913.  Where  an  examiner  requests  a  sus- 
pension of  the  interference  under  Rule  128 
for  the  purpose  of  considering  the  pertinency 
of  a  new  reference  and  the  interference  is 
transmitted  to  him  for  that  purpose,  the  ex- 
aminer should  set  a  day  for  hearing  upon  a 
question  of  patentability,  and  after  the  hear- 
ing if  he  is  of  the  opinion  that  the  claims  are 
not  patentable  in  view  of  the  references  a  de- 
cision should  be  rendered  dissolving  the  in- 
terference upon  that  ground  and  limit  of  ap- 
peal set.  If  no  appeal  is  taken  and  the  deci- 
sion becomes  final,  the  application  should  be 
then  considered  ex  parte  and  the  claims  cor- 
responding to  the  counts  of  the  issue  should 
be  rejected.  Ex  parte  Struble,  C.  D.  1904, 
109   O.   G.   1335. 

2914.  Where  the  examiner  in  interferences 
suspends  proceeding  pending  an  appeal  from 
his  decision,  Held,  that  he  may  modify  the 
order  of  suspension  even  after  appeal  so  long 
as  he  does  not  change  the  status  of  the  parties 
in  reference  to  the  question  involved  in  the 
appeal.  Herreshoff  v.  Knietsch,  C.  D.  1904, 
111  O.  G.  1624. 


INTERFERENCE,  XLV,  (a). 


4U 


2915.  Where  a  motion  is  granted  to  suspend 
proceedings  pending  the  final  determination 
of  another  motion,  the  proceedings  are  imme- 
diately resumed  on  the  date  upon  which  that 
motion  is  finally  determined.  Greuter  v. 
Mathieu,  C.  D.  1904,  112  O.  G.  2.53. 

2916.  Cases  in  this  office  will  not  be  sus- 
pended to  await  the  final  decision  of  the 
courts  upon  another  case  where  similar  ques- 
tions are  raised.  Potter  v.  Mcintosh,  C.  D. 
1905,  116  O.  G.  1451. 

2917.  Where  the  examiner  requests  the  sus- 
pension of  the  interference  to  determine  per- 
tinency of  a  newly  discovered  reference,  Held, 
that  a  decision  will  not  be  rendered  as  to  the 
right  of  one  party  to  see  prior  applications 
filed  by  the  other,  since  this  question  may  be- 
come moot  by  the  examiner's  decision.  Wright 
and  Stebbins  v.  Hanson,  C.  D.  1905,  114  O.  G. 
761. 

2918.  Where  party  has  an  application  once 
in  interference  with  present  opponent,  but  now 
on  appeal  from  rejection  as  inoperative,  and 
it  is  impossible  to  determine  what  bearing  the 
decision  in  the  ex  parte  case  will  have  upon 
the  decisions  in  the  interference  without  con- 
sidering entire  record.  Held,  that  the  office 
cannot  undertake  to  consider  the  entire  record 
in  advance  of  final  hearing  and  that  no  sus- 
pension of  the  interference  will  be  ordered. 
Mark  v.  Greenawalt,  C.  D.  1905,  118  O.  G. 
1068. 

2919.  When  a  party  to  an  interference  who 
has  no  substantial  standing  therein  takes  an 
unwarranted  appeal.  Held,  that  another  party 
thereto  who  is  identified  in  interest  with  the 
first-mentioned  party  would  not  be  granted 
a  suspension  of  proceedings  pending  decision 
upon  said  appeal  in  prolongation  of  previous 
extensive  delay.  Dalton  v.  Hopkins  v.  New- 
man, C.  D.  1906,  120  O.  G.  900. 

2920.  An  interference  will  not  be  suspended 
for  the  purpose  of  considering  the  question 
of  estoppel  against  one  party  where  dissolu- 
tion of  the  interference  would  apparently 
leave  the  way  clear  to  the  allowance  of  a  pat- 
ent to  another  party  who  may  not  be  the  first 
inventor.  Dunbar  v.  Schellinger,  C.  D.  1906, 
121  O.  G.  687. 

2921.  Where  proceedings  are  suspended 
pending  the  final  determination  of  a  motion 
brought  within  the  twenty  days,  such  suspen- 
sion does  not  operate  to  extend  the  period 
for  bringing  other  motions,  and  a  motion 
brought  after  the  twenty  days  should  not  be 


transmitted,  although  the  case  is  still  under 
suspension.  Moore  v.  Curtis,  C.  D.  1906,  121 
O.  G.  2325. 

2922.  The  times  fixed  for  taking  testimony 
do  not  commence  to  run  after  suspension  of 
proceedings  for  consideration  of  motions  for 
dissolution  until  the  cases  are  returned  to  the 
examiner  of  interferences  and  formal  resump- 
tion of  proceedings  is  noted.  Hewitt  v.  Stein- 
metz,  C.  D.  1906,  122  O.  G.  1396. 

2923.  Interference  proceedings  will  not  be 
suspended  after  final  hearing  before  the  ex- 
aminer of  interferences  on  priority  for  the 
purpose  of  investigating  the  existence  of  in- 
tervening rights  alleged  to  be  shown  by  the 
testimony  taken  on  priority  as  constituting 
a  bar  to  the  grant  of  the  opposing  party's  re- 
issue application.    Wert  v.  Borst  and  Groscop, 

C.  D.  1906,   122  O.  G.  2062. 

2924.  Where  the  evidence  relating  to  pri- 
ority of  invention  is  before  the  office  and  the 
question  of  a  statutory  bar  is  raised  which  ap- 
plies to  but  one  of  two  applications  involved  in 
the  interference  and  which  requires  for  its 
determination  consideration  of  evidence,  and 
possil)ly  further  taking  of  testimony,  such  de- 
termination should  be  postponed  until  priority 
of  invention  has  been  settled,  at  least  so  far 
as  the  same  can  be  settled  in  this  office.     Id. 

2925.  The  decision  of  the  examiner  of  in- 
terferences refusing  to  suspend  proceedings 
pending  a  determination  of  contempt  pro- 
ceedings brought  in  a  United  States  circuit 
court  for  failure  of  witnesses  to  appear  and 
testify  in  response  to  subpcena  will  not  be 
disturbed  where  it  does  not  appear  that  great 
hardship  will  otherwise  ensue.  Outcault  v. 
The  New  York  Herald  Company,  C.  D.  1907, 
126  O.  G.  757. 

2926.  An  interference  relating  to  a  machine 
will  not  be  suspended  and  the  time  for  open- 
ing the  preliminary  statements  postponed  in 
order  that  one  of  the  parties  may  take  out  a 
patent  upon  an  application  covering  a  closely 
related  process  not  involved  in  the  interfer- 
ence before  the  existence  of  such  application 
is  discovered  by  his  opponent  through  access 
to  the  machine  application  which  contains  a 
cross-reference   thereto.     Ex   parte   Field,   C. 

D.  1907,  130  O.  G.  1687. 

2927.  The  commissioner  will  exercise  his 
supervisory  authority  to  review  the  decision 
of  the  examiner  of  interferences,  refusing  to 
suspend  an  interference  proceeding  only  where 
it  clearly  appears  that  there  has  been  an  abuse 


412 


INTERFERENCE,  XLV,  (b),  (c),  XLVI. 


of  discretion  operating  to  the  injury  of  one 
of  the  parties.  Brown  v.  Inwood  and  Laven- 
berg,  C.  D.  1908,  135  O.  G.  895. 

(b)  For  Adding  New  Parties. 

2928.  When  an  interference  is  pending  be- 
tween two  applicants  on  several  counts,  a 
patentee  who  does  not  claim  all  the  counts  can- 
not be  made  a  party  to  the  interference.  In 
such  cases  a  new  interference  should  be  de- 
clared between  the  three  parties  as  to  the 
counts  which  all  claim  and  the  old  interfer- 
ence continued  between  the  two  parties  as  to 
the  other  counts.  Dow  v.  Benson,  C.  D.  1903, 
107  O.  G.   1378. 

2929.  Where,  after  giving  notice  of  a  hear- 
ing on  a  motion  to  dissolve  an  interference, 
the  primary  examiner  acquired  jurisdiction  of 
the  case  for  the  purpose  of  adding  new  parties, 
Held,  that  the  notice  that  the  case  had  been 
transmitted  to  the  primary  examiner  for  this 
purpose  superseded  the  hearing  and  that  the 
hearing  on  the  motion  should  have  been  post- 
poned until  it  had  been  determined  whether 
such  new  parties  would  be  added  and  whether 
any  further  motions  would  be  brought  in  view 
thereof.  Whitelaw  v.  Eckhardt  v.  Koch,  C.  D. 
1911,  163  O.  G.  727. 

(c)  New  References. 

2930.  Where  the  transmission  to  the  pri- 
mary examiner  of  a  motion  to  dissolve  is  re- 
fused on  the  ground  of  lack  of  diligence  in 
presenting  it,  but  in  the  decision  by  the  com- 
missioner the  attention  of  the  primary  exam- 
iner is  called  to  the  reference  upon  which  the 
motion  is  based  for  action,  under  Rule  128, 
Held,  that  if  in  the  opinion  of  the  examiner 
the  reference  does  not  anticipate  the  invention 
he  may  properly  refuse  to  request  a  suspen- 
sion or  to  grant  a  hearing  to  the  parties. 
Hagcman  v.  Young,  C.  D.  1898,  82  O.  G.  1049. 

2931.  The  "reference"  referred  to  in  Rule 
128  necessarily  means  one  that  seems  to  the 
examiner  to  anticipate  the  claims  of  at  least 
one  of  the  parties,  since  he  would  not  be 
justified  in  suspending  proceedings  and  putting 
the  parties  to  the  delay  and  trouble  incident 
thereto  in  view  of  any  patent  or  publication 
which,  in  his  opinion,  is  not  an  anticipation. 
Id. 

2932.  After  a  party  has  by  delay  lost  his 
right  to  make  a  motion  for  dissolution  the 
opinion  of  the  examiner  and  not  that  of  the 
party  himself  as  to  the  pertinency  of  the  ref- 


erence is  to  govern  in  determining  whether  a 
hearing  shall  or  shall  not  be  granted  on  the 
question.  If  it  is  held  to  be  not  pertinent, 
the  parties  have  no  right  to  be  heard  or  to 
appeal  from  the  holding.    Id. 

2933.  A  letter  written  by  the  examiner  to 
the  examiner  of  interferences  informing  him 
that  he  has  considered  the  reference  called  to 
his  attention,  but  docs  not  consider  it  an  an- 
ticipation and  therefore  refuses  to  request  a 
suspension  of  proceedings,  is  not  an  action  in 
the  case  such  as  requires  notice  to  the  parties. 
Id. 

XLVI.  Suggestions  to  Commissioner. 

2934.  Rule  122  means  that  the  decision  of 
the  primary  examiner  on  a  motion  to  dis- 
solve shall  be  binding  upon  the  examiner  of 
interferences;  but  it  does  not  prevent  him 
from  calling  the  commissioner's  attention  to 
such  matters  as  are  provided  for  by  Rule  126. 
Bender  v.  Hoffmann,  C.  D.  1898,  85  O.  G.  1737. 

2935.  That  part  of  Rule  124  which  provides 
that  from  a  decision  of  the  primary  examiner 
affirming  the  patentability  of  the  claim  or  the 
applicant's  right  to  make  the  same  no  appeal 
can  be  taken  is  construed  merely  to  prevent 
an  appeal  being  taken  to  the  examiners-in- 
chief  by  a  party  to  the  interference  when  the 
primary  examiner  has  favorably  passed  upon 
the  patentability  of  his  opponent's  claim.  It 
does  not,  however,  prevent  the  commissioner 
from  considering  any  reason  for  dissolving 
an  interference  which  might  be  brought  to 
his  attention  or  which  he  himself  discovers. 
Id. 

2936.  Rule  126  does  not  authorize  the  com- 
missioner to  suspend  an  interference  only 
when  his  attention  has  been  called  to  certain 
matters  by  the  examiner  of  interferences  or 
the  examiners-in-chief,  but  he  may  suspend 
and  dissolve  an  interference  on  his  own  mo- 
tion whenever  he  considers  that  justice  and 
equity  require  it.  (Fowler  et  al.  v.  Benton, 
C.  D.  1880,  39,  17  O.  G.  266 ;  Von  Welsbach  v. 
Lungren,  C.  D.  1889,  177,  48  O.  G.  537,  and 
Bechman  v.  Wood,  C.  D.  1897,  188,  81  O.  G. 
2087,  cited.)     Id. 

2937.  No  right  of  appeal  exists  from  the 
refusal  of  the  examiners-in-chief  to  call  at- 
tention to  the  question  of  patentability  under 
Rule  126,  since  if  this  refusal  can  be  consid- 
ered an  action  at  all  it  is  a  favorable  decision 
on  the  question  of  patentability.  (Schmiedl 
v.   Walden,  C.   D.   1891,   150,  56   O.   G.   1563.) 


INTERFERENCE,  XLVI. 


413 


Benet   and    Mercie   v.    McClean,    C.   D.   1901, 
97  O.  G.  1595. 

2938.  The  purpose  of  Rule  126  is  not  to 
permit  parties  to  argue  tlie  question  of  patent- 
ability before  the  examiners-in-chief  and  the 
commissioner  after  a  favorable  decision  by 
the  examiner,  for  this  would  be  in  effect  per- 
mitting appeals  contrary  to  the  provisions  of 
Rule  124.    Id. 

2939.  While  Rule  126  provides  that  the  ex- 
aminers-in-chief may,  if  they  deem  it  advisable, 
call  the  attention  of  the  commissioner  to  any 
matter  not  relating  to  priority  which  in  their 
opinion  establishes  the  fact  that  no  interfer- 
ence exists  or  that  there  has  been  irregularity 
in  declaring  the  same  or  which  amounts  to  a 
statutory  bar  to  the  grant  of  a  patent  to 
either  party  for  the  claim  in  interference. 
Held,  that  this  is  not  compulsory  upon  them, 
and  when  they  decline  to  do  so  no  appeal  lies. 
Walsh  V.  Hallbauer,  C.  D.  1901,  94  O.  G.  223. 

2940.  Rule  126  provides  a  way  in  which  an 
interference  may  be  terminated  where  newly- 
discovered  references  or  reasons  show  that 
the  issue  is  not  patentable,  and  it  would  re- 
quire very  unusual  circumstances  to  warrant 
action  under  it  where  all  of  the  facts  were 
fully  considered  by  the  examiner  before  pro- 
nouncing the  issue  patentable.  Benet  and 
Mercie  v.  McClean,  C.  D.  1901,  97  O.  G.  1595. 

2941.  Where  the  examiners-in-chief  call  at- 
tention under  Rule  126  to  a  matter  which  in 
their  opinion  renders  the  interference  improp- 
er, Held,  that  the  commissioner  will  not  de- 
cide priority  until  that  question  is  settled. 
Snider  v.  Bunnell,  C.  D.  1902,  101  O.  G.  2572. 

2942.  Where  the  examiners-in-chief  decline 
to  call  attention  to  an  alleged  bar  to  the  grant 
of  a  patent  under  Rule  126,  their  action  is 
virtually  an  allowance  of  the  claims  and  no 
appeal  lies  therefrom.  Wilcomb  v.  Lasher,  C. 
D.  1903,  105  O.  G.  743. 

2943.  The  action  of  the  examiner  of  inter- 
ferences in  refusing  to  call  attention  under 
Rule  126  to  an  alleged  bar  to  the  grant  of  a 
patent  to  the  opposing  party  will  not  be  re- 
viewed on  appeal  to  the  commissioner.  The 
discretion  of  the  examiner  of  interferences 
should  not  be  controlled  in  this  regard.  Wert 
v.  Borst  and  Groscop,  C.  D.  1906,  122  O.  G. 
2062. 

2944.  Whore  the  examiners-in-chicf  in  their 
decision  in  an  interference  upon  priority  of 
invention  call  the  attention  of  the  commis- 
sioner under  Rule  126  to  the  fact  that  in  their 


opinion  the  issue  is  not  patentable  and  the 
decision  becomes  final  by  the  expiration  of  the 
limit  of  appeal  without  appeal,  the  examiner 
will  be  directed  to  reject  in  the  application 
of  the  successful  party  the  claim  correspond- 
ing to  the  issue  found  by  the  examiners-in- 
chief  to  be  unpatentable.  (Snider  v.  Bunnell, 
C.  D.  1903,  117,  103  O.  G.  890,  distinguished.) 
Holz  V.  Hewitt,  C.  D.  1907,  127  O.  G.  1992. 

2945.  It  is  not  to  be  presumed  that  the  ex- 
aminers-in-chief would  form  an  opinion  ad- 
verse to  a  party's  interest  and  call  attention 
to  the  same  upon  the  record  without  careful 
consideration  in  those  cases  where  the  grounds 
of  their  opinion  had  already  been  considered 
by  the  primary  examiner  and  held  insufficient 
to  warrant  such  adverse  opinion.  When  they 
express  an  opinion  under  these  circumstances, 
the  same  is  clearly  of  sufficient  force  to  bind 
the  primary  examiner  and  sustain  his  pro 
forma  rejection  of  claims  until  the  opinion  is 
withdrawn  by  the  examiners-in-chief  them- 
selves or  overruled  by  the  commissioner  or 
court  of  appeals  in  the  regular  course  of  ap- 
peal.    Id. 

2946.  Rule  126  does  not  provide  for  a  hear- 
ing by  the  commissioner,  and  no  reason  ap- 
pears why  a  hearing  should  be  given  to  an 
applicant  whose  claims  are  found  to  be  un- 
patentable by  the  board  of  examiners-in-chief 
in  their  consideration  of  the  claim  in  connec- 
tion with  the  question  of  priority  of  inven- 
tion.    Id. 

2947.  Where  upon  reference  by  the  exam- 
iners-in-chief, under  Rule  126,  stating  that  in 
their  opinion  the  issue  of  an  interference  is 
unpatentable,  the  examiner  is  directed  to  re- 
ject the  claims  in  the  application  of  the  suc- 
cessful party,  the  pro  forma  rejection  of  the 
examiner  puts  the  case  at  once  in  condition 
for  a  course  of  appeal  which  may  be  carried 
to  the  court  of  appeals  if  the  application  is 
otherwise  in  condition  therefor.     Id. 

2948.  The  recommendation  of  the  examin- 
ers-in-chief that  the  issue  is  not  patentable  is 
not  a  final  decision  of  this  question  by  them, 
and  as  the  statutes  provide  for  appeals  to  the 
court  of  appeals  of  the  District  of  Columbia 
only  after  successive  appeals  have  been  taken 
to  the  examiners-in-chief  and  the  commis- 
sioner from  a  second  rejection  of  the  primary 
examiner  the  question  of  patentability  will 
not  be  reviewed  by  the  commissioner  until  it 
has  been  finally  passed  upon  by  the  lower  tri- 
bunals. Serrell  v.  Donnelly,  C.  D.  1907,  129 
O.  G.  2501. 


414 


INTERFERENCE,  XLVII. 


XLVII.  Remanding  to   Primary  Examiner. 

2949.  The  question  of  apparent  grounds  for 
refusing  letters  patent  to  a  party  in  interfer- 
ence is  not  directly  a  part  of  the  question  of 
priority,  and  failure  on  the  part  of  the  exam- 
iners-in-chief  to  call  attention  to  such  grounds 
is  not  reviewable  by  the  commissioner. 
Stupakoff  V.  Johnson,  C.  D.  1898,  84  O.  G. 
982. 

2950.  While  under  Rule  126  the  commis- 
sioner may  before  judgment  on  the  question 
of  priority  suspend  the  interference  and  re- 
mand the  case  to  the  primary  examiner  for 
consideration  of  any  matter  to  which  his  at- 
tention is  called  by  the  examiners-in-chief  as 
establishing  the  fact  that  no  interference  in 
fact  exists,  neither  the  rule  nor  the  practice 
contemplates  such  action  unless  the  ground 
therefor  is  entirely  clear.  O'Rourke  v.  Gil- 
lespie, C.  D.  1898,  84  O.  G.  984. 

2951.  Where  the  examiner  of  interferences 
refused  to  consider  a  question  of  interference 
on  the  ground  that  the  action  of  the  primary 
examiner  in  declaring  the  interference  is 
binding  upon  him  and  that  he  "will  not  for 
a  moment  attempt  to  disturb  his  action  or  in 
any  manner  criticise  it,"  Held,  that  he  took  a 
position  contrary  to  the  purpose  and  intent  of 
Rule  126,  making  the  rule,  so  far  as  he  is  con- 
cerned, without  force  or  effect.  Wethey  v. 
Roberts,  C.  D.  1898,  84  O.  G.  1586. 

2952.  The  functions  of  the  examiner  of  in- 
terferences are  not  restricted  to  the  considera- 
tion of  the  single  question  of  priority  as  to 
the  invention  of  the  issue  as  drawn  up  by  the 
primary  examiner.  Where  the  evidence  shows 
that  there  is  no  legitimate  interference  be- 
tween two  applications,  it  is  the  duty  of  the 
examiner  of  interferences,  under  Rule  126, 
upon  ascertaining  the  facts  to  call  the  atten- 
tion of  the  commissioner  thereto.  Whether 
this  be  done  before  decision  on  the  question 
of  priority  or  not,  his  decision  upon  that 
question  is  by  the  rule  left  to  the  discretion 
of  the  examiner  of  interferences.     Id. 

2953.  The  issue  of  the  interference  not  be- 
ing patentable  to  Bender  the  case  is  remanded 
to  the  primary  examiner  to  dissolve  the  inter- 
ference and  when  the  application  of  Bender 
comes  before  him  ex  parte  to  reject  his  claim 
involved  in  the  interference.  Bender  v.  Hoff- 
mann,  C.   D.  1898,  85  O,  G.   1737. 

2954.  Where  the  examiners-in-chief  call  at- 
tention under  Rule  126  to  the  fact  that  in  their 
opinion  the  interference  should  be  dissolved 


and  upon  reference  to  him  the  examiner 
reaches  the  opposite  conclusion.  Held,  that  the 
examiner  should  refer  the  matter  with  his 
decision  to  the  commissioner  for  a  final  de- 
cision. Snider  v.  Bunnell,  C.  D.  1903,  103  O. 
G.  890. 

2955.  Where  the  examiner  of  interferences 
calls  attention  under  Rule  126  to  the  fact  that 
in  his  opinion  the  interference  should  be  dis- 
solved and  upon  reference  to  him  the  primary 
examiner  reaches  the  opposite  conclusion. 
Held,  that  the  examiner  should  refer  the 
matter  with  his  decision  to  the  examiners-in- 
chief  for  decision.    Id. 

2956.  While  the  rules  do  not  permit  an  ap- 
peal by  one  of  the  parties  from  a  favorable 
decision  upon  patentability,  it  is  proper  in 
case  of  conflicting  opinions  on  that  question  to 
refer  the  case  to  an  independent  tribunal  for 
final  settlement.     Id. 

2957.  Where  in  the  case  of  conflicting  opin- 
ions an  interference  case  is  referred  to  a 
higher  tribunal  for  decision.  Held,  that  a 
hearing  should  be  granted  to  the  parties  in- 
volved in  the  interference.     Id. 

2958.  Where  an  interference  is  remanded 
to  the  primary  examiner  under  Rule  126  to 
consider  whether  or  not  the  interference  was 
properly  declared.  Held,  that  he  may  make 
use  of  any  information  available  and  is  not 
confined  to  a  consideration  of  facts  shown  by 
the  record.  Greenawalt  v.  Mark,  C.  D.  1903, 
103  O.  G.  1913. 

2959.  There  is  no  appeal  from  the  failure 
of  the  examiners-in-chief  to  recommend  a 
dissolution  of  the  interference  under  Rule  126 
on  the  ground  that  one  of  the  parties  has  no 
right  to  make  the  claim.  Woods  v.  Waddell, 
C.  D.  1903,  106  O.  G.  2017. 

29G0.  Where  an  interference  is  remanded 
to  the  primary  examiner  to  consider  the  pat- 
entability of  the  issue  in  view  of  a  newly- 
discovered  reference  and  the  examiner  after 
hearing  dissolves  the  interference,  his  decision 
becomes  final  and  the  interference  terminates 
unless  appeal  is  taken  within  the  time  set.  Ex 
parte  Henderson,  C.  D.  1903,  107  O.  G.  1661. 

2961.  Where  an  interference  is  referred  to 
the  primary  examiner  under  Rule  126  to  con- 
sider the  question  of  dissolving  the  interfer- 
ence. Held,  that  the  action  is  taken  by  the 
office  upon  its  own  motion  and  is  not  depend- 
ent upon  the  rights  of  the  parties  to  demand 
a  consideration  of  the  matter.  Judd  v.  Camp- 
bell, C.  D.  1903,  107  O.  G.  2527. 


INTERFERENCE,  XLVII. 


413 


2962.  The  failure  of  the  parties  to  make  a 
motion  to  dissolve  within  the  time  fixed  by 
the  rule  is  no  reason  why  the  office  should 
not  upon  its  own  motion  consider  the  matter 
under  Rule  126.     Id. 

2963.  Where  the  examiner  of  interferences 
calls  attention,  under  Rule  126,  to  the  fact  that 
in  his  opinion  the  interference  should  be  dis- 
solved on  the  ground  that  there  is  such  ir- 
regularity in  the  declaration  thereof  as  to 
preclude  the  proper  determination  of  the 
question  of  priority  or  on  the  ground  that 
there  is  no  interference  in  fact  and  upon  ref- 
erence to  him  the  examiner  reaches  the  op- 
posite conclusion,  Held,  that  the  examiner 
should  refer  the  matter  with  his  decision,  to 
the  commissioner  for  final  decision.  Weber 
V.  Hall,  C.  D.  1904,  111  O.  G.  809. 

2964.  Where  the  examiner  of  interferences 
calls  attention,  under  Rule  126,  to  the  fact 
that  in  his  opinion  the  interference  should  be 
dissolved  on  the  ground  that  the  issue  is  not 
patentable  because  of  anticipation  or  that  one 
or  both  of  the  parties  have  no  right  to  make 
the  claims  and  upon  reference  to  him  the  ex- 
aminer reaches  the  opposite  conclusion,  Held, 
that  the  examiner  should  refer  the  matter, 
with  his  decision,  to  the  examiners-in-chief 
for  decision.    Id. 

2965.  Where  the  examiners-in-chief  award 
priority  to  an  applicant  in  interference,  but 
state  reasons  why  they  do  not  regard  the  issue 
to  be  patentable,  and  the  primary  examiner 
agrees  with  the  examiners-in-chief  and  re- 
jects the  claims,  but  after  amendments  and 
affidavits  becomes  convinced  that  the  claims 
are  allowable.  Held,  that  the  case  should  not 
be  referred  to  the  commissioner  for  decision. 
(Snider  v.  Bunnell,  C.  D.  1903,  117,  103  O. 
G.  890,  distinguished.)  Ex  parte  Allen,  C.  D. 
1904,  109  O.  G.  1071. 

2966.  The  primary  examiner  is  a  tribunal 
created  by  law  to  pass  upon  questions  of  pat- 
entability in  the  first  instance,  and  his  favor- 
able decision  will  not  generally  be  reviewed. 
The  exception  to  this  rule  which  is  directed 
in  the  case  of  Sindcr  v.  Bunnell  does  not  ex- 
tend to  a  favorable  conclusion  of  the  primary 
examiner  based  on  amendments  and  affidavits 
filed  subsequent  to  an  adverse  recommendation 
of  the  examiners-in-chief.    Id. 

2967.  Where  an  applicant  in  interference 
with  a  patentee  moves  to  dissolve  on  the 
ground  that  the  issue  is  not  patentable,  his 
motion  will  be  granted  without  considering 
the  merits   of   the   question   of   patentability; 


but  where  the  applicant  does  not  admit  that 
his  claims  are  unpatentable  it  is  necessary  for 
this  office  to  consider  and  decide  the  matter 
for  itself.    Id. 

2968.  The  office  will  not  conduct  an  inter- 
ference as  to  an  unpatentable  issue  merely 
because  one  of  the  parties  is  a  patentee.  It 
will  not  waste  time  deciding  a  moot  question 
simply  to  avoid  casting  a  cloud  upon  a  patent. 
Id. 

2969.  Where  a  tribunal  of  the  office  calls 
attention  to  the  fact  that  the  issue  is  not  re- 
garded as  patentable,  the  office  will  not  refuse 
to  consider  the  matter  because  one  of  the 
parties  is  a  patentee,  but  the  case  will  be 
transmitted  to  the  examiner  for  action  under 
Rule  126.  (Lipe  v.  Miller,  C.  D.  1904,  114, 
109  O.  G.  1608,  distinguished.)  Yarnall  v. 
Pope,  C.  D.  1905,  115  O.  G.  2136. 

2970.  Where  an  interference  is  before  the 
primary  examiner  upon  reference  under  Rule 
126  after  decision  on  priority  by  examiner  of 
interferences  to  consider  the  patentability  of 
the  issue  to  the  unsuccessful  party  aside  from 
the  question  of  priority  and  it  is  sought  to 
prevent  decision  of  the  primary  examiner  on 
the  ground  that  dissolution  of  interference  at 
this  time  will  prevent  appeal  on  priority  and 
may  result  in  the  issue  of  a  patent  to  one 
not  the  original  inventor.  Held,  that  the  right 
of  the  unsuccessful  party  to  further  oppose 
the  grant  of  a  patent  to  the  successful  party 
depends  upon  the  validity  of  the  standing  of 
the  former  as  an  applicant  entitled  to  patent 
in  the  event  of  final  decision  on  priority  in 
his  favor  and  that  the  order  sending  the  case 
to  the  primary  examiner  should  not  be  re- 
voked. Newell  V.  Clifford  v.  Rose,  C.  D.  1905, 
119  O.   G.   1583. 

2971.  In  remanding  the  interference  to  the 
patent  office  undecided  for  further  considera- 
tion of  the  question  of  identity  of  invention. 
Held,  that  if  after  such  consideration  the 
office  adheres  to  the  opinion  that  there  is  an 
interference  in  fact  the  present  interference 
record  with  any  additions  will  be  further  con- 
sidered by  the  court.  Podlesak  and  Podlesak 
v.  McTnnerney.  C.  D.  1906,  120  O.  G.  2127. 

2972.  Where  the  examiners-in-chief  upon 
appeal  on  priority  call  attention  under  Rule 
126  to  the  fact  that  in  their  opinion  the  de- 
vice of  one  of  the  parties  is  inoperative  and 
the  primary  examiner,  in  the  light  of  numer- 
ous affidavits  and  arguments  by  both  parties, 
reaches  the  conclusion  that  the  device  is  oper- 
ative and  the  opposing  party  makes  no  attempt 


416 


INTERFERENCE,  XLVIII,  XUX. 


at  the  hearing  before  the  commissioner  to 
point  out  any  supposed  errors  in  the  exam- 
iner's decision  and  no  good  reason  appears 
for  doubting  the  correctness  of  the  conclu- 
sions stated  therein,  Held,  that  these  concKi- 
sions  will  be  accepted  as  correct.  Duryea  and 
White  V.  Rice,  C.  D.  1906,  122  O.  G.  1395. 

2973.  When  it  is  contended  that  under  the 
provisions  of  Rules  126  and  130  a  right  of 
appeal  lies  to  the  examiners-in-chief  from  the 
decision  of  the  primary  examiner  on  a  refer- 
ence under  Rule  126,  Held,  that  these  rules 
provide  that  appeals  may  be  taken  as  in 
other  cases,  that  the  other  cases  referred  to 
are  those  provided  for  in  Rule  124,  and  that 
under  the  latter  rule  no  appeal  is  permitted 
from  the  decision  of  the  primary  examiner 
affirming  the  applicant's  right  to  make  the 
claim.  Duryea  and  White  v.  Rice,  C.  D.  1906, 
123  O.  G.  2627. 

2974.  Held,  that  the  proper  practice  when  a 
case  is  referred  to  the  primary  examiner  upon 
suggestion  by  the  examiners-in-chief  of  lack 
of  right  of  a  party  to  make  claims  and  the 
primary  examiner  disagrees  with  the  con- 
clusions of  the  examiners-in-chief  is  to  refer 
the  case  to  the  commissioner.    Id. 

2975.  Where  the  examiner  of  interferences 
called  attention,  according  to  the  provisions  of 
Rule  126,  that  in  his  opinion  the  issue  is  not 
patentable  and  upon  reference  the  primary 
examiner  disagreed  vi\x\\  the  examiner  of  in- 
terferences, whereupon  the  question  was  re- 
ferred to  and  decided  by  the  examiners-in- 
chief,  who  affirmed  the  decision  of  the  pri- 
mary examiner.  Held,  that  no  sufficient  reason 
appears  why  the  decision  of  the  examiners-in- 
chief  should  be  reviewed  on  petition.  Munro 
V.  Walker,  C.  D.  1906,  122  O.  G.  2062. 

2976.  Where  a  case  is  remanded  to  the  pri- 
mary examiner  by  the  commissioner  upon  ref- 
erence by  the  examiners-in-chief  under  Rule 
126,  the  primary  examiner  will  enter  a  pro 
forma  rejection  of  the  claims.  (Holz  v. 
Hewitt,  ante,  98,  127  O.  G.  1992.)  He  may, 
however,  in  such  action  include  any  recom- 
mendation he  may  deem  proper  in  order  that 
the  examiners-in-chief  may  have  the  benefit 
of  his  expert  knowledge  of  the  art  if  the 
case  comes  before  them  on  appeal.  Serrell  v. 
Donnelly,  C.  D.  1907.  129  O.  G.  2501. 

2977.  Where  an  interference  is  remanded 
to  the  primary  examiner  in  view  of  a  recom- 
mendation by  the  examiners-in-chief,  the  ex- 
aminer should  enter  a  decision  in  the  inter- 
ference in  conformity  with  that  recommenda- 


tion and  should  set  a  limit  of  appeal  from  said 
decision.  Behrend  v.  Lamme  v.  Tingley,  C. 
D.  1910,  151  O.  G.  1013. 

XLVIII.  Suspending  Action  on  Other  Ap- 
plications During  Interference. 

2978.  An  application  will  not  be  withdrawn 
from  issue  to  await  the  termination  of  an  in- 
terference involving  another  application  by 
the  same  party  when  this  office  is  of  the  opin- 
ion that  the  two  applications  cover  separate 
and  divisible  inventions.  Ex  parte  Carroll,  C. 
D.  190.5,  115  O.  G.  510. 

2979.  Where  a  divisional  application  is  filed 
for  purposes  of  interference  with  claims  to 
the  same  specific  form  shown  in  the  original 
case,  though  the  claims  in  the  divisional  case 
are  narrower  than  the  claims  in  the  original 
case.  Held,  that  the  original  application  will 
not  be  allowed  until  the  contemplated  inter- 
ference is  terminated.  Ex  parte  Gueniffet, 
Benoit,  and  Nicault,  C.  D.  1905,  119  O.  G. 
33S. 

2980.  Where  claims  of  a  divisional  applica- 
tion and  claims  of  a  parent  application  arc 
readable  upon  the  same  specific  form.  Held, 
that  the  parent  case  will  not  be  allowed  be- 
fore termination  of  a  proposed  interference 
upon  the  divisional  case  merely  because  the 
claims  of  the  parent  case  are  broader  than 
those  of  the  divisional  case  and  also  read  upon 
a  species  not  patentably  different  from  that 
of  the  divisional  case.    Id. 

XLIX.  Stipulations  and  Waivers. 

2981.  A  stipulation  that  S.  completed  the 
invention  in  June  and  July  does  not  prove 
that  he  completed  it  before  June  9,  when  H. 
filed  his  application.  Silverman  v.  Hendrick- 
son,  C.  D.  1902,  99  O.  G.  445. 

2982.  Where  a  stipulation  was  signed  to 
the  effect  that  the  amount  of  molten  metal  in 
the  defendant's  mixer  varies  from  nothing 
to  its  full  capacity,  but  upon  the  facts  being 
more  fully  ascertained  notice  was  given  by 
the  plaintiff  that  the  stipulation  in  so  far  as 
it  was  contrary  to  the  evidence  would  be 
repudiated.  Held,  that  the  stipulation  is  not 
binding.  **Carnegie  Steel  Company,  Lim- 
ited V.  Cambria  Iron  Company,  C.  D.  1902, 
99  O.  G.  1866. 

2983.  While  a  stipulation  is  undoubtedly  ad- 
missible in  evidence,  it  ought  not  to  be  used 
as  a  pitfall,  and  where  the  facts  subsequently 


INTERFERENCE,  XUX. 


417 


developed  show  with  respect  to  a  particular 
matter  that  it  was  inadvertently  signed  coun- 
sel may  upon  giving  notice  in  sufficient  time  to 
prevent  prejudice  to  the  opposite  party  re- 
pudiate any  fact  inadvertently  incorporated 
therein.    **Id. 

2984.  In  public-use  proceedings  a  stipula- 
tion as  to  what  a  witness  would  testify  if 
called,  signed  by  counsel  for  the  applicant 
and  counsel  for  the  protestant,  is  not  effective 
unless  approved  by  the  patent  office.  Ex  parte 
Kephart.  C.  D.  190.3,  103  O.  G.  1914. 

2985.  Public-use  proceedings  are  not  to  be 
regarded  as  a  contest  between  the  protestant 
and  the  applicant,  but  as  an  investigation  on 
behalf  of  the  public  by  the  patent  office.  The 
approval  of  the  patent  office  is  necessary  to 
make  any  agreement  affecting  the  merits  of 
the  case  binding.    Id. 

2986.  Where  the  examiner  in  his  decision 
makes  a  statement  as  to  admissions  and  waiv- 
ers by  counsel  at  the  hearing.  Held,  that  if 
there  was  error  in  the  statement  it  should 
be  corrected  by  rehearing  before  the  exam- 
iner. The  matter  will  not  be  reviewed  on  ap- 
peal. Hansen  v.  Wardwell,  C.  D.  1905,  116 
O.  G.  2608. 

2987.  Where  it  is  alleged  that  there  was 
error  in  the  examiner's  decision  because  of 
a  misunderstanding  as  to  an  oral  waiver  made 
at  the  hearing,  Held,  that  the  error  must  be 
corrected  by  motion  for  rehearing  promptly 
made  and  that  it  cannot  be  corrected  long 
after  the  limit  of  appeal  has  expired.    Id. 

2988.  The  provisions  in  .the  statutes  and 
rules  in  regard  to  taking  depositions  may  be 
waived  by  the  opposing  party,  since  they  are 
intended  for  his  benefit.  Badger  v.  Morgan 
and  Hopeisel,  C.  D.  1905,  117  O.  G.  598. 

2989.  Objections  as  to  informalities  in  de- 
positions should  be  made  at  the  time  they 
are  taken  unless  the  right  of  objection  is  re- 
served by  stipulation.     Id. 

2990.  Where  it  was  agreed  that  testimony 
for  one  party  should  be  taken  in  the  absence 
of  opposing  counsel  and  it  was  stipulated  that 
certain  named  objections  were  reserved.  Held, 
that  other  objections  were  waived.     Id. 

2991.  Where  the  two  parties  to  an  inter- 
ference file  a  stipulation  in  lieu  of  testimony 
and  in  that  stipulation  one  of  the  parties 
states  that  he  is  not  the  inventor  of  the  sub- 
ject-matter in  issue,  Held,  that  there  is  no 
reason  for  continuing  the  interference,  and 
the    examiner    of    interferences    may    render 

27 


judgment  of  priority  without  setting  a  day  for 
hearing.  Townsend  v.  Corey,  C.  D.  190.5,  119 
O.  G.  2237. 

2992.  There  is  no  appeal  from  a  judgment 
of  priority  rendered  in  view  of  the  admis- 
sion of  a  party  that  he  is  not  the  inventor, 
and  no  limit  of  appeal  need  be  set  from  such  a 
decision.     Id. 

2993.  Where  a  party  to  an  interference,  in 
which  times  for  taking  testimony  had  been 
set,  files  a  motion  for  judgment  on  the  record, 
together  with  a  stipulation  signed  by  the  par- 
ties setting  forth  that  the  parties  involved  in 
the  interference  are  the  same  parties  who  filed 
certain  applications  for  foreign  patents  spe- 
cified in  the  oaths  attached  to  their  respective 
applications  and  in  their  preliminary  state- 
ments, and  judgment  is  rendered  on  the  record 
so  made  by  the  several  tribunals  of  the  pat- 
ent office  and  by  the  court  of  appeals  of  the 
District  of  Columbia,  permission  will  not  be 
granted  thereafter  to  such  party  to  take  tes- 
timony upon  the  question  of  priority  of  inven- 
tion. A  submission  of  the  case  upon  the 
stipulation  after  an  opportunity  was  given  to 
take  testimony  amounted  to  a  waiver  of  the 
right  to  take  testimony.  De  Ferranti  v.  Lind- 
mark,  C.  D.  1908,  137  O.  G.  731. 

2994.  The  filing  of  stipulations  in  uncer- 
tain and  indefinite  language  which  require 
construing  by  the  office  instead  of  an  undis- 
puted statement  of  facts  or  testimony  duly 
taken  with  opportunity  for  cross-examination 
cannot  be  too  strongly  condemned.  Shiner  v. 
Edison,  C.  D.  1909,  147  O.  G.  517. 

2995.  Where  O.  was  restricted  to  his  filing 
date,  August  8,  1906,  for  his  date  of  concep- 
tion and  constructive  reduction  to  practice 
of  the  invention  in  issue,  a  stipulation  that 
patterns  of  an  article  embodying  this  invention 
were  made  by  Y.  on  July  3,  finished  articles 
made  on  July  25,  sold  and  delivered  July  29, 
found  satisfactory  and  paid  for  September  17, 
1906,  Held,  sufficient  to  establish  that  Y.  was 
the  first  to  conceive  the  invention  and  was 
<liligent  in  reducing  it  to  practice.  ♦Oakes  v. 
Young,  C.  D.  1910,  152  O.  G.  1225. 

2996.  Where  a  stipulation  is  filed  in  con- 
nection with  a  motion  for  judgment  on  the 
record,  stating  merely  that  the  parties  who 
filed  certain  foreign  applications  relied  upon 
in  the  preliminary  statements  are  the  same 
parties  who  filed  the  interfering  applications 
in  this  country.  Held,  that  the  stipulation  adds 
no  facts  not  effectually  admitted  by  the  mo- 
tion itself  and  is  therefore  unnecessary  and 


418 


INTERFERENCE,  L,   (a). 


does  not  change  the  hearing  on  such  motion  to 
a  final  hearing  on  the  merits.  *Lindmark  v. 
De  Ferranti,  C.  D.  1910,  153  O.  G.  1082. 

L.  Testimony. 
(a)  In  General. 

2997.  Where  a  party  refers  in  his  testimony 
to  a  device  made  by  him  as  embodying  "Evans 
rollers"  and  in  his  argument  contends  that  he 
meant  thereby  the  rollers  shown  in  his  appli- 
cation and  not  those  shown  in  a  patent  to 
Evans,  Held,  that  this  distinction  should  have 
been  made  in  the  testimony  instead  of  the  ar- 
gument and  that  it  is  not  sufficient  to  say  that 
both  parties  understood  the  term  in  the  same 
way.  Nielson  v.  Bradshaw,  C.  D.  1900,  91 
O.  G.  644. 

2998.  Where  the  testimony  is  conflicting 
and  unsatisfactory,  but  supports  the  senior 
party's  allegation  of  reduction  to  practice  in 
1897,  as  well  as  it  does  that  of  the  junior 
party  two  years  later.  Held,  that  the  decision 
of  the  commissioner  in  favor  of  the  senior 
party  should  be  affirmed.  *Scott  v.  Scott, 
C.  D.  1901,  96  O.  G.  16.50. 

2999.  Where  the  inventor  alleges  the  mak- 
ing of  caps  embodying  the  invention  and  the 
supporting  testimony  of  other  witnesses  is 
simply  to  the  effect  that  they  saw  caps  like 
cap  No.  1,  but  there  are  other  caps  more  or 
less  like  No.  1  and  yet  which  do  not  embody 
the  issue  in  controversy,  Held,  that  the  testi- 
mony amounts  to  nothing  and  does  not  prove 
the  making  of  the  invention.  *Lindemeyr  v. 
Hoffman  et  al.,  C.  D.  1901,  95  O.  G.  838. 

3000.  While  Rule  156  requires  that  there  be 
a  written  consent  of  both  parties  before  testi- 
mony may  be  taken  stenographically.  Held, 
that  where  one  of  the  parties  did  not  attend 
the  examination  the  reason  for  the  rule  does 
not  apply,  so  that  it  is  immaterial  how  the 
testimony  was  taken  down,  provided  it  com- 
plied with  the  rules  in  other  respects.  Rolfe 
V.  Taylor,  C.  D.  1904,  111  O.  G.  1938. 

3001.  Held,  that  no  decision  upon  patenta- 
bility against  any  of  the  parties  can  be  found- 
ed on  the  testimony  taken  upon  the  question 
of  priority  without  permitting  such  parties  to 
offer  further  evidence  if  they  so  desire.  Nied- 
ringhaus  v.  Marquard  v.  McConnell,  C.  D. 
1904,  118  O.  G.   1683. 

3002.  Where  the  junior  party  sought  by 
petition  to  obtain  a  review  of  the  question  of 
the  abandonment  of  the  senior  party's  appli- 


cation and  in  denying  the  petition  it  was 
stated  that  if  the  evidence  in  the  interference 
justified  such  a  course  the  question  would  be 
reconsidered.  Held,  that  the  action  of  the  ex- 
aminer of  interferences  in  setting  times  for 
the  taking  of  testimony  relative  to  the  aban- 
donment of  the  senior  party's  application  was 
correct.  Kinsman  v.  Strohm,  C.  D.  1906,  125 
O.  G.  1699. 

3003.  Where  party  claimed  to  have  disclosed 
his  invention  to  his  solicitor,  among  others, 
and  the  solicitor  was  not  put  upon  the  stand, 
but  it  appears  that  the  party  was  not  certain 
of  disclosure  to  the  solicitor  at  the  early  date 
upon  which  disclosure  was  made  to  another 
witness  who  did  testify.  Held,  that  the  failure 
to  call  the  solicitor  as  a  witness  was  of  no 
consequence.  Turnbull  v.  Curtis,  C.  D.  1906, 
120  O.  G.  2442. 

3004.  The  appellee's  motion  that  an  appeal 
to  the  commissioner  from  the  decision  of  the 
examiner  of  interferences  on  a  motion  for 
leave  to  take  testimony  be  dismissed  on  the 
ground  that  the  question  is  reviewable  by  the 
commissioner  only  after  having  been  passed 
on  by  the  examiners-in-chief  denied.  Lowry 
and  Cowly  v.  Spoon,  C.  D.  1906,  124  O.  G. 
1846. 

3005.  Where  the  patentability  of  a  party's 
claim  is  contested  on  final  hearing,  as  pro- 
vided in  Rule  130,  and  one  of  the  parties 
moves  for  leave  to  take  testimony,  Held,  that 
the  decision  of  the  examiner  of  interferences 
on  the  motion  will  be  regarded  as  final  and 
that  no  appeal  therefrom  will  be  entertained. 
Id. 

3006.  In  an  interference  proceeding  where, 
in  addition  to  the  taking  of  testimony  as  to 
who  was  the  first  inventor,  permission  was  ob- 
tained to  take  testimony  concerning  the  right 
of  one  of  the  parties  to  make  the  claims  for 
use  at  the  first  hearing  on  priority  under 
Rule  130,  Held,  that  the  rule  contemplates 
but  one  contest,  and  that  leading  to  an  award 
of  priority,  and  not  two  distinct  contests  and 
two  separate  proceedings.  The  taking  of 
testimony  on  the  question  of  priority  should 
not  therefore  be  suspended  until  the  question 
of  the  right  to  make  the  claims  has  been  de- 
termined. Hewitt  V.  Weintraub  v.  Hewitt  and 
Rogers,  C.  D.  1907,  128  O.  G.   1689. 

3007.  The  question  whether  certain  ele- 
ments of  the  issue  are  not  present  in  one 
party's  structure,  but  can  only  be  read  into 
such  issue  by  applying  limitations  which  do 
not    operate    in    the    manner    defined    in    the 


INTERFERENCE,  L,  (b). 


419 


claims,  is  one  of  fact,  upon  which  the  oppo- 
sing party  may  be  permitted  to  present  testi- 
mony. Weintraub  v.  Hewitt  and  Rogers,  C. 
D.   1007,  126  O.  G.  2589. 

3008.  There  appears  to  be  no  warrant  for 
the  taking  of  testimony  relative  to  the  iden- 
tity of  the  inventions  of  the  parties  to  an  in- 
terference. If  the  inventions  are  not  identi- 
cal, it  must  follow  either  that  one  of  the  par- 
ties has  no  right  to  make  the  claims  in  issue 
or  that  the  claims  are  indefinite  and  ambigu- 
ous and  do  not  with  sufficient  exactness  define 
the  invention  of  either  party.  This  is  not  a 
question  of  priority  of  invention.     Id. 

3009.  The  court  of  appeals  of  the  District 
of  Columbia  has  no  original  jurisdiction  to 
direct  and  supervise  the  administration  of  the 
affairs  of  the  patent  office  and  a  petition  that 
the  commissioner  of  patents  be  instructed  to 
allow  a  party  to  an  interference  to  take  testi- 
mony denied.  *De  Ferranti  v.  Lindmark,  C. 
D.  1908,  1.37  O.  G.  733. 

3010.  It  is  the  well-settled  practice  of  the 
office  that  a  party  will  not  be  permitted  to 
take  testimony  on  the  question  of  the  patent- 
ability of  the  issue.  This  is  for  the  evident 
reason  that  the  question  of  patentability  is 
entirely  irrelevant  to  the  question  of  priority. 
Von  Keller  v.  Hayden  v.  Kruh  v.  Jackson,  C. 
D.   1911,   173   O.   G.   285. 

(b)  Admissability  of  Record  in  Other  Cases. 

3011.  In  considering  a  motion  by  a  party 
after  his  time  for  taking  testimony  has  ex- 
pired that  he  be  permitted  to  use  in  one  inter- 
ference testimony  taken  in  another  it  must 
be  decided  not  only  whether  the  testimony  it- 
self is  admissible,  but  whether  the  party  has 
any  right  at  that  time  to  introduce  any  evi- 
dence whether  in  the  form  requested  or  any 
other  form.  Stone  v.  Hutin  and  Leblanc,  C. 
n.    1898,   84  O.  G.   1731. 

3012.  Rule  157  relates  merely  to  the  form 
of  the  evidence  and  does  not  modify  in  any 
way  the  other  rules  in  reference  to  the  time 
within  which  testimony  must  be  taken,  and 
therefore  evidence  which  is  not  admissible 
under  such  other  rules  cannot  be  admitted 
merely  because  presented  in  a  different  form 
under  Rule  157.    Id. 

3013.  Where  for  the  purpose  of  discredit- 
ing a  witness  in  an  interference  a  deposition 
given  by  him  in  another  interference  is  in- 
troduced. Held,  proper,  but  Held,  further,  that 
the  deposition   cannot  be  accepted  as  proper 


evidence   to   establish    the    facts    stated    in    it. 
Talbot  V.  Monell,  C.  D.  1902,  99  O.  G.  2965. 

3014.  Where  a  party  to  one  interference  in- 
troduces in  evidence  the  deposition  of  one  of 
the  witnesses  given  in  another  interference 
for  the  purpose  of  discrediting  him.  Held, 
that  this  does  not  justify  the  opposing  party 
in  introducing  the  depositions  of  other  wit- 
nesses in  that  other  interference  for  the  pur- 
pose of  establishing  the  facts  alleged  by  those 
witnesses.     Id. 

3015.  Where  after  a  party's  time  for  taking 
testimony  has  expired  he  makes  a  motion  to 
be  permitted  to  use  as  a  part  of  his  evidence 
testimony  taken  in  another  interference,  Held. 
that  the  motion  will  be  denied.  Donning  v. 
Stackpole  and  Laganke,  C.  D.  1903,  107  O. 
G.   268. 

3016.  Rule  157,  permitting  a  party  upon 
motion  to  use  in  one  interference  testimony 
taken  in  another,  relates  merely  to  the  form 
in  which  the  testimony  is  presented  and  does 
not  modify  the  other  rules  as  to  presenting 
testimony.  Testimony  to  be  admissible  must 
be  presented  at  the  proper  time.     Id. 

3017.  Where  in  one  interference  one  of  the 
applicants  admits  that  the  proceeding  is  close- 
ly related  to  another  interference  in  which 
he  was  involved  and  introduces  in  evidence 
the  decision  in  that  other  interference  and 
says  that  he  has  no  objection  to  the  introduc- 
tion of  the  entire  record,  Held,  that  the  oppo- 
smg  party  may  refer  to  the  entire  record  with- 
out printing  it  as  a  part  of  his  proofs.  Hall 
v.  Weber,   C.  D.  1904,  108  O.  G.  1054. 

3018.  Testimony  taken  in  one  interference 
may  be  used  in  a  later  interference  upon 
proper  showing  against  a  party  who  was  in- 
volved in  the  first  interference,  where  he  is 
permitted  in  the  second  case  to  further  cross- 
examine  the  witnesses.  Kenny  and  Thor- 
darson  v.  O'Connell  v.  Baird  v.  Schmidt,  C. 
D.  190.5,  117  O.  G.  1163. 

3019.  Where  the  only  party  who  does  not 
consent  to  the  use  of  testimony  taken  in  a 
prior  interference  was  a  party  to  the  prior  in- 
terference and  it  appears  that  the  issues  in 
the  two  cases  are  closely  related,  Held,  that 
it  would  be  a  useless  hardship  upon  the  par- 
ties to  compel  the  retaking  of  the  testimony. 
Id. 

3020.  Rule  157  does  not  mean  merely  that 
testimony  taken  in  one  interference  may  be 
used  in  another  where  the  parties  consent, 
but  means  that  it  may  be  used  in  a  proper 
case  even  in  the  absence  of  consent.     It  is  a 


420 


INTERFERENCE,  L,  (c). 


matter  for  the  discretion  of  this  office.     Id. 

3021.  Rule  I'll,  which  permits  the  use  in  one 
interference  of  depositions  given  in  another, 
violates  no  fundamental  rule  of  evidence  and 
is  valid.     Id. 

3022.  It  is  not  contrary  to  the  fundamental 
rules  of  evidence  to  permit  the  use  in  one 
cause  of  depositions  given  in  another,  since 
it  is  the  settled  rule  as  announced  by  the 
courts  to  permit  such  use  under  proper  cir- 
cumstances.    Id. 

3023.  The  authority  for  permitting  the  use 
in  one  cause  of  depositions  given  in  another, 
even  in  the  absence  of  the  consent  of  the 
parties,  is  clear,  and  the  only  question  is  as 
to  whether  the  circumstances  of  the  particular 
case  justify  it.     Id. 

3024.  Held,  that  the  testimony  submitted  in 
a  prior  interference  may  be  given  the  force 
and  effect  of  an  ex  parte  affidavit  in  the 
consideration  of  the  question  whether  a  sec- 
ond interference  on  a  broader  issue  is  justi- 
fied. Wende  v.  Horine,  C.  D.  1903,  118  O.  G. 
1070. 

3025.  Where  motion  is  made  to  permit  the 
use  of  testimony  taken  in  other  interferences 
between  the  same  parties,  Held,  that  the  mo- 
tion would  not  be  denied  because  the  present 
interference  relates  to  a  process,  whereas  the 
other  interferences  related  to  apparatus.  Stru- 
ble  V.  Young,  C.  D.  190,5,  119  O.  G.  33S. 

3026.  Where  motion  is  made  to  permit  use 
of  testimony  taken  in  other  interferences  be- 
tween same  parties.  Held,  that  the  motion 
will  not  be  denied  because  such  testimony 
contains  unnecessary  matter.     Id. 

3027.  Where  the  real  parties  in  interest  in 
a  pending  interference  are  the  same  as  in  a 
prior  interference  and  the  inventions  involved 
are  substantially  the  same,  permission  may  be 
obtained,  under  the  provisions  of  Rule  157, 
to  use  in  the  pending  interference  the  testi- 
mony taken  in  the  former  interference.  Beall, 
Jr.  v.  Lyon,  C.  D.  1907,  127  O.  G.  3215. 

3028.  Where  C.  was  denied  the  privilege 
of  introducing  testimony  taken  in  his  behalf 
in  a  prior  interference  between  the  same  par- 
ties in  view  of  the  opposition  of  E.  and  M.  on 
the  ground  that  they  were  not  represented 
at  the  taking  of  C.'s  testimony,  a  motion  by 
E.  and  M.  to  introduce  testimony  taken  in 
their  behalf  in  the  same  interference  should 
not  be  granted  merely  because  C.  was  repre- 
sented at  the  examination  of  their  witnesses. 
Corey  v.  Eiseman  and  Misar,  C.  D.  1907,  126 
O.  G.  3421. 


3029.  In  an  interference  between  H.  and 
T.  a  witness  testified  to  certain  facts.  Later, 
in  an  interference  between  H.  and  W.,  he 
denied  any  knowledge  of  these  facts.  Held, 
that  T.  and  W.,  not  being  privies,  the  testi- 
mony in  the  former  interference  cannot  be 
admitted  in  the  latter  except  for  the  purpose 
of  discrediting  the  witness.  Hewitt  v.  Wein- 
traul),  C.  D.  1908,  134  O.  G.  1561. 

3030.  Where  there  are  two  companion  in- 
terferences, one  two-party  and  the  other  three- 
party,  in  which  the  testimony  is  taken  as  a 
single  record  by  stipulation  of  all  parties  and 
one  of  the  parties  runs  over  the  time  set  for 
taking  his  testimony,  obtaining  a  stipulation 
extending  the  time  from  his  opponent  in  the 
two-party  case,  but  not  from  the  one  who  is 
involved  in  the  three-party  case  only.  Held, 
that  the  testimony  taken  under  such  extension 
of  time  must  be  separated  from  the  common 
record  and  entitled  only  in  the  two-party  in- 
terference. Keith,  Erickson,  and  Erickson  v. 
Lundquist  v.  Lorimer  and  Lorimer,  C.  D. 
1910,  156  O.  G.  79S. 

(c)   Relevancy. 

3031.  Testimony  should  not  be  taken  in  an 
interference  proceeding  merely  for  the  pur- 
pose of  showing  that  the  issue  of  an  inter- 
ference is  anticipated  or  devoid  of  patentabil- 
ity in  view  of  the  prior  art  when  the  opposing 
party  objects  to  such  testimony.  Testimony 
should  be  confined  to  the  question  of  priority 
of  invention.  (Straus  v.  Cook,  43  MS.  Dec, 
65,  cited.)  Huber  v.  Aiken,  C.  D.  1899,  88  O. 
G.  152.5. 

3032.  Neither  the  rules  nor  the  practice  of 
this  office  provides  for  raising  and  testing  the 
question  as  to  whether  an  interference  issue  is 
anticipated  by  prior  patents  in  the  manner  at- 
tempted in  this  case.     Id. 

3033.  To  permit  a  party  to  an  interference 
to  take  up  the  question  of  anticipation  of  the 
issue  by  prior  patents  and  call  experts  to  tes- 
tify at  length  on  such  matter  would  be  in  ef- 
fect to  suspend  the  interference  proceeding 
and  is  unwarranted  by  the  rules.     Id. 

3034.  When  a  party  to  an  interference  is  of 
the  opinion  that  the  issue  is  anticipated  by  the 
prior  art,  he  should  proceed  to  raise  this  ques- 
tion, as  provided  by  Rule  122.     Id. 

3035.  The  complication  of  the  record  by 
testimony  which  is  irrelevant,  immaterial,  and 
utterly  useless  for  the  elucidation  of  the  sub- 
stantial issue  between  the  parties  and  by  use- 


INTERFERENCE,  L,  (d). 


421 


less     and     irrelevant     controversies     between 
counsel   condemned.     *Scott   v.    Scott,   C.   D. 

1901,  96  O.  G.  1650. 

3036.  An  interference  proceeding  raises  the 
question  which  of  the  parties  to  it  was  the 
first  in  point  of  time  to  make  the  invention, 
and  the  testimony  should  be  confined  to  that 
question.     Trufant  v.  Prindle  v.  Brown,  C.  D. 

1902,  101  O.  G.  1008. 

3037.  The  issue  raised  by  an  interference 
is  that  of  priority,  and  ordinarily  the  testi- 
mony should  be  confined  to  this  issue.  A  party 
has  a  right  to  assume  that  the  testimony  taken 
by  an  opponent  in  an  interference  proceeding 
will  conform  to  the  issue  formulated  by  the 
office,  and  it  is  an  injustice  to  put  him  to  the 
trouble  and  expense  of  considering  collateral 
questions.  Stroud  v.  Miller,  C.  D.  1902,  101 
O.  G.  207.5. 

3038.  In  an  interference  the  testimony 
should  ordinarily  be  confined  to  the  question 
of  priority  of  invention,  and  as  a  general  rule 
proceedings  will  not  be  suspended  to  take 
testimony  upon  a  question  which  is  ex  parte 
in  character.  Steinmetz  v.  Hewitt,  C.  D.  1903, 
107  O.  G.  1972. 

(d)  Admissability. 

3039.  The  rule  that  if  a  deposition  is  in  any 
respect  open  to  irregularities  the  objection 
must  be  taken  before  the  cause  goes  to  hear- 
ing is  as  salutary  and  as  necessary  in  inter- 
ference proceedings  in  the  patent  office  as  it 
is  in  the  ordinary  courts  of  justice.  *Mcyer 
et  al.  V.  Rothe,  C.  D.  1898,  84  O.  G.  649. 

3040.  Rothe,  who  is  a  German,  was  not 
conversant  with  the  English  language.  The 
notary  public  before  whom  Rothe's  testimony 
was  adduced  acted  as  commissioner  and  took 
down  the  answers  of  Rothe  in  the  English 
language,  after  having  interpreted  the  inter- 
rogatories to  him  in  German,  without  being 
sworn  as  an  interpreter.  Held,  that  the  de- 
position so  taken  was  admissible  and  that  it 
was  not  necessary  to  swear  the  notary  as  in- 
terpreter.   *Id. 

3041.  The  uniform  tenor  of  the  decisions 
is  to  the  effect  that  when  an  interpreter  is 
required  he  shall  be  sworn  as  a  witness,  but 
that  no  interpreter  is  required  when  the  of- 
ficer taking  the  deposition  is  himself  conver- 
sant with  the  language  of  the  witness,  and 
when  no  interpreter  is  required  there  can  be 
no  requirement  of  an  oath  to  interpret  faith- 
fully.    Unless  error  or  unfairness  is  affirma- 


tively shown  the  official  character  of  the  of- 
ficer taking  the  deposition  and  his  official  cer- 
tificate thereto  conformably  with  the  require- 
ments of  law  are  sufficient  guarantee  that  the 
duty  imposed  upon  him  by  law  has  been  faith- 
fully performed.     *Id. 

3042.  While  there  may  be  cases  where  it 
would  be  proper  that  the  officer  should  be 
specially  sworn  as  an  interpreter,  yet  a  deposi- 
tion should  not  be  rejected  merely  because 
it  does  not  appear  affirmatively  that  the  of- 
ficer has  been  sworn  to  report  correctly  the 
answers  of  a  witness  given  in  a  foreign  lan- 
guage with  which  the  officer  is  himself  famil- 
iar.   *Id. 

3043.  Our  depositions  are  required  to  be  in 
the  English  language,  and  in  that  language 
alone  is  the  officer  required  to  take  them  down 
and  return  them.  There  can  be  no  objection 
to  a  deposition  signed  by  a  witness  not  con- 
versant with  the  English  language.  Such  a 
deposition  is  not  diflferent  in  principle  from 
one  signed  by  a  witness  who  cannot  read  or 
write  and  who  signs  by  mark.     *Id. 

3044.  Held,  that  the  position  taken  by  Meyer 
et  al.,  that  the  testimony  on  behalf  of  Rothe 
does  not  sufficiently  identify  the  invention  in 
issue,  is  not  well  founded,  and  the  decision 
of  the  acting  commissioner  awarding  prior- 
ity to  Rothe  affirmed.    *Id. 

3045.  Where  after  the  taking  of  testimony 
was  closed  and  the  interference  was  on  appeal 
to  the  commissioner  on  the  merits  ex  parte 
affidavits  were  filed  by  one  of  the  parties  to 
correct  alleged  errors  and  deficiencies  in  the 
testimony.  Held,  that  there  was  not  only  no 
error  in  the  action  of  the  commissioner  in 
disregarding  those  affidavits,  but  that  it  would 
have  been  gross  error  to  have  considered  them 
at  all  for  the  purpose  for  which  they  were  pre- 
sented. *Neilson  v.  Bradshaw,  C.  D.  1900,  91 
O.  G.  644. 

3046.  Testimony  in  patent  cases  of  interfer- 
ence is  taken  substantially  according  to  the 
rules  which  prevail  in  equity,  and  it  is  one 
of  the  cardinal  principles  of  our  jurisprudence 
that  testimony  both  in  equity  and  at  common 
law  must  be  taken  under  the  safeguard  of  the 
right  of  cross-examination.  Affidavits  may 
lay  the  foundation  for  the  introduction  of 
testimony,  but  they  are  not  themselves  testi- 
mony and  least  of  all  could  they  be  allowed 
to  contravene  testimony  already  taken.     *Id. 

3047.  No  appeal  will  be  entertained  from  a 
decision  of  the  examiner  of  interferences 
granting    a    motion    to    admit    testimony    the 


422 


INTERFERENCE,  L.  (e),  (f),  (g). 


printed  copies  of  which  were  not  filed  within 
the  time  required  by  the  rule.  Blackmore  v. 
Hall,  C.  D.  1908,  137  O.  G.  1237. 

(e)   Correction    of. 

3048.  Where  an  exhibit  model  referred  to 
by  witnesses  in  the  record  of  one  of  the  par- 
ties, though  tiled  in  the  patent  office,  was  not 
properly  marked  and  identified,  and  for  that 
reason  was  not  applied  to  the  interference  rec- 
ord and  was  not  considered  by  the  examiner 
of  interferences  in  rendering  his  decision. 
Held,  that  said  exhibit  cannot  be  identified 
and  made  a  part  of  the  record  in  the  inter- 
ference by  ex  parte  affidavits  filed  by  the 
witnesses  who  originally  testified  with  respect 
to  said  exhibit.  Hendler  v.  Graf,  C.  D.  1901, 
96  O.  G.  2063. 

3049.  Where,  after  the  taking  of  testimony 
was  closed  and  the  interference  was  on  appeal 
to  the  examiners-in-chief,  ex  parte  affidavits 
were  filed  by  one  of  the  parties  to  correct  al- 
leged errors  and  deficiencies  in  the  testimony, 
Held,  that  said  affidavits  should  not  be  con- 
sidered for  the  purpose  for  which  they  were 
presented.  Affidavits  may  lay  the  foundation 
for  the  introduction  of  testimony,  but  they 
are  not  themselves  testimony.  (Nielson  v. 
Bradshaw,  C.  D.  1900,  265,  91  O.  G.  644.)  Id. 

3050.  Where  a  prima  facie  case  has  been 
made  out  by  reason  of  ex  parte  affidavits  that 
the  testimony  as  originally  taken  is  defective 
through  the  fault  of  the  officer  before  whom 
the  testimony  was  taken  in  not  properly  mark- 
ing an  exhibit  and  that  the  incorrectly-marked 
exhibit  sent  to  the  patent  office  is,  in  fact,  the 
exhibit  referred  to  in  the  record.  Held,  that 
the  equities  of  the  case  demand  the  party  in 
whose  behalf  the  prima  facie  case  has  been 
made  should  be  given  an  opportunity  to  prove 
that  the  exhibit  on  file  in  the  patent  office  is, 
in  fact,  the  exhibit  referred  to  in  his  record, 
and  further.  Held,  that  said  party  should  file 
a  motion  to  set  aside  the  decision  of  the  ex- 
aminer of  interferences  and  to  be  permitted 
to  take  further  testimony.    Id. 

(f)   Corroborative. 

3051.  An  inventor's  testimony  relative  to 
the  construction   and   operation   of  a   specific 

'  device  constituting  a  reduction  to  practice  is 
corroborated  by  a  single  witness.  Another 
witness  claims  to  have  seen  a  similar  device 
about  the  same  time  constructed  by  the  in- 
ventor which  contained  the  invention  in  issue, 


although  it  appears  that  it  was  not  the  identi- 
cal apparatus  which  the  inventor  described, 
Held,  that  the  testimony  of  the  latter  witness 
tends  to  strengthen  the  testimony  of  the  in- 
ventor that  he  reduced  the  invention  to  prac- 
tice at  the  time  claimed.  Dunbar  v.  Schel- 
lenger,  C.  D.  1906,  125  O.  G.  348. 

3052.  Where  a  corroborating  witness  as- 
sisted in  the  operation  of  a  device  alleged  to 
be  a  reduction  to  practice  of  the  invention  in 
issue  and  clearly  described  the  main  features 
of  such  device  and  its  operation  and  it  ap- 
pears that  the  device  could  not  operate  as  de- 
scribed unless  the  unidentified  features  were 
like  those  which  the  inventor  claims  were  em- 
bodied in  the  device  or  were  equivalents  there- 
of, in  the  absence  of  evidence  showing  that 
the  inventor  knew  of  such  equivalent  devices 
an  inference  arises  that  the  unidentified  fea- 
tures were  those  described  by  the  inventor. 
Id. 

3053.  Where  a  machine  embodying  the  in- 
vention in  issue  was  built  and  tested  and  sub- 
sequently other  similar  machines  were  put  in 
commercial  use,  Held,  that  the  fact  that  the 
commercial  machines  operated  successfully  is 
corroborative  of  the  testimony  that  the  tests 
of  the  original  machine  were  successful. 
*Stanbon  v.  Howe,  Warren,  and  Furber,  C.  D. 
1910,  1.53  O.  G.  823. 

3054.  When  D.  testified  that  he  conceived 
the  invention  in  issue  and  disclosed  it  to 
others  and  that  a  gun  embodying  the  issue  was 
built  under  his  direction  by  the  company  with 
which  he  was  connected.  Held,  that  testimony 
corroborating  him  as  to  the  building  of  the 
gun  is  sufficient  to  establish  that  the  invention 
originated  with  him  in  the  absence  of  testi- 
mony that  he  derived  knowledge  thereof  from 
the  opposing  party.  (Herman  v.  Fullman,  107 
O.  G.  1094.)  Driggs  V.  Schneider,  C.  D.  1911, 
162  O.  G.  269. 

(g)   Conflicting. 

3055.  Where  the  question  at  issue  is  one  of 
originality  and  the  testimony  of  the  contesting 
parties  is  in  the  main  contradictory,  it  is 
proper  and  necessary  to  consider  the  evidence 
in  the  light  of  the  surrounding  circumstances 
to  determine  the  history  of  the  invention  in 
both  parties'  minds,  the  relations  between  the 
two  parties,  and  the  credibility  of  both  parties. 
Miller  V.  Kelley,  C.  D.  1901,  405,  96  O.  G.  1038. 
Weber  v.  Flather,  C.  D.  1903,  103  O.  G.  223. 

3056.  Where  there  are  apparent  inconsisten- 
cies  in   the  testimony   given  by   the   inventor 


INTERFERENCE,  L,  (h). 


423 


himself  and  the  testimony  of  other  witnesses 
is  explanatory  of  the  inventor's  testimony, 
Held,  that  the  conclusion  is  justified  that  the 
inventor  was  merely  mistaken  in  giving  his 
testimony  and  that  he  has  not  knowingly  and 
willfully  perjured  himself.  Scott  v.  Laas  and 
Sponenburg,  C.  D.  1905,  118  O.  G.  1367. 

(h)   Competency  or   Weight. 

3057.  In  weighing  testimony  we  are  not 
bound  to  believe  a  particular  fact,  testified  to 
by  one  or  more  witnesses,  simply  because  they 
may  not  have  been  directly  contradicted 
therein  or  impeached  generally  by  evidence 
tending  to  show  a  want  of  reputation  for  ver- 
acity. The  inherent  probability  or  improb- 
ability of  such  fact  is  to  be  tested  by  un- 
questioned circumstances  that  surround  the 
main  transaction  or  occurrence,  as  well  as  by 
"the  ordinary  laws  that  govern  human  con- 
duct." (Atlantic  Works  v.  Brady,  C.  D.  1883, 
214,  23  O.  G.  1330,  107  U.  S.  192;  Telephone 
Cases,  C.  D.  1888,  321,  43  O.  G.  377,  126  U.  S. 
567.)  *Beals  v.  Finkenbiner,  C.  D.  1898,  82 
O.  G.  598. 

3058.  Testimony  of  a  witness  as  to  the  date 
when  an  alleged  anticipating  article  came  into 
his  possession  merely  from  recollection,  un- 
supported by  any  other  proof  and  not  fi.xed  in 
his  mind  by  any  other  occurrence  which  can 
be  itself  located  in  time,  is  insufficient  to  prove 
prior  use.  c  Flomerfelt  v.  Nerowitter,  C.  D. 
1898,  85  O.  G.  458. 

3059.  Where  seven  witnesses  testifying  four 
years  after  the  event  claim  to  have  seen  the 
roller-holder  box  and  a  drawing,  but  no  one 
of  them  is  shown  to  have  had  any  acquaint- 
ance with  the  photographic  art  or  with  any 
branch  of  it  or  to  have  had  any  intelligent 
comprehension  of  the  thing  which  was  ex- 
hibited to  them  and  had  no  interest  in  the  sub- 
ject-matter and  no  means  save  their  unaided 
memories  whereby  to  fix  the  time.  Held,  that 
the  extreme  improbability  of  their  testimony 
is  apparent.  *Eastman  v.  Houston,  C.  D.  1901, 
95  O.  G.  2064. 

3060.  The  mere  oral  testimony  of  a  witness 
given  five  years  after  the  event  can  be  given 
very  little  weight  when  there  is  no  reason 
shown  why  the  matter  should  have  been  fixed 
in  his  mind  and  when  the  original  sketches 
and  devices  in  regard  to  which  he  is  testify- 
ing have  not  been  produced  to  show  what  was 
done.  *Tyler  v.  St.  Amand,  C.  D.  1901,  94 
O.  G.  1969. 


3061.  Where  A.  and  a  member  of  his  com- 
pany identify  certain  studs  as  having  been 
made  in  1897  and  positively  identify  certain 
dies  as  the  ones  used  in  their  production  and 
it  subsequently  appears  that  the  dies  referred 
to  will  not  make  the  buttons,  and  it  also  ap- 
pears that  the  memory  of  the  witness  is  weak 
as  to  other  matters,  Held,  that  the  evidence  is 
not  clear  and  satisfactory  and  does  not  carry 
conviction  with  it.  Adams  v.  Murphy,  C.  D. 
1901,  96  O.  G.  845. 

3062.  The  testimony  of  a  witness  should  not 
be  disregarded  because  false  in  one  particular 
unless  it  was  wilfully  false  and  related  to  a 
material  matter.  d  Singer  Manufacturing 
Company  v.  Cramer,  C.  D.  1901,  97  O.  G.  552. 

3063.  The  failure  of  an  inventor  to  appear 
and  testify  in  his  own  behalf  is  capable  of  an 
unfavorable  inference;  but  where  he  has  as- 
signed his  invention  and  is  not  friendly  with 
the  assignee  it  is  not  entitled  to  much  weight 
Silverman  v.  Hendrickson,  C.  D.  1902,  99  O. 
G.  445. 

3064.  Where  P.  alleged  that  he  successfully 
performed  the  process  of  the  issue  at  a  cer- 
tain time  and  witnesses  state  that  he  then 
told  them  that  he  had  performed  the  process, 
but  they  did  not  see  it  performed.  Held,  not 
a  corroboration  as  to  reduction  to  practice, 
but  merely  as  to  conception.  Petrie  v.  De 
Schweinitz,  C.  D.  1902,  99  O.  G.  446. 

3065.  When  the  testimony  of  the  principal 
is  worthy  of  belief  and  his  testimony  is  corro- 
borated by  one  credible  witness.  Held,  suffi- 
cient to  establish  a  conception  and  a  reduction 
to  practice  of  the  invention.  Pupin  v.  Hutin 
and  Leblanc  v.  Stone,  C.  D.  1902,  100  O.  G. 
931. 

3066.  Where  the  contents  of  a  written  re- 
port made  by  an  inventor  stands  without  suffi- 
cient corroboration  as  to  time,  this  report 
cannot  be  considered  as  sufficient  to  establish 
a  date  of  conception  of  the  invention,  even 
though  it  did  in  fact  describe  the  invention. 
Id. 

3067.  Where  the  witnesses  identify  an  ex- 
hibit by  its  general  appearance  and  have  no 
knowledge  of  the  invention  embodied  in  it  and 
it  appears  that  the  invention  in  controversy 
is  a  feature  of  construction  almost  hidden 
from  view  and  having  no  effect  upon  the  gen- 
eral appearance.  Held,  insufficient  to  prove 
the  existence  of  the  invention  in  controversy 
at  the  date  stated.  Harris  v.  Stern  and  Lotz, 
C.  D.  1903,  105  O.  G.  259. 


421 


INTERFERENCE,  L,   (h). 


3068.  Where  the  testimonj'  of  the  inventor 
is  vague  and  is  corroborated  only  by  witnesses 
insufficiently  sl<illed,  if  skilled  at  all,  in  the 
particulars  involved,  who  testified  five  or  six 
years  after  the  event,  Held,  insufficient  to 
overcome  the  prior  filing  date  of  the  opposing 
party.  *McKnight  v.  Pohle  and  Croasdale, 
C.   D.   1903,  105   O.  G.  977. 

3069.  Where  the  attorney  for  M.  went  to 
the  opposing  party  to  disclose  his  invention 
and  discuss  the  question  of  joining  interests 
and  it  is  admitted  that  he  did  not  disclose 
the  specific  process  in  controversy  and  did  not 
claim  it  when  the  opposing  party  disclosed  it, 
Held,  that  the  presumption  against  his  claim 
as  inventor  cannot  be  overcome  by  vague  and 
uncertain  testimony.     *Id. 

3070.  The  testimony  as  to  the  making  of  a 
certain  device  given  by  a  witness  familiar 
with  the  art  and  interested  in  improvements 
therein  and  who  therefore  gave  particular  at- 
tention to  the  disclosure  is  entitled  to  much 
greater  weight  than  that  of  one  not  interested 
in  the  business.  ♦Greenwood  v.  Dover,  C.  D. 
1904,  109  O.  G.  2172. 

3071.  Where  the  testimony  as  to  the  suc- 
cessful operation  of  a  device  is  taken  some 
four  years  after  the  time  when  the  device  was 
used.  Held,  that  the  actions  of  the  inventor  at 
the  time  the  device  was  used  are  much  more 
significant  and  outweigh  mere  oral  testimony 
as  to  results.  Lemp  v.  Mudge,  C.  D.  1904,  112 
O.  G.  727. 

3072.  The  testimony  of  a  party  that  a  ma- 
chine was  submitted  to  the  officers  of  the 
company  by  which  he  was  employed  is  not 
evidence  of  successful  operation  and  does  not 
afford  corroboration  of  his  own  testimony 
that  the  machine  had  been  successfully  oper- 
ated.    Paul  V.  Hess,  C.  D.  1904,  113  O.  G.  847. 

3073.  Where  all  the  witnesses  do  not  posi- 
tively testify  that  the  trade-mark  "Gold  Seal" 
was  used  "on"  packages  containing  coffee,  but 
they  all  testify  that  it  was  used  "in  connection 
with"  the  sale  of  coffee,  and  at  least  three  of 
them  testify  that  packages  containing  coffee 
were  "marked  and  branded"  with  the  words 
"Gold  Seal,"  Held,  sufficient  to  establish  that 
the  coffee  was  sold  in  packages  on  which  ap- 
peared this  trade-mark.  J.  R.  Newberry  Co. 
v.  Jos.  J.  O'Donohue's  Sons,  C.  D.  1904,  111 
O.  G.  299. 

3074.  While  the  testimony  of  an  alleged 
adoption  and  use  prior  to  the  date  alleged  by 
the  registrant  in  his  statement  may  be  received 
and  considered.  Held,  that  where  the   regis- 


trant filed  in  1892  and  alleged  no  date  prior 
to  March  9,  1890,  the  testimony  of  a  witness 
that  the  mark  was  issued  in  1888  is  not  suffi- 
cient to  establish  this  earlier  date  when  the 
witness  testifies  solely  from  memory  some  fif- 
teen years  after  the  alleged  adoption  and  use. 
Auerbach  &  Sons  v.  Hall  &  Hayward  Com- 
pany, C.  D.  1904,  111  O.  G.  806. 

3075.  It  is  to  be  presumed  that  the  state- 
ment filed  with  an  application  for  registra- 
tion was  made  after  proper  inquiry,  and  while 
it  is  not  binding  upon  the  parties  to  an  inter- 
ference proceeding  it  is  still  entitled  to  con- 
siderable weight.     Id. 

3076.  Where  a  witness  identifies  a  drawing 
showing  a  rotating  baking-surface  and  was 
then  asked  on  cross-examination  if  he  had 
ever  seen  another  drawing  which  illustrated, 
in  addition  to  the  rotating  baking-surface,  the 
flue  construction  called  for  by  some  of  the 
counts  and  he  identifies  a  certain  part  of  one 
figure,  which  part  shows  merely  the  rotating 
baking-surface,  Held,  that  his  testimony  does 
not  establish  the  fact  that  the  flue  construc- 
tion was  ever  disclosed  to  him.  Cherney  v. 
Clauss,  C.  D.  1905,  115  O.  G.  2131. 

3077.  With  the  burden  of  proof  heavily 
upon  the  applicant  it  was  clearly  incumbent 
upon  him,  if  he  desired  to  establish  a  prior 
conception  of  the  flue  construction,  to  call  this 
witness  as  his  own,  or  at  least  when  he  was 
called  by  the  other  side  to  have  him  testify 
particularly  to  the  flue  construction.     Id. 

3078.  Where  the  witness  does  not  testify  to 
the  date  on  which  the  invention  was  alleged 
to  have  been  disclosed  to  him,  Held,  that  the 
testimony  is  clearly  insufficient  to  overcome 
a  patent  granted  before  the  filing  of  the  ju- 
nior party's  application.     Id. 

3079.  Where  the  testimony  submitted  is  not 
only  lacking  in  form,  but  is  wanting  in  sub- 
stance, and  though  the  record  may  give  the 
impression  that  essential  facts  may  have  been 
provable,  but  were  not  brought  out.  Held,  that 
the  case  must  be  decided  on  the  proofs  ad- 
duced, as  the  court  is  not  authorized  to  sup- 
ply the  missing  links  in  the  evidence  and  base 
its  decision  on  facts  only  thought  to  exist, 
but  not  disclosed.  Robinson  v.  Seelinger,  C. 
D.   1905,  116  O.  G.  1735. 

3080.  Where  it  is  necessary  to  establish  a 
fact  as  occurring  prior  to  May  3  and  the  tes- 
timony is  that  the  occurrence  took  place  "very 
soon  after"  January  of  the  same  year.  Held, 
not  sufficient  proof.  Ball  v.  Flora,  C.  D.  1905, 
117  O.  G.  2088. 


INTERFERENCE,  L,  (i). 


425 


3081.  Where  the  testimony  shows  merely 
that  an  oil  stove  was  burning  for  the  purpose 
of  heating  a  room  where  work  was  done  in 
the  latitude  of  New  York,  especially  in  view 
of  the  facts  that  the  location  of  the  room  and 
the  condition  of  the  weather  are  not  estab- 
lished, Held,  not  to  establish  the  fact  that  the 
time  was  prior  to  May  3.    Id. 

3082.  Held,  that  it  is  not  sufficient  for  a  ju- 
nior party  to  present  testimony  which  merely 
raises  a  presumption  that  the  facts  desired  to 
be  proved  took  place ;  but  it  is  incumbent  upon 
the  junior  party  to  satisfactorily  establish 
those  facts.    Id. 

3083.  When  a  case  stands  with  testimony  of 
witness  N.  to  disclosure  to  C.  against  C.'s  de- 
nial of  such  disclosure  and  with  testimony  of 
W.  and  N.  to  W.'s  possession  of  the  invention 
prior  to  C.'s  claimed  conception  against  testi- 
mony of  several  witnesses  that  they  failed  to 
find  W.'s  drawings  during  apparently  infre- 
quent searches  for  other  drawings  in  a  drawer 
in  which  N.  claims  such  drawings  were  kept 
with  several  other  drawings.  Held,  that  the 
advantage  is  with  W.  Wilkin  v.  Cleveland,  C. 
D.  1905,  118  O.  G.  2533. 

3084.  Where  the  testimony  of  the  inventor 
and  his  two  witnesses  is  general,  vague,  and 
indefinite,  is  given  five  years  after  the  occur- 
rence of  the  events,  and,  moreover,  indicates 
that  the  machines  required  considerable  chang- 
ing and  bettering  of  parts.  Held,  insufficient 
to  overcome  the  earlier  filing  date  of  the 
senior  party.  Burson  v.  Vogel,  C.  D.  1906, 
125  O.  G.  2361. 

3085.  Where  a  witness,  testifying  as  to  dis- 
closure of  the  invention  admits  that  he  is  tes- 
tifying solely  from  memory  as  to  a  disclo- 
sure alleged  to  have  been  made  many  years 
previously  and  that  he  cannot  recall  the  de- 
tails of  the  invention  nor  remember  any  dis- 
closure except  this  one,  though  many  were 
called  to  his  attention  about  the  same  time,  his 
testimony  is  insufficient  to  establish  that  such 
disclosure  was  made.  Smith  v.  Foley  v.  An- 
derson V.  Smith,  C.  D.  1908,  136  O.  G.  847. 

3086.  The  testimony  of  a  witness  that  he 
knew  of  the  making  and  testing  of  a  device 
corresponding  to  a  certain  blueprint  and  that 
the  test  was  successful  is  of  no  value  whatever 
where  he  did  not  attempt  to  describe  the  in- 
vention, did  not  indicate  that  he  had  any  real 
knowledge  of  it,  and  did  not  state  the  facts 
upon  which  he  based  his  conclusion  that  the 
test  he  witnessed  was  successful.  *Schmidt 
v.  Clark,  C.  D.  1909,  138  O.  G.  76S. 


3087.  The  failure  to  call  a  witness  to  whom 
the  inventor  testifies  he  disclosed  the  inven- 
tion or  to  account  for  his  absence  is  a  cir- 
cumstance tending  to  discredit  such  testimony. 
*ld. 

3088.  Testimony  as  to  the  test  of  a  gas- 
mantle  Held,  insufficient  to  establish  that  such 
mantle  was  a  reduction  to  practice  where  the 
witnesses  content  themselves  with  saying  that 
the  experiments  were  satisfactory  and  neither 
the  inventor  nor  the  officers  of  the  assignee 
company  who  testified  were  expert  mantle- 
makers  and  none  of  the  expert  workers  in  the 
factory  were  called  to  testify.  *Daggett,  Jr. 
v.  Kaufmann,  C.  D.  1909,  145  O.  G.  1024. 

3089.  G.  built  a  furnace  and  made  certain 
tests  thereof  to  show  that  the  furnace  de- 
scribed in  M.'s  application  was  inoperative. 
M.  was  not  present  or  represented  at  the  tests, 
and  the  furnace  was  dismantled  before  he  had 
an  opportunity  to  inspect  it.  While  this  did 
not  render  the  testimony  incompetent,  it  is 
of  great  importance  in  determining  the  weight 
to  be  given  to  the  evidence  relating  to  the 
tests.  *Mark  v.  Greenawalt,  C.  D.  1909,  138 
O.  G.  965. 

3090.  A  party  deeply  interested  in  showing 
that  his  rival's  device  will  not  operate  or  ac- 
complish the  object  claimed  for  it  who  secret- 
ly tests  the  same  with  the  aid  of  an  expert 
who  had  previously  testified  to  the  opinion 
that  it  would  not  operate  must  necessarily 
rest  under  the  burden  of  showing,  with  great 
certainty,  that  they  conformed  strictly  with 
all  the  requirements  of  the  description  and  in 
good  faith  and  with  great  care  took  all  the 
steps  necessary  and  important  to  obtain  fair 
and  accurate  results.     *Id. 

(i)  Delay  or  Failure  to  Take. 

3091.  The  fact  that  negotiations  were  pend- 
ing between  the  parties  looking  to  a  settlement 
of  the  controversy  without  prosecuting  the 
interference  cannot  be  received  as  a  valid  ex- 
cuse for  the  failure  to  take  testimony.  Ingle- 
heart  Bro.  V.  Houston,  Meeks  &  Co.,  C  D. 
1S99,  86  O.   G.   631. 

3092.  Where  one  of  the  parties  to  an  inter- 
ference testifies  that  it  was  his  idea  that  went 
into  a  model  and  that  he  directed  the  other 
contestant  to  make  the  model  and  witnesses 
corroborate  this  and  the  said  contestant  fails 
to  testify  in  his  own  behalf,  Held,  that  the 
contestant's  silence  is  most  potent  testimony 


436 


INTERFERENCE,  L,  (j). 


against  him.     *Ingersoll  v.  Holt,  C.  D.   1900, 
90  O.  G.  2507. 

3093.  Wlien  the  date  of  hearing  of  an  in- 
terference in  which  times  for  taking  testimony 
have  been  set  arrives  and  no  testimony  has 
been  filed,  and  no  party  to  the  interference 
appears.  Held,  that  it  is  not  necessary  that 
the  motion  under  Rule  119  should  be  made 
before  awarding  priority,  but  that  it  becomes 
the  duty  of  the  examiner  of  interferences  to 
render  judgment  of  priority  of  invention  in 
favor  of  the  senior  party,  and  that  such  an 
award  is  properly  made  under  Rule  116. 
Brough  v.  Snyder,  C.  D.  1901,  94  O.  G.  221. 

3094.  Where  a  junior  party  fails  to  take 
testimony  within  the  time  set  and  thereafter 
files  a  motion  to  amend  his  preliminary  state- 
ment. Held,  that  the  motion  cannot  be  granted, 
since  he  has  no  standing  before  the  office  ex- 
cept for  the  purpose  of  filing  a  motion  to  be 
relieved  of  his  default.  Atkins  v.  Paul  v. 
Johnson,  C.  D.  1901,  94  O.  G.  1785. 

3095.  Where  a  party  has  by  the  liberality 
of  his  opponents  been  given  ample  opportunity 
to  prepare  his  case  and  present  his  proofs, 
but  has  not  only  failed  to  take  his  testimony, 
but  has  failed  to  make  proper  efforts  to  do 
so,  Held,  that  it  would  not  be  just  to  his  op- 
ponents to  relieve  him  from  the  effects  of  his 
default.     Id. 

3096.  Where  the  issue  calls  for  a  fuse 
"within  the  casing,"  Held,  that  a  device  hav- 
ing the  fuse  covered  by  an  outer  wrapping 
on  the  casing  comes  within  the  issue  and  is 
a  reduction  to  practice  of  the  invention.  *Id. 
Sachs  V.  Hundhausen,  C.  D.  1903,  105  O.  G. 
1534. 

3097.  Where  the  examiner  under  the  provi- 
sions of  Rule  128  requested  that  the  interfer- 
ence be  remanded  to  him  for  consideration  in 
connection  with  a  newly-discovered  reference, 
Held,  that  this  is  no  ground  to  remand  an- 
other interference  to  him  without  his  request, 
since  the  subject-matter  of  the  interference  is 
presumably  different.  Parkin  and  Parkin  v. 
Riotte,  C.  D.  1904,  109  O.  G.  1335. 

3098.  Where  an  applicant  in  interference 
with  a  patentee  asks  that  the  case  be  trans- 
mitted to  the  examiner  to  consider  whether 
the  claims  are  patentable,  Held,  that  to  refuse 
his  request  is  no  hardship,  since  he  may  avoid 
a  continuation  of  the  interference  by  fol- 
lowing the  provisions  of  Rule  125.     Id. 

3099.  Where  the  party  last  to  file  his  appli- 
cation took  no  testimony.  Held,  that  the  deci- 


sion of  priority  of  invention  cannot  be  in  his 
favor.  Trufant  v.  Prindle  v.  Brown,  C.  D. 
1904,  111  O.  G.  lOS.'). 

3100.  A  delay  of  twenty-four  days  in  for- 
warding testimony  to  the  office  is  not  unrea- 
sonable when  the  testimony  is  taken  sten- 
ographically  and  had  afterward  to  be  tran- 
scribed. Had  the  testimony  been  written 
down  and  completed  at  the  end  of  the  exam- 
ination of  the  witnesses  then  such  a  delay 
would  be  unreasonable.  Rolfe  v.  Taylor,  C. 
D.  1904,  111  O.  G.  1938. 

3101.  Where  K.  relied  upon  his  record  date 
and  R.  took  testimony  and  claimed  that  he 
disclosed  the  invention  to  K.  before  the  latter 
filed  his  application.  Held,  that  the  decision 
of  the  court  of  appeals  of  the  District  of 
Columbia  in  Winslow  v.  Austin  (C.  D.  1899, 
301,  86  O.  G.  2171)  is  controlling  and  that  R. 
is  the  prior  inventor.  Royce  v.  Kempshall, 
C.   D.   1906,   125   O.  G.   1347. 

(j)   Extension   of   Time. 

3102.  An  affidavit  by  an  attorney  in  support 
of  a  motion  to  extend  the  time  for  taking 
testimony  setting  forth  merely  that  he  is  in- 
formed that  a  certain  witness  is  now  absent 
from  his  place  of  residence  and  is  at  such  a 
distance  therefrom  that  he  cannot  be  com- 
municated with  by  mail  in  less  than  fifteen 
days  and  that  a  letter  and  a  telegram  ad- 
dressed to  him  have  brought  no  reply  is  not 
such  showing  as  is  required  in  Rule  154  (4) 
and  does  not  warrant  the  granting  of  the 
motion.  Cirkel  and  Killing  v.  Killing,  C.  D. 
1898,  85  O.  G.   1224. 

3103.  Since  a  party  to  the  interference  has 
a  knowledge  of  the  time  within  which  testi- 
mony must  be  taken  and  has  control  over  his 
own  movements,  his  voluntary  absence  during 
the  time  of  taking  testimony  is  a  waiver  of 
his  right  to  testify.  Such  absence  therefore 
furnishes  no  ground  for  an  extension  of  time 
unless  it  shall  be  clearly  shown  that  his  ab- 
sence without  having  testified  was  unavoid- 
able.   Id. 

3104.  Where  it  appears  that  a  party  to  an 
interference  has  been  prevented  by  poverty 
from  taking  his  testimony  within  the  time  set 
for  this  purpose,  but  is  now  able  and  desirous 
to  do  so,  and  where  a  refusal  to  permit  time 
to  take  testimony  would  work  a  hardship  to 
him  greater  than  would  be  caused  to  the 
other  party  by  the  delay,  Held,  that  an  oppor- 
tunity should  be  given  to  take  the  testimony. 


INTERFERENCE,  L,  (j). 


427 


Wightman  v.   Rothenstein,  C.   D.  1902,  98  O. 
G.  2172. 

3105.  Where  a  party  delays  taking  his  testi- 
mony until  the  last  of  the  time  allowed  him 
and  gives  no  good  reason  for  the  delay,  Held, 
that  a  motion  for  an  extension  of  time  will 
be  denied.  Brill  &  Adams  v.  Uebelacker,  C. 
D.  1902,  99  O.  G.  2966. 

3106.  When  an  interference  has  been  form- 
ally declared  and  times  are  set  for  filing  pre- 
liminary statements.  Held,  that  these  proceed- 
ings constitute  a  constructive  notice  to  the 
parties  that  they  will  probably  be  called  upon 
to  take  testimony  within  a  reasonable  time. 
Davis  V.  Cody,  C.  D.  1902,  101  O.  G.  13G9. 

3107.  An  affidavit  by  an  attorney  in  support 
of  a  motion  to  extend  time  for  taking  testi- 
mony setting  forth  the  fact  that  his  client  is 
absent  from  his  place  of  residence  and  that 
he  cannot  be  communicated  with  because  his 
whereabouts  are  not  known  does  not  warrant 
the  granting  of  said  motion.     Id. 

3108.  Where  it  appears  from  an  affidavit 
of  an  attorney  in  support  of  a  motion  for  an 
extension  of  time  to  take  testimony  that  the 
business  of  his  client  takes  him  beyond  all 
ordinary  means  of  communication  for  three 
to  four  months  at  a  time,  and  it  is  now  be- 
lieved that  this  is  the  reason  that  he  cannot 
now  be  communicated  with,  and  it  also  ap- 
pears that  the  present  residence  of  the  client 
is  not  even  known  and  that  the  latter  reason 
is  the  real  one  why  he  cannot  be  communi- 
cated with,  Held,  not  to  be  a  sufficient  show- 
ing to  warrant  the  grant  of  the  motion.     Id. 

3109.  The  action  of  a  party  in  absenting  and 
putting  himself  beyond  all  ordinary  means  of 
communication  without  even  leaving  his  ad- 
dress by  which  he  might  be  communicated 
with  must  be  considered  as  a  waiver  of  his 
rights  to  present  his  testimony.  (Cirkel  v. 
Killing  and  Killing,  C.  D.  1898,  249,  85  O.  G. 
1224.)      Id. 

3110.  An  extension  of  the  time  for  taking 
testimony  should  not  be  granted  without  a 
clear  showing  why  the  time  originally  set  was 
allowed  to  pass  without  effort  by  the  party  to 
take  his  testimony.  Reynolds  v.  Bean,  C.  D. 
1902,  101  O.  G.  2821. 

3111.  A  motion  to  extend  the  time  for  tak- 
ing testimony  without  any  showing  why  testi- 
mony was  not  taken  within  the  time  fixed  will 
not  be  granted  merely  because  it  is  the  first 
request  for  an  extension  of  time.  The  first 
extension  is  not  granted  without  reason  any 


more  than   a  second   extension.     Wilcomb   v. 
Lasher,  C.  D.  1902   101  O.  G.  3109. 

3112.  The  presumption  that  the  testimony 
might  have  been  taken  within  the  time  fixed 
is  strengthened  in  proportion  to  the  delay 
which  has  occurred,  and  in  all  cases  the  bur- 
den is  on  the  moving  party  to  overcome  the 
presumption.     Id. 

3113.  Where  it  appears  that  two  extensions 
of  time  for  the  taking  of  testimony  have  al- 
ready been  granted  and  a  motion  for  further 
time  is  not  brought  until  after  the  limit  fixed 
by  the  examiner  has  expired.  Held,  that  a  fur- 
ther extension  will  not  be  granted  unless  a 
showing  is  made  of  reasons  why  it  was  prac- 
tically impossible  to  take  testimony  within  the 
time  set.  Turner  v.  Bensinger,  C.  D.  1903, 
102  O.  G.  1552. 

3114.  A  motion  to  extend  the  time  for  tak- 
ing testimony  should  be  brought  before  the 
time  originally  set  expires  unless  reasons  are 
given  which  could  not  have  been  previously 
urged.    Id. 

3115.  Where  a  party  delays  the  taking  of 
his  testimony  until  the  time  allotted  him  is 
about  to  expire  and  then  takes  testimony  with- 
out giving  his  opponent  proper  notice,  he  is 
not  entitled  to  an  extension  of  time  to  take 
further  testimony,  especially  when  it  appears 
that  he  refused  to  stipulate  with  his  opponent 
to  extend  the  time  within  the  original  period 
and  after  his  opponent  had  informed  him  that 
he  was  proceeding  irregularly.  Werk  v,  Mc- 
Carron,  McCarron,  and  McCarron,  C.  D.  1903, 

103  O.  G.  889. 

3116.  Where  a  party  has  had  several  ex- 
tensions of  time  for  taking  his  testimony,  and 
finally  a  judgment  is  rendered  against  him  on 
the  record,  and  he  waits  till  the  limit  of  ap- 
peal is  about  to  expire  and  then  files  a  motion 
for  a  further  extension  of  time  within  which 
to  take  testimony.  Held,  that  his  motion  was 
properly  denied.     Bryon  v.  Henry,  C.  D.  1903, 

104  O.  G.  1895. 

3117.  Where  a  party  fails  to  accompany  a 
motion  for  an  extension  of  time  for  taking 
testimony  with  a  verified  showing,  as  pro- 
vided in  Rule  154  (4),  Held,  that  the  exam- 
iner of  interferences  was  right  in  denying  the 
motion.  Reppcto  v.  Stephens,  C.  D.  1903,  105 
O.  G.  1779. 

3118.  Where  no  verified  showing  is  made 
before  the  examiner  of  interferences,  as  pro- 
vided by  Rule  154  (4),  on  a  motion  for  ex- 
tension of  time  for  taking  testimony.  Held, 
that  it  is  not  good  practice  on  appeal  to  file  af- 


42H 


INTERFERENCE,  L,   (j). 


fidavits  setting  forth  reasons  why  the  testi- 
mony has  not  been  taken.  It  is  a  well-settled 
principle,  founded  upon  good  reasons,  that  no 
evidence  should  be  considered  on  appeal  which 
was  not  presented  for  consideration  to  the 
tribunal  from  whose  decision  the  appeal  is 
taken.    Id. 

3119.  The  testimony  of  a  witness  as  to  the 
operativeness  of  the  device  shown  in  an  ex- 
hibit drawing  and  in  the  application  is  not 
so  clearly  irrevalent  as  to  warrant  striking  it 
from  the  record.  It  must  remain  in  the  case, 
so  that  each  tribunal  may  determine  its  relev- 
ancy and  the  weight  to  be  given  to  it.  Hitter 
v.  Krakau  and  Connor,  C.  D.  1903,  104  O.  G. 
1897. 

3120.  Where  a  party  makes  no  effort  to  take 
testimony  as  to  priority  of  invention  within 
the  time  set,  but  devotes  his  time  to  an  inves- 
tigation of  the  question  of  public  use  of  the 
invention.  Held,  that  he  is  not  entitled  to  an 
extension  of  time  for  taking  testimony.  Per- 
rault  V.  Pierce,  C.  D.  1904,  108  O.  G.  2146. 

3121.  Where  a  motion  to  extend  time  for 
taking  testimony  for  the  third  time  is  sup- 
ported only  by  the  affidavit  of  the  attorney  to 
sickness  and  absence  of  some  of  the  witnesses 
and  absence  of  the  inventor  part  of  the  time 
and,  so  far  as  appears,  the  testimony  of  the 
inventor  and  other  witnesses  might  have  been 
taken,  but  was  not  taken.  Held,  that  the  mo- 
tion was  properly  denied.  Spindler  v.  Nathan 
and  Bolze,  C.  D.  1904,  109  O.  G.  2171. 

3122.  Where  some  of  the  witnesses  were 
sick  and  residing  at  widely-separated  places, 
the  desire  to  have  all  present  at  one  time,  so 
as  to  avoid  trouble  and  expense,  will  not 
justify  repeated  extensions  of  time  for  taking 
testimony  and  the  failure  to  take  the  deposi- 
tions of  those  witnesses  that  were  available. 
Id. 

3123.  Where  a  party  has  been  notified  that 
no  further  extensions  of  time  for  taking  testi- 
mony will  be  granted  except  for  good  cause 
and  he  thereafter  files  a  motion  to  extend 
time  to  permit  him  to  apply  to  the  court  to 
compel  a  witness  to  testify  and  it  appears  that 
he  did  not  file  the  motion  promptly  or  apply 
to  the  court  promptly,  Held,  that  the  motion 
will  be  denied.  Donning  v.  Anderson,  C.  D. 
1904,  111  O.  G.  582. 

3124.  Where  the  examiner  of  interferences 
denies  a  motion  to  extend  time  for  taking 
testimony  and  the  defeated  party  files  a  peti- 
tion, accompanied  by  an  additional  affidavit, 
asking  that  the  examiner  be  instructed  to  ex- 


tend the  time.  Held,  that  the  petition  is  ir- 
regular and  improper,  since  it  is,  in  effect,  an 
appeal  and  since  it  is  accompanied  by  new 
evidence,  which  should  have  been  presented 
to  the  examiner  of  interferences  with  the 
original  motion.     Id. 

3125.  Where  the  attorneys  agreed  to  con- 
tinue the  taking  of  testimony  on  a  certain 
day  after  the  time  originally  set  expired.  Held, 
that  the  examiner  of  interferences  properly 
extended  the  time  to  include  that  day.  Fair- 
banks and  Sauer  v.  Karr,  C.  D.  1904,  113  O. 
G.  1148. 

3126.  Where  the  notary  taking  the  testimony 
makes  a  note  on  the  record  of  an  agreement 
of  counsel  to  continue  taking  testimony  on  a 
certain  day,  Held,  that  this  office  will  take 
notice  of  the  agreement  without  requiring  a 
stipulation  signed  by  both  parties.     Id. 

3127.  Where  the  record  shows  that  exten- 
sions of  time  for  taking  testimony  have  been 
given  repeatedly  and  that  when  the  last  ex- 
tension was  granted  the  examiner  of  inter- 
ferences gave  warning  that  no  further  exten- 
sion could  be  allowed.  Held,  that  it  was  in- 
cumbent upon  the  parties  to  use  every  effort 
to  complete  the  testimony  within  the  time  set 
and  to  examine  such  witnesses  as  could  be  ob- 
tained at  the  earliest  possible  date.  Dunbar 
v.  Schellenger,  C.  D.  1904,  113  O.  G.  2213. 

3128.  While  this  office  desires  to  have  be- 
fore it  all  material  evidence  which  will  assist 
it  in  determining  the  question  of  priority  of 
invention,  it  is  apparent  that  iii  all  proceed- 
ings of  this  kind  it  is  necessary  to  have  cer- 
tain rules  governing  the  presentation  of  evi- 
dence and  that  an  enforcement  of  these  rules 
is  as  necessary  as  their  existence.     Id. 

3129.  Inasmuch  as  laxity  in  the  application 
of  the  rules  regarding  the  taking  of  testimony 
would  render  all  applicants  uncertain  as  to 
their  rights.  Held,  that  those  rules  should  be 
strictly  enforced.     Id. 

3130.  Where  the  examiner  of  interferences 
grants  a  motion  to  extend  times  for  taking 
testimony.  Held,  that  his  decision  is  final,  and 
no  limit  of  appeal  should  be  set.  Goodfellovv 
v.  Jolly,  C.  D.  1905,  115  O.  G.  1064. 

3131.  Held,  that  the  decisions  of  the  exam- 
iner of  interferences  are  final  on  motions  to 
extend  times  for  taking  testimony,  and  no 
limit  of  appeal  should  be  set.  Practice  as  an- 
nounced in  Goodfellow  v.  Jolly  (ante,  105, 
115  O.  G.  1064)  extended  to  include  all  deci- 
sions on  such  motions.  Christensen  v.  Mc- 
Kenzie,  C.  D.  1905,  117  O.  G.  277. 


INTERFERENCE,  L,  (k),  (1). 


439 


3132.  It  is  well  settled  that  no  appeal  lies 
from  the  decision  of  the  examiner  of  inter- 
ferences on  motion  to  extend  the  time  for 
taking  testimony,  and  the  sufficiency  of  the 
showing  made  in  support  of  the  motion  will 
not  be  considered  by  the  commissioner  on  pe- 
tition except  in  cases  where  it  appears  that 
there  has  been  a  clear  abuse  of  discretion  op- 
erating to  the  injury  of  one  of  the  parties. 
Wickers  and  Furlong  v.  Weinwurm,  C.  D. 
1907,  129  O.  G.  2501. 

3133.  It  is  the  well-settled  practice  that  the 
decision  of  the  examiner  of  interferences  ex- 
tending times  for  the  taking  of  testimony  is 
f^nal.  The  Shaw  and  Welty  Shirt  Co.  v.  The 
Quaker  City  Shirt  Mfg.  Co.,  C.  D.  1910,  157 
O.  G.  1000. 

3134.  It  is  well  settled  that  the  setting  of 
times  for  taking  testimony  is  a  matter  pecu- 
liarly within  the  discretion  of  the  examiner 
of  interferences.  Victor  Talking  Machine  Co. 
V.  American  Graphophone  Co.,  C.  D.  1910, 
161  O.  G.  753. 

(k)   Expert. 

3135.  Where  an  inventor  testifies  to  facts 
relating  to  an  alleged  process  of  producing 
varnish  and  that  the  result  of  this  process 
was  successful  and  an  acknowledged  expert 
in  chemistry  gives  clear  and  explicit  testimony 
that  he  has  been  unable  to  produce  the  result 
alleged  by  following  the  steps  of  the  process 
testified  to.  Held,  that  this  expert  testimony 
established  a  prima  facie  case  against  the  in- 
ventor, which  must  be  accepted  unless  rebutted 
by  the  testimony  of  other  competent  experts. 
Weber  v.  Flather,  C.  D.  1903,  103  O.  G.  223. 

3136.  Where  motion  is  made  for  leave  to 
take  testimony  under  the  provisions  of  Rule 
130  to  establish  that  the  claim  as  applied  to 
one  party's  structure  is  a  true  combination, 
while  as  applied  to  the  other  party's  structure 
is  merely  for  an  aggregation,  affidavits  in  sup- 
port of  such  motion  which  consist  wholly  of 
the  opinion  of  expert  patent  lawyers  as  to  the 
legal  effect  of  the  claims  will  not  be  received. 
Pym  V.  Hadaway,  C.  D.  1907,  129  O.  G.  480. 

3137.  Where  during  the  time  assigned  him 
for  the  purpose  of  taking  testimony  upon  the 
question  of  priority  of  invention  one  party 
took  merely  the  testimony  of  an  expert  for 
the  purpose  of  showing  that  the  issue  is  not 
patentable  to  either  party  over  the  prior  art. 
Held,  that  the  decision  of  the  examiner  of  in- 
terferences was  proper  in  granting  a  motion 


to  strike  said  testimony  from  the  record  on 
the  ground  that  it  is  irrelevant  to  the  question 
of  priority.  Dixon  and  Marsh  v.  Graves  and 
Whittemore,  C.  D.  1907,  127  O.  G.  1993. 

3138.  A  motion  to  take  testimony  to  estab- 
lish that  the  opposing  party  has  no  right  to 
make  the  claims  corresponding  to  the  issue 
was  properly  denied  where  it  appears  that  the 
proposed  testimony  would  be  largely  that  of 
experts  as  to  the  meaning  of  the  issue  (citing 
Pym  v.  Hadaway,  C.  D.  1907,  189,  129  O.  G. 
480.)  Ricketts  v.  Ambruster  and  Beck,  C.  D. 
1909,  143  O.  G.  276. 

3139.  The  question  of  allowing  expert  tes- 
timony to  be  taken  in  an  interference  is  one 
which  is  entirely  within  the  discretion  of  the 
commissioner  of  patents  and  which  will  not 
be  reviewed  upon  appeal  to  the  court  of  ap- 
peals of  the  District  of  Columbia.  *Wein- 
traub  V.  Hewitt,  C.  D.  1910,  154  O.  G.  254. 

(1)  Leading   Question. 

3140.  It  is  the  law  that  testimony  adduced 
by  leading  questions  cannot  be  excluded  from 
consideration  unless  objection  to  it  has  been 
promptly  interposed.  The  leading  character 
of  the  questions  may  be  good  ground  for  scan- 
ning the  testimony  with  critical  care,  but  is 
no  ground  for  discrediting  it.  *Smith  v. 
Brooks,  C.  D.  1904,  112  O.  G.  953. 

3141.  Where  some  leading  questions  were 
asked  in  the  course  of  the  examination  of 
witnesses,  Held,  that  their  testimony  as  a 
whole  was,  nevertheless,  sufficiently  free  from 
dependence  upon  the  suggestion  of  counsel 
to  be  entitled  to  acceptance  without  diminu- 
tion of  weight  on  account  of  this  objection. 
Beall  v.  Shuman,  C.  D.  1906,  120  O.  G.  655. 

3142.  "We  have  observed  a  tendency  on  the 
part  of  patent  attorneys  to  disregard  the  rules 
of  evidence  by  asking  questions  grossly  lead- 
ing and  suggestive,  and  it  may  not  be  amiss  to 
state  that  where  timely  objection  is  noted 
in  the  record  this  court  will  be  disposed  to 
apply  the  rule  and  entirely  disregard  such 
testimony."  ♦.American  Stove  Company  v. 
Detroit  Stove  Works,  et  al.,  C.  D.  1908,  134 
O.  G.  2245. 

3143.  We  have  eliminated  from  our  con- 
sideration the  testimony  elicited  by  leading 
questions,  the  record  showing  that  timely  ob- 
jection was  noted.  (American  Stove  Co.  v. 
Detroit  Stove  Works  and  Barstow  Stove  Com- 
pany, C.  D.  1908,  407,  134  O.  G.  2245,  31   App. 

D.  C.  304.)    *H.  C.  Cole  &  Co.  v.  The  William 


430 


INTERFERENCE,  L,  (m),  (n). 


Lea  &  Sons  Company,  C.  D.  1910,  156  O.  G. 
259. 

3144.  The  record  reviewed  and  certain  ques- 
tions to  which  objection  had  been  taken.  Held, 
not  objectionable  as  leading.  Ward  v.  Midge- 
ly,  C.  D.  1911,  173  O.  G.  584. 

(m)  Notice  of  Taking. 

3145.  A  notice  of  the  taking  of  testimony 
of  certain-named  witnesses  and  "perhaps  oth- 
ers" does  not  warrant  taking  the  testimony 
of  other  witnesses  than  those  specifically  men- 
tioned without  reasonable  notice  to  the  other 
side  of  the  names  and  addresses  of  such  other 
witnesses.  Potter  v.  Ochs,  C.  D.  1901,  95  O. 
G.  1049. 

3146.  A  mere  notice  on  the  record  one  day 
that  a  certain  witness  will  be  examined  the 
next  day  is  not  a  reasonable  notice,  particu- 
larly in  case  where  the  attorney  for  the  other 
side  is  not  present,  but  is  represented  by  an 
associate  who  has  instructions  merely  as  to 
the  witnesses  mentioned  in  the  original  no- 
tice.   Id. 

3147.  A  deposition  taken  without  proper 
notice  to  the  other  side  will  be  stricken  out. 
Id. 

3148.  Held,  that  a  motion  served  on  Satur- 
day to  take  testimony  does  not  become  ef- 
fective until  Monday  at  the  same  hour,  for 
counsel  cannot  be  compelled  to  travel  on  Sun- 
day, whether  any  objection  to  Sunday  travel 
is  raised  or  not.  Goodfellow  v.  Jolly,  C.  D. 
1904,  111   O.  G.   1940. 

3149.  In  serving  notice  for  the  taking  of 
testimony  ample  time  should  be  given  counsel 
to  communicate  with  his  client  and  to  arrange 
his  business  affairs  before  he  is  compelled  to 
start  on  his  journey.     Id. 

3150.  Where  notice  was  served  in  Chicago 
of  testimony  to  be  taken  at  Erie,  Pa.,  less 
than  two  days  thereafter,  Held,  that  the  no- 
tice was  not  reasonable  and  that  the  deposi- 
tions taken  will  be  suppressed.  Tripp  v.  Wolff 
v.  Jones,  C.  D.  1904,  108  O.  G.  563. 

3151.  Where  notice  was  given  that  certain 
witnesses  "and  perhaps  others"  would  be  ex- 
amined. Held,  where  the  opposing  party  ob- 
jects the  notice  is  insufficient  except  as  to  the 
witnesses  whose  names  were  given.    Id. 

3152.  Where  a  party  to  an  interference  gives 
notice  to  the  opposing  party  of  his  intention 
to  take  testimony  at  a  certain  time  and  place, 
but  fails  to  appear  at  the  time  and  place  stated 
and  no  notice  is  given  of  his  inability  to  take 


testimony  in  accordance  with  the  notice,  tes- 
timony taken  under  a  subsequent  notice  will 
not  be  considered  if  proper  objection  is  made 
by  the  opposing  party  unless  it  appears  that 
the  opposing  party  was  not  injured  by  the 
failure  to  act  upon  the  original  notice  or  that 
there  were  good  reasons  for  such  failure  to 
act  then  and  for  the  failure  to  duly  notify 
the  opposing  party  of  the  postponement.  Den- 
sten  v.  Burnham,  C.  D.  1907,  126  O.  G.  388. 

3153.  Where  on  Saturday  counsel  for  F. 
were  notified  by  telegraph  that  testimony  on 
behalf  of  R.  would  be  taken  on  the  next  Tues- 
day, but  the  names  and  residences  of  the  wit- 
nesses were  not  given,  and  on  Monday  coun- 
sel were  formally  notified  that  the  testimony 
of  R.  "and  perhaps  others"  would  be  taken. 
Held,  that  the  notice  was  insufficient,  and  that 
the  testimony  taken  in  the  absence  of  counsel 
for  F.  was  properly  stricken  out.  Ries  v. 
Frick,  C.  D.  1910,  160  O.  G.  1040. 

3154.  Where  it  is  admitted  that  it  has  been 
the  practice  of  all  parties  to  the  interference 
to  call  witnesses  not  named  in  the  notices  of 
taking  testimony,  Held,  that  a  motion  to  strike 
out  the  testimony  of  such  a  witness  was  prop- 
erly denied.  Keith,  Erickson  &  Erickson  v. 
Lundquist  v.  Lorimer  &  Lorimer,  C.  D.  1910, 
156  O.  G.  798. 

3155.  A  notice  given  in  New  York  City  on 
May  3  that  certain  witnesses  would  be  ex- 
amined at  Battle  Creek,  Mich.,  on  May  5, 
Held,  sufficient  under  the  circumstances  of 
the  case.  Keith,  Erickson  &  Erickson  v.  Lund- 
quist V.  Lorimer  &  Lorimer,  C.  D.  1910,  157 
O.  G.  754. 

3156.  A  notice  given  in  New  York  City  on 
June  22  that  testimony  would  be  taken  in 
Troy,  N.  Y.,  on  June  24,  Held,  insufficient, 
and  testimony  taken  in  accordance  with  this 
notice  stricken  from  the  record.  Randerson 
v.  Hanna  &  Hanna,  C.  D.  1911,  173  O.  G. 
586. 

(n)   Oferativeness. 

3157.  If  in  answer  to  an  order  to  show  cause 
why  judgment  should  not  be  rendered  on 
the  record  a  party  makes  out  a  prima  facie 
case  of  inoperativeness  in  his  opponent's  de- 
vice which  does  not  extend  to  his  own  and 
proposes  to  take  testimony  in  support  of  his 
position,  so  far  as  is  now  known  he  will  be 
authorized  to  do  so,  provided  a  satisfactory 
showing  is  made  that  the  proposed  testimony 
is    of    a    character    to    justify    such    action. 


INTERFERENCE,  L,  (o). 


431 


Browne    v.    Stroud,    C.    D.    1906,    122    O.    G. 
26S8. 

3158.  Where  a  party  moves  for  leave  to 
take  testimony  relative  to  the  operativeness  of 
the  structure  described  in  his  opponent's  ap- 
plication, Held,  that  he  should  not,  as  a  pre- 
requisite to  the  granting  of  the  motion,  be 
required  to  make  an  absolutely  conclusive 
showing  of  inoperativeness  in  his  opponent's 
device.  Lowry  and  Cowley  v.  Spoon,  C.  D. 
1906,   124   O.   G.    1846. 

3159.  Where  a  party  to  an  interference 
moves  for  leave  to  take  testimony  to  support 
his  allegation  that  the  structure  described  in 
his  opponent's  application  is  inoperative,  and 
it  appears  that  it  would  be  a  matter  of  great 
difficulty  to  decide  the  question  of  operative- 
ness from  a  mere  inspection  of  the  application, 
and  it  cannot  be  determined  that  a  decision  so 
arrived  at  would  be  the  same  as  the  con- 
clusions which  would  be  reached  in  the  light 
of  the  information  that  might  be  derived  from 
witnesses  expert  in  the  art  to  which  the  in- 
vention relates.  Held,  that  the  motion  for 
leave  to  take  testimony  should  be  granted. 
Id. 

3160.  Where  the  junior  party  failed  to  over- 
come the  filing  date  of  the  senior  party's  ap- 
plication and  was  called  upon  to  show  cause 
why  judgment  should  not  be  rendered  against 
him  and  thereupon  files  a  motion  for  leave 
to  take  testimony  relative  to  the  operativeness 
of  the  senior  party's  device,  Held,  that  permis- 
sion to  take  testimony  should  be  granted  pro- 
vided a  prima  facie  case  of  inoperativeness 
is  made  out  and  a  satisfactory  showing  is  pre- 
sented that  the  proposed  evidence  is  of  a 
proper  character.  Lowry  and  Cowley  v.  Spoon, 
C.  D.  1906,  122  O.  G.  2687. 

3161.  Where  a  motion  for  leave  to  take 
testimony  to  show  that  the  device  of  the  se- 
nior party  to  an  interference  is  inoperative  is 
filed.  Held,  that  whether  the  testimony  may 
be  taken  should  be  determined  in  the  first  in- 
stance by  the  examiner  of  interferences.     Id. 

3162.  Where  on  a  motion  for  leave  to  take 
testimony  relative  to  the  question  of  operative- 
ness it  appears  from  the  showing  made  in 
support  of  the  motion  and  from  proceedings 
on  a  motion  to  dissolve  on  the  ground  of  in- 
operativeness that  the  determination  of  the 
question  of  operativeness  is  dependent  upon 
the  result  of  practical  tests.  Held,  that  the 
final  disposition  of  the  case  should  not  be 
based  upon  ex  parte  affidavits,  but  upon  testi- 


mony regularly  taken,  with  the  right  of  cross- 
examination.  Clement  v.  Browne  v.  Stroud, 
C.  D.  1906,  125  O.  G.  992. 

3163.  Upon  a  motion  before  the  examiner 
of  interferences  for  leave  to  take  testimony 
for  the  purpose  of  establishing  that  the  struc- 
ture described  in  a  party's  application  is  in- 
operative. Held,  that  while  the  examiner  of 
interferences  should  exercise  his  independent 
judgment  he  may  properly  give  weight  to  the 
views  expressed  by  the  primary  examiner  in 
his  decision  on  a  motion  to  dissolve  involving 
the  same  question.    Id. 

3164.  When  in  support  of  a  motion  for 
leave  to  take  testimony  on  the  question  of 
operativeness  the  moving  party  has  made  out 
a  case  of  inoperativeness  of  his  opponent's  de- 
vice sufficient  for  the  purposes  of  his  motion 
and  has  sufficiently  indicated  the  character  of 
the  testimony  which  he  purposes  to  take,  but 
has  failed  to  show  that  his  criticisms  do  not 
apply  to  his  own  structure  as  well  as  to  that 
of  his  opponent,  it  was  held  that  the  motion 
should  not  be  granted,  and  the  case  was  re- 
manded to  the  examiner  of  interferences  to 
permit  the  moving  party  to  perfect  the  show- 
ing of  his  motion.    Id. 

3165.  Where  one  party  attacks  the  opera- 
tiveness of  the  structure  disclosed  in  a  parent 
application  upon  which  reliance  is  placed  by 
the  other  party  for  constructive  reduction  to 
practice,  Held,  that  upon  proper  showing  the 
taking  of  testimony  on  the  question  will  be 
permitted.  Barney  v.  Hess,  C.  D.  1910,  158 
O.  G.  702. 

3166.  Where  it  is  found  that  judgment  on 
the  record  must  be  suspended  in  order  to  take 
testimony  as  to  the  operativeness  of  a  party's 
disclosure,  full  proofs  on  the  question  of 
priority  will  be  permitted  to  avoid  piecemeal 
consideration  of  testimony.    Id. 

(o)  Perpetuation  of. 

3167.  Where  there  have  been  long  delays 
in  an  interference  without  reaching  the  point 
of  taking  testimony  and  one  of  the  parties 
makes  a  showing  that  unless  he  is  permitted 
now  to  take  his  testimony  there  is  likelihood 
that  valuable  evidence  for  him  will  be  lost 
irretrievably,  Held,  that  he  will  be  permitted 
to  take  the  testimony  to  be  used  when  the 
case  comes  to  trial.  Lowry  v.  Spoon,  C.  D. 
1905,  117  O.  G.  90.3. 

3168.  By  analogy  to  the  practice  of  courts 
of  equity  this  office  has  authority  to  and  in  a 


432 


INTERFERENCE,  L,  (p),  (q). 


proper  case  will  permit  the  taking  of  testi- 
mony to  perpetuate  it  for  use  in  proceedings 
pending  before  the  office.     Id. 

(p)   Piinting. 

3169.  A  corporation  will  not  be  relieved 
from  the  necessity  of  printing  its  testimony  in 
an  interference  because  of  a  showing  that 
it  has  no  ready  money  for  that  purpose  when 
it  appears  that  it  is  not  in  reality  poor  and 
there  is  no  showing  that  the  parties  interested 
in  the  corporation  are  unable  to  bear  the  ex- 
pense. Dow  V.  Des  Jardins,  C.  D.  1905,  119 
O.  G.  1923. 

3170.  The  provision  in  Rule  162  relating 
to  the  acceptance  of  type-written  testimony  in 
place  of  printed  testimony  where  the  party 
is  unable  to  print  applies  only  to  those  cases 
where  the  inventor  is  so  poor  that  it  is  im- 
possible for  him  to  print.  The  rule  is  not  to 
be  extended.    Id. 

3171.  In  considering  whether  the  printing 
of  testimony  may  be  dispensed  with  it  is 
proper  to  take  into  consideration  the  burden 
which  will  or  may  be  placed  upon  this  office 
and  the  opposing  party,  since  the  rule  requir- 
ing printing  is  based  solely  upon  the  incon- 
venience and  burden  which  results  from  a 
failure  to  print.    Id. 

3172.  Where  no  motion  to  dispense  with  the 
printing  of  the  testimony  in  interference  pro- 
ceedings was  made  and  no  excuse  for  failure 
to  print  was  offered  by  the  junior  party.  Held, 
that  judgment  was  properly  entered  in  favor 
of  the  senior  party.  Levering  Coffee  Company 
V.  The  Union  Pacific  Tea  Company,  C.  D. 
1906,  121  O.  G.  1777. 

3173.  The  fact  that  the  senior  party  took  no 
testimony  is  not  a  sufficient  reason  for  waiving 
the  requirements  of  Rule  162.  Albers  Brds. 
Milling  Company  v.  Forrest,  C.  D.  1007,  131 
O.  G.  1419. 

3174.  The  fact  that  only  one  party  has  taken 
testimony  constitutes  no  sufficient  reason  for 
excusing  him  from  printing  the  same.  Peak 
v.  Brush.  C.  D.  1907,  129  O.  G.  1268. 

3175.  A  corporation  will  not  be  relieved 
from  the  necessity  of  printing  its  testimony  in 
an  interference  because  of  a  showing  that  it 
is  financially  unable  to  do  so  where  it  is  not 
shown  that  the  parties  interested  who  would 
be  the  real  beneficiaries  of  any  decision  dis- 
pensing with  printing  are  also  unable  to  fur- 
nish the  requisite  amount  of  money.  Mc- 
Manus  v.  Hammer,  C.  D.  1909,  143  O.  G.  561. 


3176.  A  motion  to  dispense  with  the  print- 
ing of  part  of  the  record  is  not  the  proper 
way  to  take  advantage  of  the  objection  that 
certain  parts  thereof  are  irrelevant  and  im- 
material and  that  the  record  was  unduly  en- 
larged by  improper  cross-examination.     Id. 

3177.  Where  the  junior  party  to  an  inter- 
ference failed  to  file  the  printed  copies  of 
his  testimony  forty  days  before  the  day  set 
for  final  hearing  and  upon  a  showing  the 
examiner  of  interferences  extended  the  date 
of  final  hearing  and  the  commissioner  of  pat- 
ents refused  to  set  aside  the  action,  Held, 
that  the  patent  office  acted  within  its  discre- 
tion (citing  Rule  120  of  the  Rules  of  Prac- 
tice of  the  patent  office).  fDunkley  v.  Beek- 
huis,  C.  D.  1910,  158  O.  G.  886. 

3178.  A  party  should  not  be  excused  from 
printing  testimony  unless  it  appears  that  be- 
cause of  poverty  it  is  practically  impossible 
for  him  to  meet  the  additional  charge.  Lan- 
dau V.  Spitzenberg,  C.  D.  1910,  159  O.  G.  242. 

3179.  Appellee  required  to  reimburse  ap- 
pellant for  printing  unnecessary  record 
brought  up  on  a  certiorari  at  the  suggestion  of 
the  former.  *Frost  v.  Chase,  C.  D.  1911,  169 
O.  G.  945. 

(q)  Rebuttal. 

3180.  It  is  a  matter  of  grave  doubt  whether 
a  junior  party  having  before  him  at  the  time 
of  taking  his  testimony-in-chief  the  applica- 
tion file  of  his  opponent  is  not  bound,  if  he 
is  to  attack  this  in  any  way,  to  attach  it  at  such 
period  of  the  proceedings  that  his  opponent 
may  have  an  opportunity  to  reply.  When  the 
senior  party  relied  on  his  application  file  and 
introduced  no  additional  evidence  after  the 
closing  of  the  testimony-in-chief  of  the  junior 
party,  it  is  difficult  to  see  what  there  was  for 
the  junior  party  to  rebut.  Valley  v.  Wurts, 
C    D.  1898,  84  O.  G.  985. 

3181.  H.'s  testimony  in  rebuttal  consisted 
of  that  of  an  expert  on  the  question  of  the 
non-patentability  of  the  issue.  A.  objected 
to  this  testimony  during  the  taking  thereof 
and  later  made  a  motion  to  strike  it  out  on  the 
ground  that  it  was  not  proper  rebuttal  testi- 
mony. H.  contends  that  as  the  word  "re- 
buttal" was  not  used  in  the  objection  on  the 
record  it  is  now  too  late  to  move  to  strike 
out  on  this  ground.  Held,  that  although  A. 
did  not  raise  the  specific  objection  to  the  tes- 
timony, yet  the  motion  is  considered,  and  the 
testimony   being   outside   of   the   interference 


INTERFERENCE,  L,  (r). 


433 


question  is  improper  rebuttal  and  should  be 
stricken  out.  Ruber  v.  Aiken,  C.  D.  1899,  88 
O.  G.  1525. 

3182.  Where  testimony  which  should  be  in- 
troduced in  the  examination-in-chief  is  taken 
during  the  time  set  for  the  taking  of  rebuttal 
and  is  not  in  rebuttal  of  any  testimony  taken 
by  the  other  party,  Held,  that  it  was  improp- 
erly introduced  and  is  not  entitled  to  any 
weight.  Basch  v.  Hammond,  C.  D.  1904,  113 
O.  G.  661. 

3183.  Where  F.  in  his  testimony  in  chief 
shows  that  he  disclosed  the  invention  in  1897 
and  in  his  testimony  in  rebuttal  attempts  to 
show  by  the  same  witnesses  that  he  disclosed 
the  invention  in  1895,  Held,  that  such  rebuttal 
testimony  is  wholly  inadmissible  and  would 
have  tended  to  discredit  the  disclosure  in 
1897  if  this  latter  had  not  been  supported  by 
some  record  testimony.  *Furman  v.  Dean, 
C.  D.  1903,  114  O.  G.  1552. 

3184.  Rebuttal  testimony  which  related  sole- 
ly to  the  patentability  of  the  issue.  Held,  to 
have  been  properly  stricken  out.  Parkes  v. 
Lewis.  C.   D.   1906,  120  O.  G.  323. 

3185.  Where  the  senior  party  took  no  testi- 
mony and  the  junior  party  during  the  time  set 
for  rebuttal  took  testimony  for  the  purpose 
of  showing  that  the  senior  party's  application 
had  been  improperly  reinstated  after  aban- 
donment, Held,  that  such  testimony  was  prop- 
erly struck  out  by  the  examiner  of  interfer- 
ences as  improper  rebuttal.  Kinsman  v. 
Strohm,  C.  D.  1906,  125  O.  G.  1699. 

3186.  Held,  that  the  circumstances  above  re- 
ferred to  were  exceptional  and  that  the  ac- 
tion of  the  examiner  of  interferences  setting 
times  for  taking  testimony  was  reviewable  on 
appeal.  (Goodfellow  v.  Jolly.  C.  D.  1905,  105, 
115  O.  G.  1064,  and  Christensen  v.  McKenzie, 
C.  D.  1905,238,  117  O.  G.  277,  distinguished.) 
Id. 

3187.  When  G.,  the  junior  party,  alleges  in 
his  preliminary  statement  disclosure  to  oth- 
ers in  1004  and  neither  he  nor  his  witness,  M., 
in  his  tcstimony-in-chief,  refers  to  an  earlier 
disclosure.  Held,  that  the  testimony  of  M.  in 
rebuttal  that  G.  disclosed  the  invention  to  him 
in  1903  is  not  to  be  given  credence.  Gould  v. 
Barnard,  C.  D.  1908,  132  O.  G.  1071. 

3188.  Where  the  junior  party  included  in 
his  rebuttal  testimony  which  was  in  fact  not 
in  rebuttal  of  the  case  made  by  the  senior 
party  and  urged  its  admission  on  the  ground 
that  the  senior  party  had  proved  later  dates 
than  was  expected  by  the  junior  party,  there- 

28 


by  leading  him  to  believe  that  a  narrow  con- 
struction of  the  issue  was  to  be  urged  and 
that  the  testimony  in  question  would  show 
conception  earlier  than  the  date  proved  by 
the  senior  party.  Held,  that  the  orderly  rules 
of  procedure  relating  to  the  introduction  of 
evidence  should  be  observed  in  the  patent  of- 
fice, as  elsewhere,  and  such  testimony  was 
properly  refused  consideration.  *Woodbridge 
V.  Winship,  C.  D.  1909,  145  O.  G.  1250. 

3189.  Where  an  application  of  one  of  the 
parties  is  referred  to  in  his  testimony-in-chief 
as  a  means  of  describing  certain  apparatus 
claimed  to  have  been  set  up  and  used  and  it 
does  not  appear  that  the  disclosure  of  this  ap- 
plication is  the  same  as  that  of  his  case  in- 
volved in  the  interference,  Held,  that  the  co- 
pending application  will  not  be  shielded  from 
attack  as  to  its  operativeness  on  the  rebuttal 
testimony.  Keith,  Erickson  and  Erickson  v. 
Lundquist  v.  Lorimer  and  Lorimer,  C.  D. 
1910,  156  O.  G.  798. 

3190.  Where  the  operativeness  of  the  ap- 
paratus disclosed  in  a  case  involved  in  inter- 
ference is  attacked  in  the  rebuttal  testimony 
on  the  ground  that  it  was  referred  to  as  a 
means  of  describing  certain  apparatus  made 
and  it  does  not  appear  from  a  cursory  review 
whether  the  circumstances  and  the  nature  of 
the  testimony  are  sufficient  to  warrant  the  at- 
tack, Held,  that  a  motion  to  strike  out  such 
rebuttal  testimony  will  be  denied,  with  leave 
to  raise  the  question  at  final  hearing.    Id. 

(r)  Retaking. 

3191.  Where  the  irregularities  requiring  the 
suppression  of  depositions  arose  through  in- 
advertence and  not  through  any  desire  to 
delay  the  proceedings  or  to  take  an  unfair  and 
over-reaching  advantage  of  the  opposing 
party,  Held,  it  is  proper  upon  a  clear  and  sat- 
isfactory showing  of  this  fact  to  permit  the 
party  to  retake  his  testimony,  so  that  he  may 
have  an  opportunity  to  properly  present  his 
case.  Jones  v.  Starr,  C.  D.  1904,  111  O.  G. 
2221. 

3192.  Where  a  contestant  finds  that  he  has 
not  taken  his  evidence  in  accordance  with 
the  rules.  Held,  that  it  is  incumbent  upon  him 
to  set  out  in  detail  the  reason  why  he  failed 
to  comply  with  them.    Id. 

3193.  Where  J.  has  attempted  to  take  an 
unfair  and  overreaching  advantage  to  the 
prejudice  of  his  opponent,  relying  upon  a 
strict   interpretation  of   the   rules,   Held,  that 


434 


INTERFERENCE,  L,  (s). 


he  cannot  be  heard  to  complain  when  it  is 
found  that  he  has  not  complied  with  these 
identical  rules,  requiring  the  suppression  of 
his  depositions,  nor  has  he  any  right  to  retake 
his  testimony  and  to  profit  by  any  deficiency 
that  might  have  become  apparent  from  S.'s 
cross-examination  of  his  witnesses.     Id. 

3194.  Where  the  testimony  of  the  party  had 
been  suppressed  for  gross  irregularities  in 
taKmg  it  and  no  attempt  had  been  made  within 
the  proper  time  to  get  the  decision  suppressing 
the  testimony  set  aside  or  to  take  other  testi- 
mony. Held,  that  the  court  would  not  be 
justified  in  considering  the  suppressed  testi- 
mony were  it  Ijefore  them.  *Jones  v.  Starr, 
C.  D.  1905,  117  O.  G.  1495. 

3195.  Where  the  commissioner  on  appeal 
reversed  the  decision  of  the  examiner  of  in- 
terferences granting  a  motion  to  retake  testi- 
mony which  had  been  suppressed  for  gross 
irregularities  in  taking,  Held,  that  the  grant 
or  refusal  of  the  motion  was  within  the  law- 
ful discretion  of  the  commissioner  and  is  not 
such  a  decision  as  the  court  can  review.    *Id. 

(s)  Suppressing  or  Striking  Out. 

3196.  Where  the  questions  presented  by  a 
motion  to  suppress  testimony  involve  a  con- 
sideration of  the  entire  record,  such  as  is 
necessarily  given  on  the  merits  of  the  case,  it 
is  the  established  practice  to  postpone  such 
consideration  until  the  case  comes  up  regu- 
larly for  final  decision  on  the  question  of  pri- 
ority. Knight  V.  Morgan,  C.  D.  1898,  82  O. 
G.  187. 

3197.  While  each  tribunal  must  decide  for 
itself  what  of  the  evidence  presented  to  it  is 
pertinent  and  admissible,  decisions  on  a  mo- 
tion to  strike  out  certain  testimony,  coupled 
with  a  motion  for  leave  to  introduce  evidence 
in  reply  should  such  testimony  be  held  perti- 
nent and  admissible,  should  be  rendered  at 
such  period  in  the  proceedings  that  neither 
party  shall  be  deprived  of  rights  which  justly 
belong  to  him.  Valley  v.  Wurts,  C.  D.  1898, 
84  O.  G.  985. 

3198.  As  the  effect  of  refusing  to  decide 
upon  the  pertinency  and  admissibility  of  evi- 
dence prior  to  final  hearing  would  deprive  the 
party  who  moves  to  strike  out  testimony  taken 
by  his  opponent  of  the  right  to  offer  evidence 
in  reply  practically  without  a  hearing  and 
without  possibility  of  appeal,  the  examiner  of 
interferences  is  directed  to  determine  the 
question  before  final  hearing.     Id. 


3199.  Appeal  from  decision  of  examiner  of 
interferences  denying  motion  to  strike  out 
testimony  dismissed,  the  moving  party  having 
been  given  opportunity  to  introduce  evidence 
in  reply,  the  question  having  been  decided 
prior  to  final  hearing  only  because  if  deferred 
until  such  hearing  the  moving  party  would 
then  be  unable  to  offer  evidence  in  reply.  It 
being  necessary  to  the  independent  judgment 
of  each  tribunal  that  it  should  determine  such 
questions  for  itself,  its  decision  is  not  re- 
viewable in  advance  of  final  hearing.  Valley 
v.  Wurts,  C.  D.  1898,  84  O.  G.  986. 

3200.  Where  a  witness  refuses  to  answer 
questions  and  the  party  fails  to  apply  to  the 
federal  court  for  an  order  compelling  him  to 
answer.  Held,  that  a  motion  to  strike  out  the 
testimony  given  will  not  be  granted,  but  the 
matter  will  be  postponed  until  final  hearing, 
when  the  whole  record  is  reviewed.  Inde- 
pendent Baking  Powder  Company  v.  Fidelity 
Manufacturing  Company,  C.  D.  1901,  94  O.  G. 
232. 

3201.  The  objection  that  a  witness  refuses 
to  answer  material  questions  does  not  stand 
on  the  same  footing  as  the  objection  that  the 
testimony  actually  taken  has  no  proper  place 
in  the  case.  In  the  latter  case  if  the  objection 
is  well  founded  the  testimony  will  be  stricken 
out  prior  to  final  hearing.  (Huber  v.  Aiken, 
C.  D.   1899,  166,  88  O.  G.  1525.)     Id. 

3202.  Where  corrections  and  additions  were 
made  to  his  testimony  by  a  witness  without 
notice  to  the  other  side  and  long  after  his 
deposition  was  given.  Held,  that  they  will  be 
stricken  out  on  motion.     Id. 

3203.  The  rules  in  regard  to  the  taking  of 
testimony  in  interferences  must  be  strictly 
complied  with  unless  informalities  are  waived 
by  agreement  of  counsel.  To  warrant  sup- 
pressing irregular  depositions,  it  is  not  neces- 
sary to  show  actual  fraud.  Blackman  v.  Alex- 
ander, C.  D.  1902,  98  O.  G.  1281. 

3204.  Where  the  notary's  certificate  does 
not  state  that  the  depositions  were  read  by  or 
to  the  witnesses  before  being  signed  and  the 
notary  did  not  seal  the  depositions  and  for- 
ward them  to  this  office,  as  required  in  the 
rules,  but  left  them  with  the  attorney  for  the 
party  in  whose  behalf  they  were  taken  and 
they  were  forwarded  to  this  office  by  the  at- 
torney some  months  subsequently.  Held,  that 
the  depositions  will  not  be  accepted.     Id. 

3205.  Where  in  support  of  a  request  that 
irregularly-taken  depositions  be  accepted  it 
is  alleged  that  counsel  for  the  opposing  party 


INTERFERENCE,  L,  (s). 


435 


waived  his  right  of  objection  on  account  of 
informalities,  Held,  that  the  burden  is  upon 
the  moving  party  to  establish  the  fact.    Id. 

3206.  Where  a  motion  to  suppress  testi- 
mony involves  a  consideration  of  the  entire 
record,  such  as  is  necessarily  given  at  final 
hearing  upon  the  question  of  priority,  Held, 
that  a  decision  upon  the  matter  will  be  post- 
poned until  that  time.  Talbot  v.  Monell,  C. 
D.   1902,  99  O.   G.   2965. 

3207.  Where  a  motion  to  add  certain  counts 
to  the  issue  of  an  interference  is  denied  and 
the  party  thereafter  reads  those  counts  into 
the  record  and  proceeds  to  take  testimony  as 
to  them,  Held,  that  the  testimony  will  upon 
motion  be  stricken  out.  Brill  and  Adams  v. 
Uebelacker,  C.  D.  1902,  99  O.  G.  2966. 

3208.  The  issue  in  an  interference  proceed- 
ing is  prescribed  by  the  office,  and  the  testi- 
mony taken  must  be  confined  to  the  question 
of  priority  of  invention  of  this  issue.     Id. 

3209.  Where  certain  testimony  taken  is  or- 
dered suppressed.  Held,  that  it  should  not  be 
embodied  in  the  printed  record,  since  that 
record  should  contain  only  matter  properly  in 
the  case.  Felbel  v.  Oliver,  C.  D.  1902,  100  O. 
G.  1975. 

3210.  Where  a  party  prints  in  his  record 
depositions  which  have  been  suppressed.  Held. 
that  a  motion  to  expunge,  cancel,  and  remove 
entirely  from  the  printed  record  will  be  grant- 
ed.    Id. 

3211.  Where  it  appears  that  the  testimony 
taken  by  one  of  the  parties  to  an  interference 
relates  solely  to  public  use  it  will  be  sup- 
pressed. Stroud  V.  Miller,  C.  D.  1902,  101  O. 
G.  2075. 

3212.  Where  a  party  to  an  interference  files 
two  motions,  one  to  suppress  the  entire  testi- 
mony filed  by  an  opponent  and  the  other  that 
he  be  given  judgment  under  the  provisions  of 
Rule  119,  and  it  is  decided  on  appeal  that  the 
motion  to  suppress  the  testimony  should  be 
granted,  the  examiner  of  interferences  should 
then  grant  the  motion  asking  for  judgment 
under  Rule  119  as  the  record  stands  as  though 
no  testimony  had  been  taken.    Id. 

3213.  Where  testimony  is  suppressed  be- 
cause of  irregularities  in  the  taking  thereof 
and  it  appears  that  the  irregularities  were  due 
entirely  to  inadvertence  and  not  to  an  inten- 
tion to  delay  the  proceedings.  Held,  that  the 
party  should  be  given  an  opportunity  to  retake 
the  testimony.  Blackman  v.  Alexander,  C.  D. 
1902,  100  O.  G.  2383. 


3214.  Where  a  motion  to  suppress  testimony 
on  the  ground  that  it  is  immaterial,  irrele- 
vant, incompetent,  and  not  rebuttal  requires 
a  complete  consideration  of  the  testimony. 
Held,  that  the  matter  should  be  postponed 
until  final  hearing.  Hall  v.  Alcord,  C.  D. 
1902,   101   O.  G.   1833. 

3215.  The  office  has  no  machinery  for  com- 
pelling a  witness  to  answer,  and  where  the 
party  alleged  to  be  aggrieved  fails  to  apply 
to  a  federal  court  for  an  order  to  compel  the 
witness  to  testify  the  office  cannot  in  advance 
of  final  hearing  go  into  the  materiality  and 
relevancy  of  the  questions  asked  in  order  to 
determine  whether  the  witness's  refusal  to 
answer  such  questions  is  a  sufficient  warrant 
for  suppressing  all  the  testimony  given  by 
him.  Donning  v.  Stackpole  and  Laganke,  C. 
C.  1903,  102  O.  G.  819. 

3216.  Where  a  party  offers  certain  patents 
in  evidence  and  contends  that  they  are  perti- 
nent and  will  have  an  important  bearing  on 
the  controversy  and  his  opponent  denies  these 
contentions,  the  patents  will  not  be  suppressed 
on  motion,  as  the  issue  raised  by  the  parties 
relative  to  the  pertinency  of  the  patents  should 
await  determination  until  the  final  hearing. 
Id. 

3217.  The  main  question  involved  in  an  in- 
terference proceeding  in  the  patent  office — 
that  of  priority  of  invention — is  a  quasi- 
judicial  one,  and  in  deciding  that  question  the 
commissioner  of  patents,  as  a  judicial  officer, 
of  necessity  has  a  right  to  determine  what 
evidence  he  will  consider,  and  therefore  a  di- 
rection by  the  Secretary  of  the  Interior  to  the 
commissioner  of  patents  to  either  receive  or 
reject  evidence  would  amount  to  an  unwar- 
ranted interference  with  the  discretion  of  that 
officer.  Held,  that  an  appeal  to  the  secretary 
from  a  decision  of  the  commissioner  refusing 
to  suppress  testimony  will  be  dismissed.  fFal- 
ler  V.  Lorimer  et  al.,  C.  D.  1904,  111  O.  G. 
579. 

3218.  Where  motion  is  made  to  suppress 
testimony  and  it  appears  that  it  cannot  be  de- 
cided without  considering  the  entire  record. 
Held,  that  the  matter  will  be  postponed  until 
final  hearing.  Andrews  v.  Nilson,  C.  D.  1904, 
in  O.  G.  10.38. 

3219.  Where  the  notary  delayed  filing  tes- 
timony, but  a  reasonable  explanation  for  the 
delay  is  given,  and  there  is  no  allegation  that 
the  testimony  was  out  of  the  possession  of 
the  notary  nor  that  the  delay  wrought  a  sub- 
stantial  injury   to   the   opposing  party.   Held, 


436 


INTERFERENCE,  L,   (s). 


that    the    testimony    will    not    be    suppressed. 
Moss  V.  Blaisdell,  C.  D.  1904,  113  O.  G.  2505. 

3220.  Where  the  notary's  certificate  does 
not  state  the  date  upon  which  the  package 
was  sealed,  the  name  of  the  person  who  trans- 
cribed the  stenographic  notes,  or  that  they 
were  written  out  in  the  presence  of  the  notary, 
or  that  the  depositions  were  read  over  by  the 
witnesses,  or  that  the  notary  read  them  over 
to  the  witnesses  before  they  signed  the  same, 
Held,  that  in  the  absence  of  a  stipulation  waiv- 
ing these  informalities  the  deposition  will  be 
suppressed.  Rolfe  v.  Taylor,  C.  D.  1904,  111 
O.  G.  19.38. 

3221.  The  rules  specifically  require  that  ex- 
hibits shall  be  forwarded  directly  to  the  pat- 
ent office  by  the  officer  before  whom  the  testi- 
mony was  taken.  Held,  that  where  exhibits 
have  not  been  forwarded  in  the  absence  of  a 
stipulation  waiving  this  requirement  that  por- 
tion of  the  testimony  relating  to  the  exhibits 
will  be  suppressed.     Id. 

3222.  The  fact  that  the  names  of  the  wit- 
nesses are  not  written  at  the  top  of  the  pages 
of  the  deposition  and  that  there  is  no  margin 
at  the  left  hand  side  of  the  .sheet  is  a  mere 
technical  objection  and  not  sufficient  ground 
for  suppressing  depositions  which  are  cor- 
rect in  other  particulars.     Id. 

3223.  Where  the  court  refused  to  consider 
testimony  of  a  party  which  had  been  sup- 
pressed in  the  patent  office  and  affirmed  the 
record  judgment  below  unfavorable  to  such 
party.  Held,  that  the  party  still  has  a  remedy 
under  section  4915,  Revised  Statutes,  and  if 
there  successful  can  invoke  relief  under  sec- 
tion 4918  of  the  Revised  Statutes.  *Jones  v. 
Starr,  C.  D.  1905,  117  O.  G.  1495. 

3224.  When  a  notice  is  served  at  10  a.  m. 
that  testimony  is  to  be  taken  at  2  p.  m.  on 
the  last  day  upon  which  testimony  must  be 
taken  and  all  parties  live  in  the  same  city 
and  were  present  and  the  record  shows  that 
the  testimony  was  very  brief,  and  as  nothing 
appears  in  the  record  to  indicate  that  there 
was  not  sufficient  time  remaining  to  finish  the 
cross-examination,  Held,  that  this  testimony 
will  not  be  stricken  out,  notwithstanding  an 
objection  on  the  record  of  insufficient  notice 
and  a  refusal  to  cross-examine.  Roberts  v. 
Webster,  C.  D.   1905,  115  O.  G.  2135. 

3225.  Where  long  after  depositions  were 
taken  and  filed  in  this  office  motion  was  made 
to  strike  them  out  because  the  notary  acted 
without  authority,  but  it  appears  that  no  ob- 
jection  was    made   at   the    time   or    reserved. 


Held,  that  the  motion  will  be  denied.  Badger 
V.  Morgan  and  Hoheisel,  C.  D.  1905,  117  O.  G. 
598. 

3226.  Held,  that  a  party  should  not  be  pen- 
alized by  striking  out  his  depositions  because 
of  short  delay  by  the  notary  in  filing  them 
when  the  delay  was  not  caused  by  the  party 
or  his  attorney  and  does  not  appear  to  have 
injured  his  opponent.  Royce  v.  Kempshall,  C. 
D.  1905,  119  O.  G.  338. 

3227.  Where  motion  to  strike  out  deposi- 
tions was  based  on  fact  that  the  notary  was 
an  employee  of  the  attorney  and  had  delayed 
forwarding  the  depositions  to  the  patent  of- 
fice, Held,  that  the  contention  that  the  deposi- 
tions were  practically  in  the  possession  of  the 
attorney  during  the  delay  is  without  force. 
Id. 

3228.  Where  no  objection  to  the  notary  was 
made  during  the  taking  of  the  depositions,  the 
objections  were  waived  and  cannot  be  raised 
later,  since  the  principle  of  estoppel  applies. 
Id. 

3229.  Where  objection  is  made  to  the  no- 
tary's certificate  because  it  fails  to  state 
whether  a  party  or  his  attorney  was  present 
when  the  deposition  was  taken,  but  both  par- 
ties agree  that  neither  said  party  nor  his  at- 
torney was  present.  Held,  that  the  objection 
is  purely  technical  and  affords  no  basis  for 
striking  out  the  deposition.    Id. 

3230.  Where  upon  a  motion  to  suppress  cer- 
tain specified  testimony  on  the  ground  that  it 
is  incompetent  the  examiner  of  interferences 
rules  that  consideration  of  the  motion  should 
be  postponed  until  final  hearing  because  it 
would  require  a  consideration  of  the  greater 
portion  of  the  record,  Held,  that  an  appeal 
from  the  examiner's  ruling  raises  only  the 
question  whether  or  not  the  examiner  was 
right  in  postponing  the  consideration  of  the 
question,  which  is  a  matter  that  will  not  be 
reviewed  and  reversed  except  in  a  clear  case 
of  abuse  of  discretion.     Id. 

3231.  The  testimony  of  a  witness  may  be 
suppressed  on  account  of  his  refusal  to  fur- 
nish material  evidence;  but  the  office  has  no 
machinery  for  compelling  him  to  furnish  such 
evidence.  Lindstrom  v.  Lipschultz,  C.  D.  1906, 
120  O.  G.  904. 

3232.  Where  at  the  hearing  of  a  motion  to 
compel  a  witness  to  answer  certain  questions 
or  to  suppress  his  deposition  the  interference 
was  suspended  for  ten  days  to  permit  the  par- 
ties to  come  to  some  agreement  and  a  paper 
was   thereafter   filed   in   the   case,   in   accord- 


INTERFERENCE,  L,  (s). 


437 


ance  with  the  agreement  of  counsel,  to  show 
that  no  agreement  could  be  reached.  Held, 
that  such  paper  will  not  be  stricken  out  upon 
the  allegation  that  it  is  a  supplemental  brief 
filed    in    violation   of   the    rules.     Id. 

3233.  Held,  that  testimony  which  intrudes 
the  opinion  of  the  witness  upon  a  question 
which  it  is  the  duty  of  the  tribunal  hearing 
the  case  to  decide  from  the  facts  uninfluenced 
by  conclusions  thereon  by  others  should  be 
struck  out.  Marconi  v.  Shoemaker  v.  Fessen- 
den,  C.  D.  1906,  121  O.  G.  2064. 

3234.  The  insufficiency  of  an  opponent's  ap- 
plication to  sustain  judgment  against  a  party 
to  interference  proceedings  is  clearly  part 
of  that  party's  prima  facie  case.  Held,  there- 
fore, that  testimony  directed  to  the  insuffi- 
ciency of  the  application  offered  as  part  of  a 
party's  case  in  rebuttal  should  be  struck  out 
upon  proper  objection  and  motion  made.     Id. 

3235.  In  the  type-written  record  of  testi- 
mony in  interference  proceedings  the  ques- 
tions and  answers  struck  out  should  be  can- 
celed by  red  lines  and  proper  marginal  notes 
should  be  made,  as  when  matter  is  canceled 
in  the  specification  of  an  application  for  pat- 
ent.    Id. 

3236.  In  the  printed  record  of  testimony  in 
interference  proceedings  questions  and  an- 
swers which  have  been  struck  out  should  be 
omitted  from  their  places  in  the  body  of  the 
testimony  and  a  notice  inserted  that  they  had 
been  struck  out,  giving  the  date  of  the  deci- 
sion in  which  the  order  striking  out  was  made. 
Id. 

3237.  Held,  that  a  party  against  whom  an 
order  striking  out  testimony  is  directed  may, 
if  he  desires  to  do  so,  print  the  excluded  testi- 
mony, properly  designated,  as  an  appendix 
to  his  record  or  separately.    Id. 

3238.  The  refusal  of  the  commissioner  of 
patents  to  suppress  portions  of  a  deposition 
because  of  the  inclusion  therein  of  alleged 
copies  of  letter-press  copies  of  letters  written 
by  one  party  to  the  other  is  not  reversible 
error.  *Kempshall  v.  Royce,  C.  D.  1907,  129 
O.  G.  3162. 

3239.  Where  a  record  as  made  up  by  the 
officer  before  whom  testimony  is  taken  in  an 
interference  proceeding  shows  that  counsel 
for  one  of  the  parties  desired  to  examine  cer- 
tain witnesses  as  to  whom  no  notice  had  been 
given  by  opposing  counsel  and  the  latter  stated 
that  while  he  had  no  objection  to  their  direct 
examination  he  did  not  care  to  cross-examine 
and  thereupon  went  away,  Held,  tliat  the  de- 


positions of  such  witnesses  will  not  upon  mo- 
tion be  stricken  out  because  of  lack  of  notice, 
notwithstanding  an  affidavit  by  counsel  stating 
that  he  had  refused  to  take  the  testimony  of 
such  witnesses.     Id. 

3240.  Where  a  consideration  of  a  motion  to 
suppress  testimony  would  involve  a  consid- 
eration of  a  large  portion  of  the  record,  a  de- 
cision upon  the  motion  will  be  postponed  until 
final  hearing.  Dyson  v.  Land  v.  Dunbar  v. 
Browne,  C.  D.  1907,  130  O.  G.  1690. 

3241.  Where  the  examiner  of  interferences 
in  his  decision  on  priority  decided  a  motion 
to  suppress  testimony,  Held,  that  an  appeal 
from  that  decision  will  not  be  considered  until 
the  case  comes  before  the  commissioner  on 
appeal  on  priority.  Dyson  v.  Land  v.  Dunbar 
v.  Browne,  C.  D.  1908,  133  O.  G.  1679. 

3242.  The  examiners-in-chief  have  jurisdic- 
tion to  pass  upon  the  correctness  of  the  action 
of  the  examiner  of  interferences  in  suppress- 
ing testimony  and  to  consider  the  same  if  in 
their  opinion  it  should  not  have  been  suppress- 
ed.    Id. 

3243.  Testimony  should  not  be  suppressed 
on  account  of  the  failure  of  a  witness  to  read 
his  deposition  before  signing  the  same  where 
it  does  not  appear  that  such  notice  was  given 
to  the  opposite  party,  as  is  required  by  Rule 
159.  Rhodes  v.  Rhodes,  C.  D.  1908,  132  O.  G. 
(•,80. 

3244.  Where  it  clearly  appeared  that  cross- 
interrogatories  filed  under  the  provisions  of 
Rule  158  are  improper  cross-examination,  a 
motion  to  strike  them  out  was  properly  grant- 
ed. Actiengesellschaft  Paulanerbrau  Salvator- 
brauerei  v.  Conrad  Seipp  Brewing  Company, 
C.  D.  1908,  135  O.  G.  1121. 

3245.  Where  a  party  to  an  interference  be- 
gins the  taking  of  his  testimony  just  two  days 
prior  to  the  expiration  of  the  time  set  and  oc- 
cupies all  of  such  time  in  the  direct  examina- 
tion and  offers  the  opposing  party  no  oppor- 
tunity wnthin  such  time  for  cross-e.xamination 
and  without  securing  extension  of  his  time 
proceeds  to  examine  other  witnesses  there- 
after, at  which  examination  the  opposing 
party's  counsel  was  not  present,  he  having 
withdrawn  after  the  expiration  of  the  time  set, 
Held,  that  all  the  testimony  was  properly  sup- 
pressed. Mattice  v.  Langworthy,  C.  D.  1909, 
HO  O.  G.  507. 

3246.  A  ruling  by  the  examiner  of  interfer- 
ences that  certain  testimony  will  be  disre- 
garded by  him  at  final  hearing  will  not  be  re- 


438 


INTERFERENCE,  L,  (t),  (u). 


viewed  upon  petition,  Keith,  Erickson  & 
Erickson  v.  Lundquist  v.  Lorimer  &  Lorimcr, 
C.  D.  1910,  156  O.  G.  798. 

3247.  The  mere  fact  of  consolidation  of  in- 
terest between  two  or  more  parties  to  an  in- 
terference. Held,  immaterial  to  the  question  of 
priority  and  testimony  on  this  point  properly 
suppressed  in  the  absence  of  any  showing  as 
to  its  special  relevancy.  Keith,  Erickson,  and 
Erickson  v.  Lunquist  v.  Lorimer  and  Lorimer, 
C.  D.  1910,  158  O.  G.  701. 

3248.  Where  irregularities  which  require 
the  suppression  of  testimony  arose  through 
inadvertence  and  not  through  a  desire  to  delay 
the  proceedings  or  to  take  an  overreaching 
advantage  of  the  opposing  party,  it  is  proper 
upon  a  clear  and  satisfactory  showing  of  this 
fact  to  permit  such  testimony  to  be  retaken. 
The  Shaw  and  Welty  Shirt  Co.  v.  The  Quaker 
City  Shirt  Mfg.  Co.,  C.  D.  1910,  157  O.  G. 
1000. 

3249.  Where  the  consideration  of  a  mo- 
tion to  suppress  certain  testimony  taken  in 
surrebuttal  would  necessitate  a  consideration 
not  only  of  the  surrebuttal  testimony  but  a 
large  part  of  all  the  testimony  in  the  case. 
Held,  that  the  examiner  of  interferences  prop- 
erly postponed  consideration  of  this  motion 
until  final  hearing.  Keith,  Erickson,  and 
Erickson  v.  Lundquist  v.  Lorimer  and  Lori- 
mer, C.  D.  1910,  157  O.  G.  754. 

(t)  Surprise. 

3250.  A  party  must  contemplate  and  guard 
against  all  ordinary  attacks  on  his  evidence, 
and  where  he  introduces  foreign  patents  and 
publications  as  disclosing  the  invention  they 
are,  like  other  evidence,  open  to  consideration 
and  explanation  by  his  opponent  in  his  rebut- 
tal testimony,  and  the  fact  that  he  introduces 
evidence  to  show  that  they  do  not  disclose 
the  invention  is  no  ground  for  the  allegation 
of  surprise.  It  furnishes  no  good  reason  for 
taking  more  testimony.  Stone  v.  Hutin  and 
Leblanc,  C.  D.  1898,  84  O.  G.  1731. 

3251.  Where  a  party  introduces  in  evidence 
a  sketch  as  disclosing  the  invention  he  puts 
in  issue  the  question  whether  it  does  disclose 
it,  and  the  fact  that  his  opponent  takes  expert 
testimony  upon  the  subject  furnishes  no 
ground  for  the  allegation  of  surprise  such  as 
will  entitle  him  to  take  surrebuttal  testimony. 
Pfatisher  v.  Buck,  C.  D.  1902,  101  O.  G.  1370. 

3252.  A  party  must  contemplate  and  guard 
against  all  ordinary  attacks  upon  his  evidence. 


since  he  is  not  entitled  to  take  more  testi- 
mony merely  because  it  has  been  attacked 
without  introducing  any  new  question.    Id. 

3253.  To  warrant  the  grant  of  a  new  trial 
on  the  ground  of  surprise,  it  must  appear  that 
the  surprise  was  such  as  ordinary  prudence 
could  not  have  guarded  against.  Blackman  v. 
Alexander,  C.  D.  1903,  104  O.  G.  2441. 

3254.  Where  the  senior  party  introduces  a 
drawing  in  evidence  and  describes  the  opera- 
tion of  the  device  shown  therein  and  the  ju- 
nior party  thereafter  takes  testimony  to  show 
that  the  device  is  inoperative,  Held,  that  there 
is  no  ground  for  the  allegation  of  surprise 
by  the  senior  party  and  that  he  is  not  entitled 
to  lake  surrebuttal  testimony.  Ritter  v.  Kra- 
kau  and  Connor,  C.  D.  1903,  104  O.  G.  1897. 

3255.  It  is  the  duty  of  a  party  to  antici- 
pate and  guard  against  all  ordinary  attacks 
upon  his  evidence,  and  an  exhibit  introduced 
cannot  be  shielded  from  attack  as  inoperative 
merely  because  it  is  said  to  embody  the  same 
construction  as  that  shown  in  the  applica- 
tion.   Id. 

(u)  Surrebuttal. 

3256.  Where  in  rebuttal  an  effort  is  made  to 
discredit  the  senior  party  by  introducing  evi- 
dence as  to  a  private  conversation  carried  on 
by  him  with  his  attorney  during  the  introduc- 
tion of  his  testimony.  Held,  that  the  senior 
party  is  entitled  to  take  surrebuttal  evidence 
to  explain  the  conversation.  Donning  v. 
Stackpole  and  Loganke,  C.  D.  1903,  106  O.  G. 
264. 

3257.  The  right  to  take  surrebuttal  evidence 
will  be  extended  to  a  party  whenever  he  has 
been  surprised  by  evidence  or  a  hne  of  defense 
in  rebuttal  which  he  has  had  no  reason  to 
anticipate  or  opportunity  to  prepare  against. 
Id. 

3258.  Surrebuttal  testimony  should  only  be 
accepted  from  a  party  where  matter  is  intro- 
duced in  his  opponent's  proofs  which  is  in  the 
nature  of  a  surprise  to  the  party  seeking  sur- 
rebuttal proofs.  Marconi  v.  Shoemaker  v. 
Fessenden,  C.  D.  1906,  121  O.  G.  2604. 

3259.  Where  an  inventor  testifying  in  re- 
buttal on  behalf  of  his  opponent  denies  that 
he  is  the  inventor  of  a  part  of  the  invention 
in  issue,  his  testimony  constitutes  such  legal 
surprise  as  will  entitle  his  assignee,  who  is 
prosecuting  the  invention,  to  take  surrebuttal 
testimony.  Sandage  v.  Dean  v.  Wright  v.  Mo 
Kenzie,  C.  D.  1907,  130  O.  G.  981. 


INTERFERENCE,  L,  (v),  (w). 


439 


3260.  Where  the  instances  alleged  to  show 
that  the  inventor  has  testified  falsely  amount 
to  no  more  than  a  difference  of  opinion  be- 
tween the  witness  and  the  affiant,  a  motion  to 
take  surrebuttal  testimony  should  be  denied. 
Id. 

3261.  The  right  to  take  surrebuttal  testi- 
mony is  not  merely  dependent  upon  the  pro- 
priety of  opponent's  testimony  and  is  there- 
fore not  affected  by  a  refusal  to  consider  a 
motion  to  suppress  prior  to  final  hearing. 
Dyson  v.  Land  v.  Dunbar  v.  Browne,  C.  D. 
1907,  130  O.  G.  1090. 

3262.  The  junior  party  took  testimony  as  to 
priority,  but  did  not  attack  the  operativeness 
of  the  senior  party's  device.  The  senior  party 
took  the  testimony  of  two  witnesses  to  show 
that  the  device  shown  in  figure  3  of  his  ap- 
plication was  operative,  and  certain  exhibits 
were  introduced,  which  one  of  the  witnesses 
testified  were  tested  by  him.  In  rebuttal  the 
junior  party  offered  expert  testimony  to  show 
certain  structural  differences  between  the  ex- 
hibits and  the  invention  disclosed  in  the  sen- 
ior party's  application.  Held,  that  such  tes- 
timony afforded  no  ground  for  allowing  the 
senior  party  to  take  surrebuttal  testimony. 
Gold  V.  Gold,  C.  D.  1908,  133  O.  G.  993. 

3263.  Leave  to  take  sur-surrebuttal  testi- 
mony will  not  be  granted  where  it  appears 
that  the  testimony  in  surrebuttal  was  not  in 
the  nature  of  a  surprise  and  was  such  as 
might  have  been  guarded  against  in  the  taking 
of  rebuttal  testimony.  Ruthven  v.  Christen- 
sen,  C.  D.  1909,  138  O.  G.  257. 

(v)   Taken  Abroad. 

3264.  Where  a  party  asks  for  leave  to  take 
testimony  abroad  and  his  opponents  by  stipu- 
lation admit  all  facts  which  he  desires  to 
prove  with  the  exception  of  the  date  of  his 
foreign  application.  Held,  that  the  date  of 
the  application  is  immaterial  and  there  is  no 
necessity  to  take  testimony  abroad.  Butter- 
worth  V.  Boral  and  Kymer  v.  Ecob,  C.  D. 
1901,  97  O.  G.  1596. 

3265.  Where  it  appears  that  the  testimony 
of  witnesses  residing  in  Germany  is  material 
and  necessary  in  an  interference  proceeding 
in  this  office  and  it  cannot  be  taken  in  the 
regular  way  by  commission  by  reason  of  a 
prohibitory  rule  of  the  German  government. 
Held,  that  the  commissioner  of  patents  will 
issue  letters  regatory  in  order  to  obtain  from 
the  German  court  testimony  which  cannot  be 


obtained   in  any  other  way.     Potter  v.  Ochs, 
C.  D.  1901,  97  O.  G.  1835. 

3266.  Where  testimony  is  taken  by  a  Ger- 
man court  in  response  to  a  request  from  the 
commissioner  of  patents.  Held,  that  it  is  taken 
by  an  officer  authorized  by  law  to  take  deposi- 
tions to  be  held  in  the  courts  of  the  United 
States.    Id. 

3267.  A  motion  to  take  testimony  abroad 
will  be  denied  where  it  appears  that  the  pro- 
posed testimony  is  immaterial.  Muller  v. 
Lauber,  C.  D.  1903,  106  O.  G.  2016. 

3268.  Held,  that  it  is  proper  to  permit  the 
taking  of  testimony  in  this  country  pending  an 
appeal  upon  the  question  of  taking  testimony 
abroad,  particularly  where  delay  may  render 
it  difficult  to  secure  the  testimony.  Herreshoff 
V.  Knietsch,  C.  D.  1904,  111  O.  G.  1624. 

3269.  Where  letters  rogatory  are  issued  to 
take  testimony  abroad,  Held,  that  the  testi- 
mony must  be  taken  upon  written  interroga- 
tories filed  unless  the  parties  stipulate  to  take 
it  orally.  Herreshoff  v.  Knietsch,  C.  D.  1904, 
111  O.  G.  1039. 

3270.  The  sufficiency  of  a  showing  in  sup- 
port of  a  motion  to  take  testimony  abroad  is 
a  matter  which  should  be  left  largely  to  the 
discretion  of  the  examiner  of  interferences, 
and  his  decision  granting  such  a  motion  should 
not  be  reviewed  except  where  clear  error  is 
made  to  appear.  Keith,  Erickson,  and  Erick- 
son  V.  Lundquist,  C.  D.  1907,  128  O.  G.  2835. 

3271.  The  fact  that  a  witness  is  not  an  em- 
ployee of  the  party  calling  him  and  cannot 
leave  his  employment  for  a  sufficient  time  to 
come  to  the  United  States  to  testify  is  suffi- 
cient to  warrant  the  issuance  of  the  letters 
rogatory  to  take  his  testimony  in  a  foreign 
country.  Lowry  v.  Ruping,  C.  D.  1908,  135 
O.  G.  662. 

(w)   Of  Applicant. 

3272.  Where  Y.  offered  in  evidence  a  draw- 
ing said  to  have  been  made  during  a  certain 
time  which  is  fixed  by  dates  written  on  the 
drawing  and  there  is  only  Y.'s  unsupported 
allegation  that  he  made  the  drawing  at  that 
time.  Held,  that  such  testimony  is  insufficient 
to  establish  these  dates.  (Dickson  v.  Kins- 
man, C.  D.  1880,  208,  18  O.  G.  1224,  consid- 
ered.) Young  V.  Donnelly,  C.  D.  1898,  82 
O.  G.  1417. 

3273.  In  an  interference  proceeding  the  un- 
supported testimony  of  a  party  to  such  inter- 
ference is  not  sufficient  to  warrant  a  finding 


440 


INTERFERENCE,  L,  (w). 


that  drawings  made  and  offered  in  evidence 
by  such  party  were  made  at  a  claimed  date. 
Id. 

3274.  Winslow  took  no  testimony  to  prove 
his  case,  but  rested  on  his  record  date.  Aus- 
ton  testified  that  he  disclosed  the  invention  to 
Winslow,  who  was  then  in  his  employ  and  who 
made  no  claim  to  the  invention.  Austin's 
testimony  is  uncorroborated.  Held,  that  in 
interference  proceedings  where  the  fact  is  one 
that  is  not  solely  within  the  personal  knowl- 
edge of  the  party  to  the  interference  his  testi- 
mony cannot  be  ignored  simply  because  it  is 
uncorroborated  and  that  Austin  is  a  compe- 
tent witness  to  testify  as  to  a  claimed  disclo- 
sure of  the  subject-matter  of  the  interference 
to  his  adversary.  Austin  v.  Winslow,  C.  D. 
1898,  83  O.  G.  1991. 

3275.  Held,  further,  that  when  Austin  testi- 
fied that  he  had  disclosed  the  invention  to 
Winslow  the  burden  of  proof  was  shifted  and 
Winslow  could  no  longer  safely  rely  upon  his 
record  date.  Where  a  claimed  fact  must  be 
equally  within  the  knowledge  of  two  parties 
and  one  asserts  it  and  the  other  fails  to  deny 
it,  the  latter  cannot  complain  if  the  asserted 
fact  is  found  by  the  tribunal  called  upon  to 
pass  on  it  to  be  true.    Id. 

3276.  While  it  is  true  that  the  fact  of  con- 
ception by  an  inventor  for  the  purpose  of  es- 
tablishing priority  cannot  be  proved  by  his 
mere  allegation  or  his  unsupported  testimony, 
where  there  has  been  no  disclosure  to  others 
or  embodiment  of  invention  in  some  clearly 
perceptible  form,  such  as  drawings  or  models, 
with  sufficient  proof  of  identity  in  point  of 
time,  it  does  not  follow  from  this  principle 
that  the  party  upon  whom  is  cast  the  onus  of 
proving  the  fact  of  priority  of  invention  is  an 
incompetent  witness  to  testify  in  his  own  be- 
half as  to  the  facts  of  priority.  *Winslow  v. 
Austin,  C.  D.  1899,  86  O.  G.  2171. 

3277.  Where  a  party's  testimony  as  to  the 
operative  character  of  a  machine  which  he 
built  is  not  satisfactory  and  no  witnesses  are 
called  to  corroborate  him,  although  it  ap- 
pears that  others  must  have  been  familiar  with 
the  tests  of  the  machine.  Held,  that  the  almost 
unavoidable  inference,  both  from  the  testi- 
mony itself  and  from  the  omissions  in  the 
testimony,  is  that  the  machine  was  experi- 
mental and  was  not  a  reduction  to  practice. 
*KelIy  V.  Flynn,  C.  D.  1900,  92  O.  G.  1237. 

3278.  Where  the  machine  which  was  built 
was  of  such  a  character  and  nature  that  others 
must  have  assisted  in  or  witnessed  the  tests, 


but  where  the  testimony  stops  short  with  the 
construction  of  the  machine  and  the  inventor 
is  not  corroborated  by  anyone  as  to  the  tests 
or  as  to  the  changes  made  in  the  machine 
after  its  construction.  Held,  that  the  silence 
of  the  witnesses  upon  this  point  is  very  sug- 
gestive. Kelly  v.  Flynn,  C.  D.  1900,  92  O.  G. 
1233. 

3279.  The  unsupported  testimony  of  the 
party  upon  whom  is  the  burden  of  proof  is 
insufficient  to  prove  that  his  machine  would 
work  practically  and  successfully  so  as  to 
be  considered  an  actual  reduction  to  practice. 
Id. 

3280.  Where  several  witnesses  testify  to 
having  seen  a  roller-holder  box,  but  the  in- 
ventor himself  is  the  only  one  who  testifies 
to  the  identity  of  the  contents  of  the  box. 
Held,  that  the  evidence  is  insufficient  to  es- 
tablish the  fact.    *Eastman  v.  Houston,  C.  D. 

1901,  95  O.  G.  ?064. 

3281.  That  the  unsupported  evidence  of  a 
party  will  not  be  accepted  or  acted  upon  as 
sufficient  proof  of  the  conception  of  an  inven- 
tion is  a  well-settled  principle,  the  reasons 
for  which  apply  with  equal  force  to  its  reduc- 
tion to  practice.  *Petrie  v.  De  Schweinitz, 
C.  D.  1902,  99  O.  G.  1387. 

3282.  The  uncorroborated  testimony  of  a 
party  as  to  conception,  the  making  of  draw- 
ings, and  an  actual  construction  of  the  inven- 
tion before  his  rival's  invention  cannot  be  ac- 
cepted, although  it  may  appear  plausible. 
♦Sharer  v.  McHenry,  C.  D.  1902,  98  O.  G.  585. 

3283.  Considering  the  natural  bias  of  a 
party  and  the  incentive  to  color  the  testimony 
in  his  own  interest,  the  rule  that  his  testimony 
upon  a  point  will  not  be  accepted  as  sufficient 
is  so  universally  accepted  that  it  may  be  said 
that  his  testimony  is  incompetent  until  cor- 
roborated.     Petrie    v.    De    Schweinitz,    C.    D. 

1902,  99  O.  G.  446. 

3284.  The  mere  unsupported  statements  of 
an  inventor  are  not  sufficient  to  show  concep- 
tion. Neither  is  the  introduction  of  drawings 
unidentified  as  to  point  of  time  sufficient  to 
fix  the  time  of  conception  or  disclosure  of  an 
invention.  (Mergenthaler  v.  Scudder,  C.  D. 
1897,  724,  81  O.  G.  1417.)  This  being  true  as 
to  a  sole  inventor,  the  same  rule  must  apply 
to  joint  inventors.  Freeman  v.  Garrells  and 
Kimball,  C.  D.   1903,  102  O.  G.  1777. 

3285.  The  testimony  of  one  joint  inventor 
is  not  corroborative  of  the  testimony  of  an- 
other joint  inventor  either  as  to  disclosure  or 


INTERFERENCE,  L,  (w). 


441 


as  to  time,  for  joint  inventors  constitute  a 
single  party.  Their  minds  and  interests  be- 
come one,  and  their  testimony  as  to  their  joint 
acts  cannot  be  rebutted.     Id. 

3286.  Joint  inventors  being  an  entity  in  con- 
templation of  law,  their  unsupported  testimony 
as  to  their  joint  acts  of  invention  can  have 
no  more  force  and  effect  than  the  unsupport- 
ed testimony  of  a  sole  inventor  as  to  his  sole 
acts  of  invention.     Id. 

3287.  Where  joint  inventors  testify  in  their 
own  behalf  to  a  joint  conception  and  no  wit- 
ness is  called  to  prove  a  disclosure  of  the  in- 
vention by  them  and  there  are  no  independent 
circumstances  established  by  the  evidence 
tending  to  corroborate  their  statements,  Held, 
that  these  unsupported  statements  of  the  joint 
inventors  are  insufficient  to  overcome  the  pri- 
ority that  had  been  established  on  the  part  of 
the  opposing  party.  *Garrells  et  al.  v.  Free- 
man, C.   D.  1903,  103  O.  G.  1683. 

3288.  The  fact  that  two  witnesses  have  tes- 
tified to  an  act  of  invention  instead  of  one 
does  not  change  the  rule  that  the  unsupported 
testimony  of  an  inventor  is  insufficient  to  es- 
tablish an  alleged  date  of  conception  or  re- 
duction to  practice  where  these  two  witnesses 
are  the  two  applicants  who  jointly  lay  claim 
to  the  one  invention,  the  one  conception.  The 
conception  of  one  is  incomplete  without  con- 
junction with  the  other.  All  the  reasons  which 
underlie  the  rule  apply  with  the  same  force 
where  there  are  joint  inventors  instead  of  a 
single  one.     *Id. 

3289.  Where  no  one  save  the  inventor  testi- 
fies that  the  device  worked  practically  and  suc- 
cessfully, Held,  that  it  cannot  be  regarded 
as  a  reduction  to  practice.  Harris  v.  Stern 
and  Lotz,  C.  D.  1903,  105  O.  G.  259. 

3290.  The  uncorroborated  testimony  of  a 
party  that  he  operated  the  machine  and  satis- 
fied himself  of  its  practical  mechanism  is  not 
sufficient  to  establish  reduction  to  practice. 
Paul  V.  Hess,  C.  D.  1904,  113  O.  G.  847. 

3291.  Where  it  appears  that  H.  was  endeav- 
oring to  sell  inventions  covered  by  certain 
patents  on  locks  and  these  offers  to  sell  were 
refused  because  the  inventions  lacked  certain 
features  which  are  involved  in  the  issue  of 
this  interference  and  H.  did  not  at  that  time 
tell  how  a  lock  could  be  made  so  as  to  over- 
come the  objection.  Held,  that  his  testimony 
that  he  was  then  in  possession  of  the  inven- 
tions cannot  be  believed  in  view  of  his  con- 
duct  unless   supported   by   evidence   which   is 


clear  and  convincing.     Voight  v.  Hope,  C.  D. 
1905,   114  O.  G.  762. 

3292.  Where  one  of  the  applications  in- 
volved in  an  interference  proceeding  is  filed 
by  joint  applicants  and  the  joint  applicants 
present  no  testimony  other  than  their  own  in 
support  of  their  case,  Held,  that  such  testi- 
mony is  incompetent  to  establish  their  claim 
of  priority  of  invention.  Podlcsak  and 
Podlesak  v.  Mclnnerney,  C.  D.  1905,  118  O. 
G.  835. 

3293.  The  unsupported  testimony  of  joint 
inventors  is  insufficient  to  establish  inven- 
tion by  them.     Lowrie  v.  Taylor  and  Taylor, 

C.  D.  1905,  118  O.  G.  1681. 

3294.  Where  the  only  testimony  taken  by 
joint  inventors  upon  the  question  of  the  date 
of  their  invention  is  their  own  depositions, 
Held,  that  the  depositions  of  parties  to  inter- 
ference upon  this  point,  unless  corroborated 
by  independent  circumstances  established  by 
the  evidence,  are  clearly  insufficient  to  prove 
conception  of  the  invention.  (Garrells  v.  Free- 
man, C.  D.  1903,  542,  103  O.  G.  1683,  21  App. 

D.  C.  207.)     *Podlesak  and  Podlesak  v.  Mc- 
lnnerney, C.  D.  190G,  120  O.  G.  2127. 

3295.  It  is  a  general  rule  that  the  unsup- 
ported allegations  of  an  inventor  are  insuffi- 
cient to  establish  either  a  conception  or  a  re- 
duction to  practice;  but  it  does  not  follow 
that  corroborating  testimony  must  extend  to 
every  detail  sought  to  be  established.  Dun- 
bar V.  Schellenger,  1906,  125  O.  G.  348. 

3296.  Where  the  inventor  has  no  definite 
recollection  of  the  time  he  conceived  his  in- 
vention, but  can  only  estimate  the  date  by  the 
filing  of  a  certain  document  which  was  filed 
five  days  after  the  filing  of  the  opposing 
party's  application,  and  in  answer  to  one  ques- 
tion he  placed  his  conception  at  a  few  weeks 
prior  to  the  filing  of  the  document  and  later 
admits  that  before  testifying  he  fixed  the  time 
in  the  affidavit  at  about  one  week,  Held,  that 
the  evidence  is  too  uncertain  to  overcome  the 
filing  date  of  the  opposing  party's  applica- 
tion. *Steinmetz  v.  Thomas,  C.  D.  1908,  136 
O.  G.  479. 

3297.  It  is  well  settled  that  the  uncorro- 
borated testimony  of  the  junior  party  in  in- 
terference is  insufficient  to  overcome  the  pre- 
sumption attaching  to  the  prior  filing  date  of 
the  senior  party.  *Durkee,  Jr.  v.  Winquist 
and  Turnstrom,  C.  D.  1908,  136  O.  G.  229. 

3298.  "Before  proceeding  to  a  consideration 
of  the  case  we  deem  it  proper  to  express  our 


442 


INTERFERENCE,  LI. 


disapprobation  of  the  conduct  of  counsel  in 
filling  the  record  with  immaterial,  irrelevant, 
and  useless  matter.  This  practice,  which  is 
altogether  too  general  in  patent  cases,  entails 
needless  expense  upon  clients  and  much  need- 
less labor  upon  the  tribunals  of  the  patent  of- 
fice as  well  as  this  court,  and  should  be  dis- 
continued. Objections  can,  and  should,  be 
stated  in  a  few  words  and  'vain  repetition'  of 
testimony  avoided."  *Conner  v.  Dean,  C.  D. 
1909,  142  O.  G.  856. 

3299.  Where  certain  witnesses  testify  that 
a  device  claimed  to  be  a  reduction  to  practice 
of  the  invention  operated  in  the  manner  called 
for  in  the  issue,  but  the  testimony  of  the  in- 
ventor is,  unexplained,  in  contradiction  of 
their  testimony.  Held,  that  the  inventor  being 
a  party  to  the  interference  it  was  incumbent 
upon  him  to  testify  clearly  and  explicitly  on 
this  point,  and,  failing  to  do  so,  the  presump- 
tion is  against  him.  *Whitman  v.  King,  C. 
D.  1910,  160  O.  G.  260. 

3300.  The  inventor's  uncorroborated  testi- 
mony that  a  competitive  test  was  held  by  the 
government  on  a  certain  date  is  sufficient  to 
establish  that  fact  in  the  absence  of  any  tes- 
timony to  the  contrary.  Driggs  v.  Schneider, 
C.  D.  1911,  162  O.  G.  269. 

LI.  Vacating  Judgment. 

3301.  A  motion  to  vacate  a  judgment  of  pri- 
ority cannot  be  granted  upon  the  ground  of 
deceit  on  the  part  of  his  attorney  when  it  ap- 
pears that  the  party  bringing  the  motion  as- 
serted in  a  letter  that  he  had  made  no  oppo- 
sition and  asked  the  price  of  his  opponent's 
right.  An  affidavit  of  such  party  that  such 
letter  was  written  at  the  instigation  of  his 
attorney  and  was  copied  from  a  draft  fur- 
nished by  said  attorney  cannot  overcome  the 
presumption  raised  by  the  letter.  Corson  v. 
Houser,  C.  D.  1898,  85  O.  G.  1225. 

3302.  The  discovery  of  new  evidence  in  one 
interference  is  no  reason  for  the  vacation  of 
the  judgment  on  priority  and  setting  new 
times  for  taking  testimony  in  another  merely 
because  in  the  moving  party's  opinion  the  in- 
terferences are  closely  related.  Igleheart 
Brothers  v.  Houston,  Meeks  &  Co.,  C.  D.  1899, 
86  O.  G.  631. 

3303.  A  party  who  voluntarily  fails  to  pros- 
ecute one  interference  because  in  his  opinion 
he  cannot  prevail  in  another  closely-related 
interference  is  bound  by  his  election  and  can- 
not afterward  obtain  a  vacation  of  judgment 


merely  because  he  finds  himself  mistaken  as 
to  that  other  interference.     Id. 

3304.  When  a  prima  facie  case  of  newly- 
discovered  evidence  and  reasonable  diligence 
was  made  out  after  decision  hy  the  examiner 
of  interferences  on  the  question  of  priority 
and  after  appeal  had  been  taken  from  his  de- 
cision, his  jurisdiction  was  restored  for  the 
consideration  of  a  motion  to  vacate  the  deci- 
sion on  priority  and  set  new  times  for  taking 
testimony.     Igleheart  Brothers  v.  Land  et  al., 

C.  D.  1899,  86  O.  G.  632. 

3305.  The  question  as  to  whether  the  show- 
ing warrants  the  vacation  of  the  judgment 
and  setting  new  times  for  taking  testimony  is 
not  up  for  decision,  the  sole  question  being 
whether  it  warrants  the  transmission  of  the 
case  to  the  e.xaminer  of  interferences  for  a 
determination  of  that  question.     Id. 

3306.  The  jurisdiction  of  the  examiner  of 
interferences  will  not  be  restored  for  the  con- 
sideration of  a  motion  to  vacate  the  decision 
on  priority  and  set  new  times  for  taking  testi- 
mony on  the  ground  of  newly-discovered  evi- 
dence where  it  clearly  appears  that  the  moving 
party  did  not  use  reasonable  diligence  either 
in  discovering  the  evidence  or  in  bringing  the 
motion.  Jobes  v.  Roberts  v.  Hauss,  C.  D. 
1899,  86  O.  G.  1805. 

3307.  Where  H.  contended  that  as  O.  per- 
mitted the  limit  of  appeal  from  the  decision  of 
the  examiner  of  interferences  awarding  pri- 
ority to  H.  on  the  record  to  expire  without 
taking  any  proper  action,  the  judgment  had 
become  final,  and  the  commissioner  had  no 
power  to  set  it  aside.  Held,  that  the  commis- 
sioner was  clothed  with  power,  and  jurisdic- 
tion was  restored  to  the  examiner  of  interfer- 
ences to  consider  a  motion  to  vacate  the  judg- 
ment. Osborn  v.  Hotsapillar,  C.  D.  1901,  94 
O.  G.  583. 

3308.  A  decision  signed  "Acting  Examiner 
of  Interferences"  by  an  officer  regularly  as- 
signed to  the  interference  division  will  not 
be  set  aside  as  irregular  upon  the  suggestion 
that  the  examiner  of  interferences  was  pres- 
ent and  on  duty  at  the  time  it  was  signed. 
Butterworth  v.  Boral  and  Kymer  v.  Ecob,  C. 

D.  1902,  101  O.  G.  664. 

3309.  Motion  to  vacate  judgment  on  the 
record  and  permit  the  filing  of  a  preliminary 
statement  denied  where  it  appears  that  the 
failure  to  file  the  statement  before  judgment 
and  within  the  time  fixed  in  notices  from  this 
office  was  due  to  carelessness.  White  v. 
Hewitt  and  Nolen,  C.  D.  1905,  115  O.  G.  1846. 


INTERFERENCE,  UI,  (a),  (b),  (c). 


443 


LII.  Witnesses. 
(a)  Cross-Examination. 

3310.  Where  a  witness  upon  direct  exam- 
ination refuses  to  answer  practically  every 
question  regarding  particular  apparatus  and 
no  questions  are  asked  thereon  about  the  de- 
tailed structure  of  the  apparatus  or  about  the- 
ories, principles,  operations,  or  results,  a  de- 
position on  cross-examination  setting  forth 
such  matters  throughout  fifty  or  more  type- 
written pages  is  prima  facie  bad.  Marconi  v. 
Shoemaker  v.  Fessenden,  C.  D.  1906,  121  O.  G. 
2664. 

3311.  Held,  that  a  party  who  makes  no 
proper  cross-examination  is  not  deprived  of 
any  right  by  an  action  striking  out  his  im- 
proper examination.     Id. 

3312.  Held,  that  cross-examination  of  a  wit- 
ness must  be  limited  by  the  scope  of  the  direct 
examination  of  the  same  witness  and  cannot 
be  based  upon  the  entire  record.    Id. 

3313.  Where  the  direct  examination  of  a 
witness  is  completed  and  after  answering  cer- 
tain questions  upon  cross-examination  he  is 
withdrawn  from  the  stand  on  account  of  sick- 
ness and  his  counsel  refuses  to  take  any  steps 
to  produce  him  again  in  order  that  the  cross- 
examination  may  be  completed,  on  the  ground 
that  he  had  been  sick  for  over  a  year,  had  un- 
dergone several  operations,  and  that  there  was 
no  probability  that  he  would  be  able  to  testify 
at  any  definite  time  in  the  future,  if  at  all, 
Held,  that  in  so  far  as  the  answers  given  on 
direct  examination  were  not  tested  by  cross- 
examination  the  deposition  should  not  be  con- 
sidered. Munster  v.  Ashworth,  C.  D.  1907, 
128  O.  G.  2083. 

3314.  Where  a  witness  after  testifying  on 
his  own  behalf  and  after  answering  a  few 
questions  on  cross-examination  states  that  he 
is  unable  to  withstand  the  strain  of  cross-ex- 
amination and  leaves  the  stand  and  his  coun- 
sel refuses  to  ask  for  an  extension  of  time 
for  taking  testimony  in  order  that  the  witness 
may  be  cross-examined  at  some  time  in  the 
future,  alleging  that  the  witness  is  in  such 
bad  physical  condition  that  there  is  no  pros- 
pect of  his  being  able  to  testify  within  a  year, 
if  at  all.  Held,  that  counsel,  knowing  the  con- 
dition of  the  witness,  should  either  have  re- 
frained from  offering  him  as  a  witness  in  his 
own  behalf  or,  having  done  so,  should  have 
consented  to  some  reasonable  postponement. 
Under   such   circumstances  the  direct  exam- 


ination should  have  been  excluded  upon  mo- 
tion. *Munster  v.  Ashworth,  C.  D.  1907,  128 
O.  G.  2088. 

3315.  Where  a  party  to  an  interference,  re- 
lying upon  certain  specified  installations  as  a 
reduction  to  practice,  is  asked  upon  cross-ex- 
amination whether  any  other  installations  had 
been  made,  the  question  should  be  answered, 
as  a  wider  range  is  allowable  in  the  cross- 
examination  of  a  party  to  the  proceeding;  but 
if  such  general  questions  were  followed  up  by 
further  questions  clearly  showing  an  intention 
to  elicit  information  relating  to  the  business 
of  such  party  irrelevant  to  the  questions  at 
issue  the  witness  might  well  refuse  to  answer 
under  the  advice  of  counsel.  *Jansson  v. 
Larsson,  C.  D.  1908,  132  O.  G.  477. 

3318.  Where  a  party  wishes  to  cross-exam- 
ine a  witness  before  an  exhibit  machine  in  an- 
other city.  Held,  that  it  is  incumbent  upon  him 
either  to  transport  the  exhibit  to  the  witness 
or  the  witness  to  the  exhibit  and  that  the  tes- 
timony of  such  witness  will  not  be  struck  out 
because  of  the  refusal  of  the  opposing  party 
to  produce  the  witness  for  cross-examination 
in  the  presence  of  the  exhibit.  Keith,  Erick- 
son,  and  Erickson  v.  Lundquist  v.  Lorimer  & 
Lorimer,  C.  D.  1910,  156  O.  G.  798. 

(b)   Compelling  Attendance. 

3317.  The  patent  office  has  no  power  to 
compel  the  attendance  of  witnesses  or  to  en- 
force the  production  of  evidence  of  any  kind. 
(Lindstrom  v.  Lipschutz,  C.  D.  1906.  120  O. 
G.  904 ;  Kelly  et  al.  v.  Park  et  al.,  C.  D.  1897, 
182,  81  O.  G.  1931.)  Bay  State  Belting  Com- 
pany V.  Kelton-Bruce  Manufacturing  Com- 
pany, C.  D.  1907,  127  O.  G.  1580. 

(c)   Compelling    Testimony. 

3318.  This  office  has  no  machinery  for  com- 
pelling a  witness  to  answer  questions.  Lind- 
strom V.  Lipschutz,  C.  D.  1906,  121  O.  G.  1977. 

3319.  The  authority  to  issue  subpoenas  duces 
tecum  was  comprehended  in  the  power  con- 
ferred upon  the  federal  courts  by  the  act  of 
September  24,  1789  (1  Stat,  at  L.,  81,  chap. 
20,  sec.  14,  U.  S.  Rev.  Stat.,  sec.  716,  U.  S. 
Comp.  Stat.,  1901,  p.  580),  to  issue  all  writs 
not  specially  provided  for  by  statute  which 
may  be  necessary  for  the  exercise  of  their 
respective  jurisdictions  and  agreeable  to  the 
practice  and  usages  of  law.  **The  American 
Lithograph  Co.  v.  Werckmeister,  C.  D.  1911, 
169  O.  G.  1187. 


444 


INTERFERENCE,  LII,  (d). 


3320.  Compulsory  production  of  the  books 
of  a  corporate  defendant  under  a  subpoena 
duces  tecum,  served  upon  an  officer  of  the 
corporation  in  an  action  to  recover  the  pen- 
alties prescribed  by  United  States  Revised 
Statutes  (sec.  496.")),  United  States  Compiled 
Statutes,  1901  (p.  3414),  for  printing  and  sell- 
ing copies  of  a  copyrighted  painting,  did  not, 
after  the  change  of  the  rule  as  to  the  incom- 
petency of  parties  as  witnesses  made  by  sec- 
tion 858,  violate  any  of  the  rights  of  the  cor- 
poration under  section  724,  providing  for  the 
production  on  notice  and  motion  of  a  party's 
books  and  papers,  since  this  section  cannot  be 
regarded  as  providing  an  exclusive  procedure. 
**Id. 

3321.  Entries  in  the  books  of  a  party  pro- 
duced in  obedience  to  a  subpoena  duces  tecum 
were  not  rendered  inadmissible  on  the  trial 
by  United  States  Revised  Statutes  (sec.  860), 
United  States  Compiled  Statutes,  1901  (p. 
661),  providing  that  no  discovery  or  evidence 
obtained  from  a  party  or  witness  by  means 
of  a  judicial  proceeding  shall  be  given  in  evi- 
dence or  used  against  him  in  a  criminal  case 
or  in  a  proceeding  to  enforce  a  penalty  or 
forfeiture,  since  these  provisions  manifestly 
refer  to  a  case  where  in  some  prior  judicial 
proceeding  a  discovery  had  been  made  or  tes- 
timony had  been  given  and  the  evidence  so 
obtained  was  sought  to  be  used.    **Id. 

(d)   Credibility  of. 

3322.  Where  B.  testified  first  to  the  effect 
that  on  September  24  he  looked  around  A.'s 
store  to  get  a  box  having  dovetailed  corners 
to  disclose  the  invention  to  A.  and  that  upon 
returning  home  he  made  a  block  in  his  kitchen 
on  the  sink  and  A.  was  present  and  took  notes 
of  B.'s  testimony.  Held,  that  it  is  a  remarkable 
coincidence  that  A.  should  later  testify  that 
he  got  the  conception  from  a  dovetailed  box 
and  should  make  a  block  in  his  kitchen  near 
the  sink.  Blackman  v.  Alexander,  C.  D.  1904, 
113   O.   G.   1703. 

3323.  If  A.'s  statements  are  true,  B.'s  claims 
were  made  fraudulently.  If  B.'s  statements 
are  true,  the  fraud  is  A.'s.  Held,  that  as  it  is 
necessary  to  decide  in  favor  of  one  or  the 
other  the  burden  of  proof  should  not  be  placed 
more  heavily  upon  one  than  upon  the  other. 
Id. 

3324.  Where  an  experienced  operator  is 
given  ample  time  to  test  a  tool  and  uses  it 
under  service  conditions  and  then  recommends 


that  a  similar  tool  be  brought  for  use  upon 
work  for  which  he  is  personally  responsible. 
Held,  that  his  conduct  is  stronger  evidence  of 
his  opinion  of  the  operativeness  of  the  tool 
at  that  time  than  his  testimony  given  after  he 
had  used  a  later  and  improved  device,  that  the 
first  one  was  not  a  "safe  tool,"  and  therefore 
not  a  successful  one.  Double  v.  Mills,  C.  D. 
1904,   112   O.   G.    1747. 

3325.  The  evidence  that  an  exhibit  machine 
was  in  its  present  condition  and  embodied  the 
invention  at  the  date  claimed  for  it  is  very 
weak  which  consists  only  of  the  testimony  of 
the  alleged  inventor  to  that  effect  and  of  two 
witnesses,  one  of  whom  was  proved  utterly 
incompetent  upon  cross-examination  and  the 
other,  who  seems  to  have  only  incidentally 
seen  the  machine  during  construction,  merely 
stating  that  he  cannot  see  any  changes  in  it. 
Paul  V.  Hess,  C.  D.  1904,  113  O.  G.  847. 

3326.  A  decree  of  a  court  of  competent 
jurisdiction  in  a  suit  between  substantially 
the  same  parties  holding  that  D.  was  guilty 
of  fraudulently  misrepresenting  to  the  other 
stockholders  of  the  company  the  sum  that 
had  to  be  paid  M.  for  the  purchase  of  cer- 
tain of  his  inventions  and  that  one  of  his  pres- 
ent witnesses,  who  was  also  an  officer  in  the 
corporation,  had  knowledge  of  this  misrepre- 
sentation and  remained  silent.  Held,  that  the 
credibility  of  these  two  witnesses  is  impeached 
and  their  testimony  necessarily  materially 
weakened.  Mitchell  v.  Dinsmore,  C.  D.  1904, 
113  O.  G.  279. 

3327.  Where  M.  has  utterly  failed  to  prove 
his  case  and  where  some  of  his  witnesses  cor- 
roborate the  testimony  of  D.'s  impeached  wit- 
nesses. Held,  in  the  light  of  other  positive 
testimony  which  is  not  attacked  that  D.  is 
the  original  inventor.     Id. 

3328.  Where  a  party  unfamiliar  with  add- 
ing-machines  was  employed  by  an  adding- 
machine  company  and  claims  that  on  the  very 
ne.xt  day  he  made  an  improvement  on  the  ma- 
chines and  produced  a  sketch  showing  their 
complicated  construction  and  it  appears  from 
the  sketch  itself  that  it  shows  a  form  of  ma- 
chine not  made  by  the  company  until  long 
afterward,  Held,  that  his  claim  is  effectually 
discredited.  Schroeder  v.  Wagely  and  Stocks, 
C.  D.  1905,  118  O.  G.  208. 

3329.  Where  S.  claims  to  have  conceived 
the  invention  in  1898  and  to  have  disclosed 
it  to  his  opponents  at  that  time,  but  he  did 
nothing  in  regard  to  it  for  four  years  and  then 
filed  an  application  as  joint  inventor  with   a 


INTERFERENCE,  LII,  (e),  (f). 


445 


party  he  met  long  afterward,  and  where  he 
filed  his  present  appHcation  only  after  his 
joint  application  was  placed  in  interference 
with  his  present  opponents,  Held,  his  claim 
to  invention  in  1898  is  not  established.     Id. 

3330.  Where  a  party  depends  for  corrobora- 
tion of  his  claims  of  conception  and  disclosure 
of  the  invention  upon  the  testimony  of  his  as- 
signee and  the  character  for  veracity  and  re- 
liability of  the  assignee  are  unimpeached  and 
the  circumstances  afford  no  reason  for  dis- 
believing the  statements  in  the  deposition  of 
the  assignee,  Held,  that  the  corroboration  is 
not  rendered  insufficient  by  the  fact  that  the 
witness  is  the  party's  assignee.  Turnbull  v. 
Curtis,  C.  D.   1906,  120  O.  G.  2442. 

3331.  Where  one  of  the  parties  to  an  in- 
terference testifies  to  a  conversation  between 
him  and  the  other  contestant  relative  to  a  dis- 
closure of  the  invention  by  the  former  to  the 
latter  and  a  clerk  in  the  store  in  which  such 
alleged  conversation  took  place  testifies  to 
precisely  the  same  conversation  twenty  months 
after  it  took  place  and  it  appears  that  at  the 
time  the  conversation  took  place  such  clerk 
was  waiting  upon  a  customer,  the  remarkable 
likeness  in  the  two  versions  under  the  cir- 
cumstances indicates  a  manufactured  story, 
and  the  testimony  is  weakened  rather  than 
strengthened  by  the  attempted  corroboration. 
♦Alexander  v.  Blackman,  C.  D.  1906,  121  O. 
G.  1979. 

3332.  Where  a  witness  falsifies  a  fact  in 
respect  of  which  he  cannot  be  presumed  lia- 
ble to  mistake,  courts  are  bound  "upon  the 
principles  of  law,  morality,  and  justice  to  ap- 
ply the  maxim,  'falstis  in  uiio.  falsiis  in  omni- 
bus.'"    *Id. 

3333.  Where  Curtis's  testimony  to  a  certain 
date  of  conception  was  clearly  corroborated 
by  the  witness  Bradford,  whose  intelligence 
and  capacity  to  understand  and  explain  the 
disclosure  made  by  Curtis  are  apparent,  and 
Bradford,  though  deeply  interested  in  the  re- 
sult, stands  unimpeached.  and  the  few  sur- 
rounding circumstances  that  shed  any  light 
upon  the  question  tend  to  support  Curtis's 
claim  and  none  are  inconsistent  with  it.  Held, 
that  such  claim  is  established.  *Turnbull  v. 
Curtis,  C.  D.  1906,  123  O.   G.  2312. 

3334.  Testimony  of  parties  in  interest,  un- 
corroborated by  circumstances,  or  the  testi- 
mony of  other  witnesses,  unsupported  by  phj-- 
sical  evidence,  of  an  indefinite  character,  af- 
fording no  ground   for  satisfactory  cross-ex- 


amination, and  taken  long  after  the  events 
recited,  may  well  have  been  in  error  as  to 
the  facts  or  intervals  of  time  stated  therein. 
MuUer  v.  The  Schuster  Company,  C.  D.  1906, 
123  O.  G.  996. 

(e)  Failure  to  Call. 

3335.  Where  the  son-in-law  of  A.  is  al- 
leged to  have  made  before  September  24  the 
drawing  in  evidence  and  was  the  first  person 
to  whom  A.  testifies  he  disclosed  the  inven- 
tion and  who  the  record  shows  of  all  persons 
would  be  familiar  with  A.'s  claims  to  origin- 
ality was  not  called  or  his  absence  satisfactor- 
ily accounted  for,  Held,  that  the  failure  to 
call  this  witness  creates  the  presumption  that 
his  testimony  if  produced  would  be  unfavor- 
able, and  this  presumption  is  controlling. 
Blackman  v.  Alexander,  C.  D.  1904,  113  O.  G. 
1703. 

3336.  The  failure  to  call  a  witness  who 
could  clear  up  a  number  of  doubtful  points 
raises  the  inference  that  the  testimony  of  such 
witness  would  be  unfavorable.  Alexander  v. 
Blackman,  C.  D.  1906,  121  O.  G.  1979. 

(f)   IVifc  of  Party. 

3337.  Since  under  the  code  of  laws  for  the 
District  of  Columbia  husband  and  wife  are 
competent  to  testify  for  or  against  each  other 
in  civil  proceedings.  Held,  that  the  wife  of 
one  of  the  parties  to  an  interference  proceed- 
ing is  competent  to  testify  in  his  behalf,  since 
the  trial  of  such  proceeding  takes  place  in 
the  District  of  Columbia.  Patee  v.  Cook, 
C.  D.  1903,  107  O.  G.  835. 

3338.  Quare  whether  the  testimony  of  a 
wife  in  favor  of  her  husband  in  an  interfer- 
ence case  is  admissible  at  all  and  whether  dis- 
closure to  a  wife  is  disclosure  of  an  invention 
to  others  or  to  the  public  in  the  sense  of  the 
patent  law.  *Harter  v.  Barrett,  C.  D.  1905, 
114  O.  G.  975. 

3339.  Held,  that  the  testimony  of  a  wife  as 
to  disclosure  of  an  invention  must  be  rigidly 
scrutinized  and  not  lightly  admitted  as  suffi- 
cient without  some  corroboration  of  its  truth, 
in  view  of  the  difficulty,  often  amounting  to 
impossibility,  of  contradicting  it  or  even  of 
subjecting  it  to  proper  cross-examination.  *Id. 

3340.  Where  the  oral  testimony  of  a  wife 
as  to  disclosure  of  an  invention  is  given  from 
her  unaided  memory  and  is  wholly  uncorro- 
borated  by   other  evidence,   though   the  testi- 


446 


INTERFERING  PATENTS,  I. 


mony  itself  is  specific  and  explicit  enough, 
Held,  such  testimony  insufficient  to  establish 
her  husband's  claim  of  conception  and  disclo- 
sure of  the  invention.    *Id. 

(g)  Refreshing  Memory  by  Documents. 

3341.  It  is  not  necessary  that  documents 
from  which  a  witness  may  have  refreshed  his 
memory  as  to  dates  be  produced  at  the  exam- 
ination ;  but  the  failure  to  do  so  would  often 
cause  the  facts  to  be  regarded  as  of  little 
weight.  When  produced  and  used  to  assist  the 
memory,  they  need  not  be  offered  as  evidence, 
and  in  a  majority  of  instances  they  would  be 
inadmissible  if  offered.  *McCormick  v.  Cleal, 
C.   D.  1898,  83  O.  G.  1514. 

3342.  A  cash-book  an  entry  in  which  is  used 
by  a  witness  to  refresh  his  memory,  need  not 
be  introduced  in  evidence.  *Lowrie  v.  Taylor 
and  Taylor,  C.  D.  1906,  123  O.  G.  1665. 

3343.  Where  a  witness  refers  to  an  entry 
in  a  cash-book,  which  is  not  produced,  as  a 
means  of  refreshing  his  memory  and  no  ob- 
jection to  the  testimony  is  interposed  and  the 
production  of  the  book  was  not  demanded,  the 
testimony  is  admissible.  (Laas  and  Sponen- 
burg  V.  Scott,  ante,  631,  123  O.  G.  352.)     *Id. 

3344.  Where  a  diary  written  in  shorthand 
was  introduced  in  evidence  by  the  inventor 
and  he  read  portions  of  it  into  the  record, 
Held,  that  the  statements  quoted  from  the 
diary  cannot  be  considered  as  evidence  of  the 
facts  therein  set  forth,  although  it  might  have 
been  used  as  a  means  to  refresh  the  witness's 
recollection  or  as  evidence  of  a  past  recollec- 
tion, but  that  in  order  to  be  admissible  on  the 
latter  ground  it  would  have  been  necessary  for 
the  witness  to  give  some  evidence  respecting 
the  time  the  entries  were  made  relative  to 
the  events  recorded  and  to  guarantee  that  the 
record  accurately  represented  his  knowledge 
and  recollection  at  the  time.  Burson  v.  Vogel, 
C.  D.  1906,  135  O.  G.  2361. 

3345.  Where  a  witness  testified  positively 
to  an  alleged  date  and  stated  that  he  was  able 
to  fix  the  date  by  the  daily  work  record  of 
his  company.  Held,  that  it  was  not  necessary 
to  offer  the  record  in  evidence  and  that  the 
record  was  not  admissible  in  evidence  at  all. 
The  entry  could  only  serve  to  refresh  the 
memory  of  the  witness  and  enable  him  to  ex- 
plain why  he  could  fix  the  date  with  certainty, 
but  that  if  counsel  had  been  abundantly  care- 
ful he  would  have  had  the  book  containing 
the  entry  produced  and  submitted  to  the  in- 


spection of  his  opponent.    *Laas  and  Sponen- 
burg  V.  Scott,  C.  D.  1906,  123  O.  G.  352. 

3346.  There  is  no  reasonable  difference  be- 
tween a  statement  made  by  a  witness  fixing  a 
date  by  reference  to  an  original  paper  or  to 
a  regular  business  entry  in  a  book  in  the 
possession  of  a  person  within  the  jurisdiction 
and  one  fixing  it  by  reference  to  something 
calculated  to  fix  it  in  mind  claimed  to  have 
happened  to  him  or  in  the  community  about 
the  same  time.  A  statement  of  the  former 
character  would  be  preferable,  in  the  interests 
of  justice,  for  if  untrue  it  would  ordinarily 
furnish  ample  opportunity  to  completely  dis- 
credit the  witness.    *Id. 


INTERFERING  PATENTS. 

(See  Subsequent  Application;  Reservation 
IN  Application;  Cross  References;  Divi- 
sional Applications;  Double  Patenting.) 

I.  Same  Inventor. 
II.  Different  Inventors. 

I.  Same  Inventor. 

1.  It  is  well  settled  that  claims  in  an  appli- 
cation may  properly  under  certain  circum- 
stances be  rejected  on  a  patent  granted  to 
the  same  party  on  a  copending  application. 
(Ex  parte  Mullen  &  Mullen,  C.  D.  1890,  9, 
50  O.  G.  837.)  Ex  parte  Wellman,  C.  D.  1899, 
86  O.  G.  1986. 

2.  When  claims  are  rejected  on  the  appli- 
cant's prior  patent,  a  review  of  the  facts  in 
the  case  to  determine  the  correctness  of  that 
action  must  be  had  in  the  first  instance  on  ap- 
peal to  the  e,xaminers-in-chief  and  not  on  pe- 
tition.   Id. 

3.  A  patent  disclosing  a  process  and  appa- 
ratus and  claiming  only  the  process  is  no  bar 
to  the  allowance  of  an  application  covering 
the  apparatus  filed  by  the  same  party  within 
two  years  after  the  grant  of  the  patent.  (Ex 
parte  Mullen  &  Mullen,  C.  D.  1890,  9,  .50  O. 
G.  837.)  Ex  parte  Isaacs  &  Speed,  C.  D.  1907, 
130  O.  G.  3717. 

4.  P,  filed  an  application  and  assigned  it  to 
V.  Later  he  filed  a  second  application  for 
the  same  invention  and  assigned  it  to  W.  A 
patent  was  issued  on  the  latter  application. 
Held,  that  this  patent  is  a  bar  to  the  issuance 
of  a  patent  on  the  earlier  application.  *In  re 
Pearsall,  C.  D.  1908,  135  O.  G.  331. 


INVENTIVE  ACT— WHAT  CONSTITUTE. 


447 


IL  DiFPERENT  Inventors. 

5.  Under  the  nature  of  patent  rights  two 
parties  cannot  be  entitled  to  a  patent  for  the 
same  thing,  and  therefore  where  the  law  pro- 
vides that  a  patent  to  one  party  will  be  valid 
it  in  effect  not  only  authorizes  the  office  to 
issue  a  patent  to  such  party,  but  prohibits  the 
issue  of  a  patent  to  any  one  else.  Ex  parte 
Grosselin,  C.  D.  1901,  97  O.  G.  2977. 

6.  Where  it  is  proposed  to  issue  two  pat- 
ents with  the  same  claims  on  the  ground  that 
the  claims  mean  different  things  in  the  two 
cases.  Held,  that  such  a  course  would  be  im- 
proper. Ex  parte  Cutler,  C.  D.  1906,  123  O. 
G.  655. 

_  7.  When  two  patents  for  the  same  inven- 
tion have  been  issued  to  independent  inven- 
tors, the  dates  of  their  respective  inventions 
are,  first,  the  dates  of  the  patents ;  second,  the 
dates  of  applications,  provided  the  application 
sufficiently  describes  the  invention ;  third,  the 
dates  of  actual  reduction  to  practice ;  fourth, 
the  dates  of  conception,  with  this  qualification, 
that  if  either  patentee  seeks  to  carry  the  date 
of  his  invention  back  to  the  date  of  his  con- 
ception he  must  show  reasonable  diligence 
in  adapting  and  perfecting  his  invention,  and 
with  respect  to  this  rule  there  is  no  distinction 
between  simple  and  complicated  inventions. 
d  Automatic  Weighing  Machine  Company  v. 
Pneumatic  Scale  Corporation,  Limited,  C.  D. 
1909,  139  O.  G.  991. 


INTERNATIONAL  CONVENTION. 

1.  The  international  convention  for  the  pro- 
tection of  industrial  property  is  not  effective 
to  give  to  an  applicant  in  this  country  the 
benefit  of  priority  from  the  date  of  his  for- 
eign application.  Butterworth  v.  Boral  and 
Kymer  v.  Ecob,  C.  D.  1901,  97  O.  G.  1596. 

2.  Legislation  by  congress  is  required  to 
render  the  convention  effective  in  reference 
to  the  right  of  priority  arising  from  the  filing 
of  an  application  in  a  foreign  country  for 
the  same  reasons  that  it  is  required  to  entitle 
foreigners  to  file  caveats  in  this  country.     Id. 

3.  The  international  convention  for  the  pro- 
tection of  industrial  property,  concluded  at 
Paris  March  20,  18S3,  is  in  the  nature  of  a 
contract  between  the  parties  and  is  not  self- 
executing.  It  requires  legislation  by  congress 
to  render  it  effective  in  this  country.  ♦Rous- 
seau v.  Brown,  C.  D.  1903,  104  O.  G.  1120. 


4.  The  various  stipulations  of  the  conven- 
tion of  1883  are  of  such  a  character  as  to  re- 
quire a  modification  of  the  statutes  in  this 
country  to  give  them  full  force  and  effect 
*Id. 

5.  The  act  of  March  3,  1897,  amending  sec- 
tions 4886  and  4887  of  the  Revised  Statutes, 
did  not  have  the  effect  of  making  the  conven- 
tion effective  and  giving  a  party  the  benefit 
of  priority  from  the  date  of  his  application 
for  patent  in  a  foreign  country.    *Id. 

6.  An  application  for  a  patent  filed  in  a  for- 
eign office  affords  no  evidence  of  priority  of 
invention  in  an  interference  proceeding  in 
the  patent  office  in  this  country  in  the  absence 
of  legislation  giving  it  that  effect.     *Id. 

7.  Legislation  by  congress  is  required  to 
render  the  convention  effective  in  reference  to 
the  right  of  priority  arising  from  the  filing  of 
an  application  in  a  foreign  country  for  the 
same  reasons  that  it  is  required  to  entitle  for- 
eigners to  file  caveats  in  this  country.  (But- 
terworth v.  Boral  and  Kymer  v.  Ecob,  C.  D. 
1901,  193,  97  O.  G.  1596.)  Rousseau  v.  Brown, 
C.  D.  1903,  103  O.  G.  659. 

8.  When  the  interior  department  was  duly 
advised  that  Germany  had  adhered  to  the  in- 
ternational convention  to  take  effect  May  1, 
1903,  Held,  that  "in  the  absence  of  any  show- 
ing to  the  contrary,  the  patent  office  was  there- 
after justified  in  assuming  that  Germany  was 
in  good  faith  adhering  to  said  convention." 
♦National  Metallurgic  Company,  assignee  of 
Tom  Cobb  King  v.  Whitman  et  al.  Whitman 
V.  Hcarne  et  al.,  C.  D.  1910,  156  O.  G.  1068. 


INVENTIVE   ACT— WHAT    CONSTITUTE. 

(See  Patentability.) 

1.  The  authorities  seem  to  be  conclusive 
upon  the  point  that  a  conception  evidenced 
by  disclosure  and  drawings  does  not  consti- 
tute an  invention  under  the  patent  laws.  (/Au- 
tomatic Weighing  Machine  Co.  v.  Pneumatic 
Scale  Co.,  Ltd.,  C.  D.  1909,  139  O.  G.  991. 

2.  A  mere  conception  of  the  idea  that  a  con- 
struction which  had  been  used  in  one  mechan- 
ism might  be  adapted  to  another  for  accom- 
plishing a  similar  function  does  not  amount 
to  an  invention.  Invention  consists  of  the 
conception  of  an  idea  and  of  means  for  put- 
ting it  in  practice  and  producing  the  desired 
result.  (Burson  v.  Vogel,  C.  D.  1907,  669, 
131  O.  G.  942,  29  App.  D.  C.  388.)  ♦Marder  v. 
Dey  and  Dey,  C.  D.  1909,  143  O.  G.  564. 


448 


INVENTOR,   (a). 


INVENTOR. 

(a)  Death  of. 

(b)  Insane. 

(c)  Name  of. 

(d)  Poverty,  Ignorance,  etc. 

(e)  Rights  of. 

(a)  Death  of. 

—  1.  The  death  of  an  applicant  acts  as  a 
revocation  of  the  power  of  attorney  given  by 
him.  E.x  parte  Woodworth,  C.  D.  1898,  84  O. 
G.  811. 

2.  It  cannot  be  properly  held  that  an  appli- 
cation has  no  standing  before  the  office  be- 
cause the  inventor  is  dead  and  the  executor 
has  not  asserted  his  rights.  The  legal  repre- 
sentatives of  the  deceased  have  the  right  to 
prosecute  the  application,  and  the  mere  fact 
that  they  are  not  known  to  the  office  and  that 
they  have  not  actually  prosecuted  the  case  by 
any  action  on  their  part  cannot  be  considered 
an  abandonment  of  the  application  until  the 
expiration  of  the  two  years  allowed  by  law  for 
amendments.  (Decker  v.  Looseley,  C.  D.  1896, 
106,  77  O.  G.  2140,  and  De  La  Vergne  Refrig- 
erating Co.  V.  Featherstone  et  al.,  C.  D.  1893, 
181,  62  O.  G.  741,  cited.)  Handly  v.  Bradley, 
C.  D.  1899,  89  O.  G.  522. 

3.  Although  an  applicant's  death  may  be 
legally  estal)lished,  his  application  is  a  legal 
pending  application  and  an  interference  can- 
not be  dissolved  upon  the  ground  that  his  ap- 
plication has  no  standing  in  the  office.     Id. 

4.  When  notices  to  a  party  to  file  his  pre- 
liminary statement  had  been  sent  and  the  pre- 
liminary statement  was  not  filed,  but  the  office 
was  notified  that  the  party  was  dead,  the  ex- 
aminer of  interferences  instructed  to  send 
new  notices  setting  a  new  date  for  the  filing 
of  the  preliminary  statement,  and  that  date 
should  be  set  so  as  to  give  an  opportunity 
for  the  appointment  of  an  administrator,  no- 
tices being  sent  to  the  heirs  of  the  deceased. 
Id. 

"  5.  The  examiner  of  interferences  having 
called  the  commissioner's  attention  to  the  fact 
that  no  response  had  been  made  to  the  notices 
sent  under  the  order  of  the  commissioner  in 
the  case  of  Handly  v.  Bradley,  of  July  3,  1899 
(ante,  197,  89  O.  G.  522),  the  examiner  is  di- 
rected to  set  times  for  taking  testimony  and 
to  send  notices  thereof  to  the  assignee  of  the 
part  interest  of  the  deceased  at  the  addresses 
which  have  been   furnished  to  the  office.     If 


the  other  party  closes  his  testimony  and  there 
is  no  testimony  presented  on  behalf  of  the 
deceased,  the  examiner  of  interferences  shall, 
if  proper  motion  is  made,  consider  the  testi- 
mony offered  and  enter  judgment  in  the  case 
accordingly.  Handly  v.  Bradley,  C.  D.  1899, 
89  O.  G.  524. 

6.  Where  a  case  was  allowed  February  8, 
1900,  and  notice  of  allowance  was  sent  to 
the  attorney  of  record  and  the  final  fee  was 
not  paid  within  the  six  months,  but  on  the 
last  day  on  which  the  payment  could  have 
been  made,  certified  copies  of  letters  testa- 
mentary, showing  that  the  inventor  was  dead 
and  that  an  administrator  was  appointed,  were 
filed,  together  with  a  request  that  the  case  be 
withdrawn  from  issue  and  notice  of  allow- 
ance sent  to  the  administrator.  Held,  that  the 
request  should  be  denied.  Ex  parte  Deeter, 
C.  D.  1900,  93  O.  G.  190. 

7.  Held,  further,  that  the  administrator 
takes  the  place  of  the  inventor  in  the  prosecu- 
tion of  the  application,  and  a  notice  to  the 
inventor  is  binding  upon  the  administrator 
afterwards  appointed.  The  death  of  the  in- 
ventor and  the  appointment  of  an  adminis- 
trator do  not  affect  the  status  of  the  case  as 
a  pending  application.    Id. 

8.  Held,  further,  that  the  application  has 
been  forfeited  by  reason  of  the  failure  to  pay 
the  final  fee  within  six  months  after  the  no- 
tice of  allowance.     Id. 

9.  On  March  10,  1900,  there  was  received 
in  the  patent  office  an  application  duly  exe- 
cuted on  February  23,  1900,  by  Lewis,  as  in- 
ventor of  the  subject-matter  described  there- 
in. After  the  application  was  filed  it  came 
to  the  notice  of  the  office  that  the  inventor 
died  on  March  1,  1900.  Held,  that  as  the  ap- 
plication was  not  made  by  the  party  author- 
ized by  the  statutes  and  rules  of  the  office  to 
make  it,  is  should  be  stricken  from  the  files. 
Ex  parte  Lewis,  C.  D.  1900,  93  O.  G.  1311. 

10.  The  statute  and  the  rule  require  that 
■  the  application  should  be  made  by  the  execu- 
tor or  administrator  when  an  inventor  dies 
before  an  application  is  made,  and  the  words 
"applying  for"  and  "made  by"  are  construed 
to  mean  the  actual  making  or  filing  of  the  ap- 
plication in  the  patent  office,  and  not  to  mean, 
as  contended  for,  the  execution  of  the  appli- 
cation papers  which  are  deposited  in  the  office. 
Id. 

^-  11.  The  fact  that  the  application  was  as- 
signed before  it  was  filed,  and  before  the  in- 
ventor died,  does  not  seem  to  change  the  situ- 


■"): 


INVENTOR,  (b),  (c). 


440 


ation,  as  the  statute  is  positive  on  the  subject 
that  only  an  executor  or  administrator  can 
apply  for  a  patent  in  the  event  of  the  death  of 
the  inventor.     Id. 

— J2.  Where  after  signing  the  petition,  specifi- 
cation, and  oath  the  inventor  dies  before  the 
papers  are  deposited  in  the  patent  office,  Held, 
that  it  is  not  necessary  for  the  administrator 
to  prepare  new  papers  to  constitute  the  ap- 
plication. Ex  parte  Jones,  C.  D.  1903,  103  O. 
G.  228. 

—  13.  Where  an  application  executed  by  the 
inventor  is  filed  after  his  death  and  the  draw- 
ing is  signed  by  the  attorney  appointed  by 
the  inventor.  Held,  that  it  is  to  be  presumed 
that  the  drawing  was  signed  before  the  death 
of  the  inventor  and  while  the  attorney  had 
power  to  act.    Id. 

---  14.  While  the  death  of  the  inventor  oper- 
ates to  revoke  a  power  of  attorney  given  by 
him,  it  does  not  render  null  and  void  acts 
done  by  him  or  by  his  attorney  before  his 
death.  Ex  parte  Jones,  C.  D.  1903,  103  O.  G. 
228. 

15.  Where  after  the  death  of  the  inventor 
the  assignee  of  the  entire  interest  appoints  an 
attorney  to  prosecute  the  case.  Held,  that  the 
power  of  attorney  should  be  accepted  and  the 
case  acted  upon.  Ex  parte  Wick,  C.  D.  1905, 
117  O.  G.  902. 

(b)  Insane. 

16.  The  deeds  and  contracts  made  by  insane 
persons  before  they  are  adjudged  insane,  but 
within  the  period  overreached  by  the  finding 
of  the  jury,  are  not  necessarily  void.  (Hughes 
V.  Jones,  116  N.  Y.  67;  Van  Deusen  v.  Sweet, 
.51  N.  Y.  378;  Banker  v.  Banker,  63  N.  Y. 
409.)  Ex  parte  Wurtz,  C.  D.  1906,  123  O.  G. 
320. 

17-  Where  finding  of  a  jury  is  filed  adjudg- 
ing the  inventor  insane  at  the  time  his  assign- 
ment of  the  invention  was  executed  and  a  peti- 
tion is  filed  that  the  assignment  be  disregarded 
by  the  patent  office,  Held,  that  the  finding  of 
the  jury  does  not  amount  to  a  determination 
of  the  validity  of  the  assignment  and  that 
until  the  assignment  has  been  set  aside  by  a 
competent  tribunal  the  office  must  give  full 
effect  thereto.    Id. 

18.  Where  withdrawal  of  an  application  for 
patent  is  requested  on  the  ground  that  the  in- 
ventor is  insane,  or  it  is  requested  that  the 
assignee  of  record  be  not  recognized  on  the 
same  ground,  and  a  certified  copy  of  proceed- 
29 


ings  before  a  chancery  court  is  filed,  where- 
undcr  the  inventor  was  adjudged  to  be  of  un- 
sound mind.  Held,  that  the  question  presented 
is  a  quasi-judicial  one,  the  duty  of  deciding 
which  by  law  devolves  upon  the  commissioner 
of  patents,  and  that  the  Secretary  of  the  In- 
terior has  no  supervisory  jurisdiction  by  ap- 
peal or  otherwise,  fin  re  Wurtz,  Jr.,  C.  D. 
1906,  123  O.  G.  320. 

(c)  Name  of. 

'  19.  Where  the  first  name  of  the  applicant 
as  given  in  the  papers  of  the  case  appears  to 
be  an  abbreviation.  Held,  that  a  requirement 
for  a  statement  of  the  full  name  or  an  affi- 
davit that  the  name  as  given  is  the  full  name 
is  proper  and  should  be  insisted  upon.  Ex 
parte  Smith  and  Kimble,  C.  D.  1901,  97  O. 
G.  2533. 

20.  The  word  "Fred"  is  a  common  abbrevia- 
tion for  many  longer  names,  and  its  use  for 
this  purpose  is  so  well  understood  and  so 
universal  that  the  presumption  is  warranted 
in  a  particular  case  that  it  is  used  as  an  ab- 
breviation until  the  contrary  is  shown.     Id. 

21.  Where  the  applicant's  first  name  as 
signed  to  the  papers  as  Frank,  Held,  that  he 
should  not  be  required  to  file  an  affidavit  that 
Frank  is  his  full  first  name.  Ex  parte  Moehn, 
C.  D.  1903,  106  O.  G.  995. 

^"22.  Where  different  forms  of  the  applicant's 
name  appear  in  the  preamble  and  signature  to 
the  specification,  one  of  them  presumably  a 
corruption  or  nickname.  Held,  that  an  affidavit 
should  be  required  stating  which  is  the  cor- 
rect form  of  the  applicant's  name.  Where 
the  incorrect  form  appears  in  the  preamble, 
correction  should  be  made  by  amendment. 
Where  the  abbreviated  form  or  nickname  ap- 
pears in  the  signature,  the  patent  may  issue 
after  the  filing  of  the  affidavit  above  referred 
to.  Ex  parte  Clark,  C.  D.  1906,  124  O.  G. 
9in. 

23.  The  name  "Ray"  is  commonly  used  as 
a  full  Christian  name,  and  no  affidavit  should 
be  required  in  connection  therewith.  Ex  parte 
Faulkner,  C.  D.  1907,  128  O.  G.  886. 

24.  An  application  was  filed  in  the  name 
of  a  company.  Subsequently  the  name  of  the 
company  was  changed  and  substitute  papers 
were  filed  setting  forth  that  the  latter  com- 
pany was  the  owner  of  the  mark.  Held,  that 
such  papers  should  not  be  entered.  Ex  parte 
Certain  Cure  Company,  C.  D.  1909,  147  O.  G. 


450 


JUDICIAL  NOTICE. 


25.  Where  after  filing  an  application  the 
name  of  the  applicant  company  was  changed 
and  an  application  was  filed  under  the  new 
name,  Held,  that  the  fee  paid  in  first  applica- 
tion cannot  be  transferred  to  the  later  appli- 
cation.    Id. 

(d)   Poverty,  Ignorance,  etc. 

26.  Mere  poverty  cannot  excuse  an  absence 
of  all  effort  in  regard  to  an  invention  for  a 
period  of  six  years.  Petrie  v.  De  Schweinitz, 
C.  D.  1902,  99  O.  G.  446. 

27.  F.  conceived  the  invention  in  Septem- 
ber, 1900,  and  disclosed  it  in  September,  1903, 
but  did  nothing  toward  reducing  it  to  prac- 
tice until  April,  1904.  C.  conceived  the  in- 
vention in  January,  1904,  and  reduced  it  to 
practice  in  the  following  March.  The  excuse 
offered  by  F.  for  his  delay  was  that  he  was 
too  busy  earning  his  living  to  attend  to  it, 
and,  moreover,  he  did  not  have  the  means 
to  reduce  it  to  practice  unless  he  borrowed 
the  money,  which  he  did  not  want  to  do.  Held, 
that  F.  was  lacking  in  diligence,  it  being  shown 
by  the  evidence  that  subsequent  to  his  con- 
ception he  borrowed  $3,000  with  which  to  en- 
gage in  a  venturesome  undertaking,  while  a 
small  amount  of  money  would  have  enabled 
him  to  construct  the  invention.  *Feinberg  v. 
Cowan,  C.  D.  1907,  128  O.  G.  889. 

28.  A  claim  by  McA.  of  poverty  as  an  ex- 
cuse for  failure  to  reduce  to  practice  is  not 
sustained  by  evidence  showing  that  it  was  not 
until  six  months  after  his  business  was  es- 
tablished that  he  could  afford  to  move  from 
a  place  for  which  the  rental  was  eleven  dollars 
per  month  to  a  place  for  which  the  rental  was 
thirty-five  dollars  per  month,  where  it  ap- 
peared that  the  old  place  was  retained  and 
business  carried  on  at  both  places  for  about 
three  months  before  his  opponent  entered  the 
field ;  nor  does  the  fact  that  he  sustained  a 
financial  loss  by  the  peculation  of  an  employee 
affect  the  question  where  such  loss  occurred 
some  months  after  the  beginning  of  the  period 
to  be  covered  by  the  showing.  Id.  McArthur 
V.  Mygatt,  C.  D.  1908,  132  O.  G.  1585. 

29.  A  petition  that  a  rule  be  issued  against 
an  opposing  party  to  show  cause  why  it  should 
not  be  held  that  he  has  abandoned  his  inven- 
tion and  that  petitioner  be  permitted  to  offer 
testimony  upon  such  question  will  not  be  en- 
tertained under  the  commissioner's  supervi- 
sory authority  where  petitioner  has  other 
remedies    and    is,    in    fact,    pursuing   another 


remedy  before  the  examiner  of  interferences. 
Barber  v.  Wood,  C.  D.  1908,  132  O.  G.  1588. 

30.  That  a  party  had  not  the  means  to  cm- 
ploy  counsel  and  was  ignorant  of  the  rules  of 
practice  is  not  a  sufficient  excuse  for  waiving 
the  requirements  thereof.  Mattice  v.  Lang- 
worthy,  C.  D.  1909,  140  O.  G.  507. 

(e)  Rights  of. 

31.  While  congress  has  prescribed  the  mode 
by  which  the  exclusive  right  of  an  inventor 
in  his  invention  may  be  secured,  yet  there  is 
no  property  right  in  such  invention  until  a 
patent  be  issued  therefor.  *Christensen  v. 
Noyes,  C.  D.  1900,  90  O.  G.  227. 

32.  By  a  well-established  rule  of  the  patent 
law  the  inventor  is  entitled  to  all  the  uses  to 
which  his  invention  can  clearly  be  put,  no 
matter  whether  he  had  conceived  the  idea  of 
the  use  or  not.  *Rosell  v.  Allen,  C.  D.  1900, 
92  O.  G.  1036. 

33.  A  patent  constitutes  a  contract,  but  no 
vested  right  of  which  the  applicant  for  patent 
cannot  be  deprived  is  acquired  under  the  pre- 
liminary proceedings  leading  to  its  issuance, 
and  a  statute  passed  while  an  application  is 
pending  will  apply  to  such  a  case  as  well  as 
to  cases  filed  after  its  passage  unless  it  es- 
pecially provides  for  the  protection  of  pend- 
ing cases.  *De  Ferranti  v.  Lindmark,  C.  D. 
1908,  134  O.  G.  515. 


JUDICIAL  NOTICE. 

1.  For  the  purpose  of  ascertaining  the  state 
of  the  art  when  it  concerns  a  matter  of  gen- 
eral interest  the  court  may  take  judicial  no- 
tice of  what  is  disclosed  by  its  own  records 
in  a  previous  case  involving  an  invention  ap- 
pertaining to  the  same  art.  d  Cushman  Paper 
Box  Machine  Company  v.  Goddard  et  al.,  C. 
D.  1899,  88  O.  G.  2410. 

2.  The  office  is  bound  to  take  notice  of  the 
decisions  of  the  court  and  may  base  its  ac- 
tions upon  the  findings  of  facts  contained 
therein.  Ex  parte  Tournier,  C.  D.  1904,  108 
O.  G.  798. 

3.  Under  the  provisions  of  section  893, 
Revised  Statutes,  this  office  must  take  judi- 
cial notice  of  foreign  patents  where  copies 
have  been  furnished  it  by  the  foreign  govern- 
ments and  they  are  among  the  records  in  this 
office.  Robin  v.  Muller  and  Bonnet,  C.  D. 
1904,  108  0.  G.  292. 


JURISDICTION,  I,  II,  (a). 


451 


4.  The  process  of  taking  judicial  notice  docs 
not  necessarily  imply  that  the  judge  at  the 
moment  actually  knows  and  feels  sure  of  the 
truth  of  the  matter  submitted.  It  merely  re- 
lieves the  party  from  offering  evidence,  be- 
cause the  matter  is  one  which  the  judge  either 
knows  or  can  easily  discover.  *Ball  v.  Flora, 
C.  D.  1006,  121   O.  G.  2668. 

5.  The  United  States  Census  Reports  con- 
stitute matter  of  which  judicial  notice  may 
properly  be  taken,  and  such  judicial  notice  may 
be  taken  on  appeal  when  the  lower  tribunals 
fail  to  do  so.  The  Geo.  B.  Sprague  Cigar  Co. 
and  The  Wing  Cigar  Co.  v.  T.  M.  Kildow 
Cigar  Co.,  C.  D.  1910,  155  O.  G.  1041. 

6.  Judicial  notice  will  not  be  taken  of  the 
laws  of  foreign  countries.  Latour  v.  Winter 
and  Eichberg,  C.  D.  1910,  156  O.  G.  537. 

7.  Judicial  notice  will  not  be  taken  of  the 
laws  of  a  foreign  country.  *Winter  and  Eich- 
berg V.  Latour,  C.  D.  1910,  157  O.  G.  200. 


JURISDICTION. 

1.  Assistant  Commissioner. 
II.  Commissioner. 

(a)  In  General. 

(b)  Supervisory  Authority. 

III.  Secretary  of  the  Interior. 

IV.  Federal  Courts. 

(a)  In   General. 

(b)  Circuit  Court  of  Aj't'cals. 

V.  Court  of   Appeals  of   the   District  of 
Columbia. 
VI.  United  States  Supreme  Court. 

I.  Assistant  Commissioner. 

1-  Under  the  act  of  July  11,  1890,  and  subse- 
quent statutes,  providing  that  the  assistant 
commissioner  of  patents  shall  perform  such 
duties  pertaining  to  the  office  of  the  commis- 
sioner as  may  be  assigned  to  him  by  the  com- 
missioner, without  specifying  what  the  du- 
ties so  assigned  may  be,  the  commissioner, 
in  the  due  administration  of  the  af- 
fairs of  his  office,  is  empowered  to  determine 
what  authority  he  has  in  the  premises  and  a 
mandamus  will  not  lie  to  control  his  action. 
a  United  States,  ex  rel.  Stapleton  v.  Duell, 
Commissioner  of  Patents,  C.  D.  1900,  93  O.  G. 
2532. 

2.  Where  on  appeal  from  the  decision  of  the 
examiners-in-chief  of  the  patent  office  to  the 
commissioner,  the  commissioner  referred  the 
case    to    the    assistant    commissioner    for    his 


consideration  and  determination,  although  the 
commissioner  was  present  and  engaged  in 
other  official  duties,  and  the  assistant  commis- 
sioner heard  and  determined  the  case  and 
thereafter  the  commissioner  declined  to  re- 
hear the  case.  Held,  that  a  petition  for  writ 
of  mandamus  will  not  lie  to  compel  the  com- 
missioner to  hear  the  case,     a  Id. 

3.  The  assistant  commissioner  has  author- 
ity vested  in  him  by  congress  to  hear  and  de- 
cide cases  appealed  to  the  commissioner  of 
patents  when  they  are  assigned  to  him  by  the 
commissioner,  and  a  mandamus  will  not  lie 
to  compel  the  commissioner  to  decide  such 
cases  in  person.  *United  States  of  America, 
ex  rel.  Stapleton  v.  Duell,  Commissioner  of 
Patents,  C.  D.  1001,  95  O.  G.  1049. 

4.  The  mere  fact  that  an  appeal  is  taken  to 
the  commissioner  in  person  does  not  prevent 
the  assignment  of  that  case  to  the  assistant 
commissioner  for  decision.  The  mere  form 
in  which  the  appeal  is  given  cannot  deprive 
the  assistant  commissioner  of  jurisdiction.  *Id. 

--'  5.  Where  certain  of  the  appealed  claims 
stand  rejected  on  a  British  patent  to  Wein- 
wurm  and  it  is  contended  by  appellants  that 
one  step  of  the  process  is  not  disclosed  in 
said  patent,  but  the  assistant  commissioner 
found  that  Weinwurm's  United  States  appli- 
cation disclosed  said  step  and  it  is  conceded 
that  the  disclosures  in  the  application  and  pat- 
ent are  identical.  Held,  that  the  question  of 
the  disclosure  in  the  patent  is  res  adjudicata, 
since  no  appeal  lies  from  the  assistant  com- 
missioner to  the  commissioner.  Ex  parte 
Wickers  and  Furlong,  C.  D.  1906,  358,  124  O. 
G.  1521. 

II.  Commissioner. 
(a)  In  General. 

6.  .\s  the  statute  has  imposed  upon  the  com- 
missioner of  patents  the  superintending  or 
performing  of  all  duties  relating  to  the  grant- 
ing and  issuing  of  patents,  any  rule  that 
would  prevent  the  commissioner  from  exer- 
cising such  power  would  be  invalid,  .'\nderson 
&  Dyer  v.  Lowry,  C.  D.  1899,  89  O.  G.  1861. 

7.  It  being  impossible  for  the  commissioner 
to  "perform  all  duties  respecting  the  granting 
and  issuing  of  patents,  that  fact  does  not  re- 
lieve him  from  the  duty  of  superintendence, 
and  he  has  no  power  to  make  a  rule  which 
would  prevent  him  from  performing  his  statu- 
tory duties.    Id. 


452 


JURISDICTION,  II,  (b).  III. 


8.  As  one  of  the  instrumentalities  desig- 
nated by  congress  in  execution  of  the  power 
granted  the  office  of  commissioner  of  patents 
was  created,  and  though  he._is  ^n  executive 
office,  matters  in  the  disposal  of  which  he  ex- 
ercises functions  judicial  in  their  nature  may 
properly  be  brought  within  the  cognizance  of 
the  courts.  **United  States  ex  rel.  Bernardin 
V.  Duell,  Commissioner  of  Patents,  C.  D. 
1899,  80  O.  G.  995. 

9.  In  deciding  whether  or  not  a  patent  shall 
issue  the  commissioner  acts  on  evidence,  finds 
facts,  applies  the  law,  and  decides  questions 
affecting  not  only  public  but  private  interests, 
and  so  as  to  reissues  or  extensions  or  inter- 
ferences between  contesting  claimants.  In  all 
this  he  exercises  judicial  functions.  (Butter- 
worth  V.  Hoe,  C.  D.  1884,  429,  29  O.  G.  615, 
112  U.  S.  50,  cited.)     **Id. 

10.  Where  it  was  sought  to  show  that  the 
commissioner  of  patents  had  no  authority  to 
refuse  a  patent  when  the  primary  examiner 
had  held  the  alleged  invention  to  be  patentable 
and  had  put  the  application  in  interference 
with  another  case,  Held,  that  it  is  not  compe- 
tent for  the  court  of  appeals  for  the  District 
of  Columbia  to  go  behind  the  records  in  the 
case  before  it  and  review  what  had  been  done 
in  another  and  distinctly  independent  proceed- 
ing, and  that  the  court  has  no  right  to  review 
or  supervise  the  administrative  action  of  the 
commissioner.  *In  re  Locke,  C.  D.  1901,  94 
O.  G.  432. 

11.  Held,  further,  that  if  the  commissioner 
had  no  authority  to  reverse  a  decision  of  a 
primary  examiner  made  before  a  declaration 
of  interference  the  remedy  must  be  found 
otherwise  than  by  appeal  to  the  court  of  ap- 
peals.   *Id. 

12.  The  commissioner  of  patents  is  the  offi- 
cial head  of  a  great  and  important  public  of- 
fice, and  has  the  power  to  institute  investi- 
gations into  the  conduct  of  his  office  general- 
ly, with  a  view  to  the  efficiency  of  the  service 
and  the  eradiction  of  corrupt  practice,  if  such 
are  found  to  exist.  The  manner  in  which  such 
investigation  shall  be  conducted  is  a  matter 
within  his  discretion,  and  no  court  is  vested 
with  supervisory  authority  over  him.  *Moore, 
Commissioner  of  Patents  v.  Heany,  The 
Heany  Company,  and  the  Heany  Lamp  Co., 
C.  D.  1909,  149  O.  G.  831. 

(b)  Supervisory   Authority. 

13.  The  commissioner  should  not  refuse  in 
a  proper  case  to  exercise  his  supervisory  pow- 


er, and  it  would  be  nonfeasance  for  him  to 
refuse.  The  courts  which  have  appellate  jur- 
isdiction over  the  patent  office  have  more  than 
once  held  that  the  commissioner  may  refuse 
patents,  even  after  favorable  decision  by  sub- 
ordinates, under  his  general  supervisory 
power.  Anderson  and  Dyer  v.  Lowry,  C.  D. 
1899,  89  O.  G.  1861. 

14.  The  reserve  supervisory  power  of  the 
commissioner  should  be  used  in  the  treatment 
of  cases  of  the  class  to  which  the  present  one 
belongs  only  where  some  extraordinary  reason 
for  such  action  is  disclosed.     Id. 

15.  The  commissioner  will  exercise  his  su- 
pervisory authority  under  Rule  213  only  under 
extraordinary  circumstances.  This  rule  by  its 
terms  applies  only  where  other  rules  are  in- 
applicable and  is  not  intended  as  a  means  for 
evading  the  requirements  of  other  rules. 
Hicks  V.  Costello,  C.  D.  1903,  103  O.  G.  1163. 

16.  The  commissioner  will  exercise  his  gen- 
era! supervisory  authority  to  revise  a  favor- 
able decision  upon  the  right  of  a  party  to  make 
the  claims  only  in  case  of  an  obvious  mistake. 
Woods  v.  Waddell,  C.  D.  1903,  106  O.  G.  2017. 

17.  Held,  that  the  commissioner  has  gen- 
eral jurisdiction  over  all  cases  pending  in  the 
patent  office,  except,  perhaps,  so  far  as  juris- 
diction for  particular  purposes  may  reside  in 
particular  tribunals,  and  he  has  authority  to 
recall  the  jurisdiction  given  to  the  primary 
examiner  under  Rule  126  and  to  restore  jur- 
isdiction to  the  examiner  of  interferences. 
Brown  v.  Hodgkinson,  C.  D.  1906,  123  O.  G. 
2973. 

III.  Secretary  of  the  Interior. 

18.  While  the  commissioner  of  patents  is 
an  executive  officer  and  subject  in  administra- 
tive or  executive  matters  to  the  supervision 
of  the  Secretary  of  the  Interior,  his  actions 
in  deciding  patent  cases  are  essentially  judi- 
cial in  their  nature  and  not  subject  to  review 
by  the  executive  head,  an  appeal  to  the  courts 
having  been  provided  for.  (Butterworth  v. 
Hoe,  C.  D.  18S4,  429,  29  O.  G.  615,  112  U.  S. 
50,  cited.)  **United  States  ex  rel.  Bernardin 
v.  Duell,  C.  D.  1899,  86  O.  G.  995. 

19.  The  different  statutes  show  that  in  the 
gradual  development  of  the  policy  of  congress 
in  dealing  with  the  subject  of  granting  patents 
the  recognition  of  the  judicial  character  of 
the  questions  involved  became  more  and  more 
pronounced.     **Id. 

20.  The  general  powers  of  discretion  and 
superintendence  given  by  law  to  the  Secretary 


JURISDICTION,  IV,  (a),  (b). 


453 


of  the  Interior  over  the  several  bureaus  of 
the  Interior  Department  do  not  have  the  same 
application  to  the  patent  office  as  to  the  gen- 
eral land  office,  the  pension  office,  and  the  In- 
dian office,  for  the  reason  that  congress  in 
the  one  case  has  provided  another  and  ex- 
clusive manner  of  correcting  errors  in  the  de- 
cisions of  the  commissioner,  while  in  land, 
pension,  and  Indian  matters  no  such  other  or 
exclusive  remedy  is  provided.  fPoole  v. 
Avery,  C.  D.  1899,  87  O.  G.  337. 

IV.  Fr.nERAi.   Courts. 
(a)  In  General. 

21.  The  provisions  in  the  judiciary  act  of 
1887-8  that  no  civil  suit  of  which  federal 
courts  have  jurisdiction  concurrently  with  the 
courts  of  the  several  states  shall  he  brought 
against  any  person  in  any  other  district  than 
that  whereof  he  is  an  inhabitant  does  not  apply 
to  patent  suits,  and  hence  prior  to  the  act  of 
March  3,  1897,  defining  the  jurisdiction  of  the 
federal  courts  in  patent  suits,  a  suit  for  in- 
fringement by  a  citizen  of  a  state  of  the  union 
could  be  brought  in  any  district  where  valid 
service  could  be  made  upon  the  defendant. 
d  Westinghouse  Air  Brake  Company  v.  Great 
Northern  Railway  Company  et  al.,  C.  D.  1898, 
85  O.  G.  455. 

22.  The  act  of  March  3,  1897,  defining  the 
jurisdiction  of  the  federal  courts  in  patent 
suits  and  authorizing  the  bringing  of  such 
suits  in  the  district  of  which  defendant  is  an 
inhabitant  or  in  which  he  "shall  have  com- 
mitted the  acts  of  infringement  and  have  a 
regular  established  place  of  business,"  did  not 
repeal  prior  statutes,  so  as  to  oust  the  courts 
of  jurisdiction  in  pending  cases  not  falling 
within  the  jurisdictional  limits  prescribed  in 
the  new  act.    d  Id. 

23.  Where  the  defendant  gave  to  the  com- 
plainant an  exclusive  license  under  his  patent 
and  subsequently  gave  a  license  to  a  third 
party  in  the  same  territory,  alleging  that  the 
first  license  is  void  for  failure  to  comply  with 
its  terms.  Held,  that  a  bill  to  recover  dam- 
ages for  infringement  and  for  an  injunction 
raises  a  question  under  the  patent  laws  which 
is  within  the  jurisdiction  of  the  United  States 
courts  and  is  not  merely  a  question  of  con- 
tract. **Excelsior  Wooden  Pipe  Company  v. 
Pacific  Bridge  Company  et  al.,  C.  D.  1902,  99 
O.  G.  2102. 

24.  To  constitute  an  action  arising  under  the 
patent  laws  of  the  United  States,  the  plaintiff 


must  set  up  some  right  title,  or  interest  under 
the  patent  laws,  or  at  least  make  it  appear  that 
some  right  or  privilege  will  be  defeated  by 
one  construction  or  sustained  by  the  opposite 
construction  of  those  laws.    **Id. 

25.  Before  it  can  be  held  that  the  allegations 
of  the  bill  oust  the  jurisdiction  of  the  United 
States  court  it  must  at  least  appear  that  the 
plaintiff  has  another  remedy  by  an  action  in 
a  state  court,  and  where  an  action  in  that 
court  would  be  inadequate  or  would  involve 
questions  under  the  patent  law  jurisdiction  of 
the  United  States  court  is  not  ousted.    **Id. 

26.  In  order  to  give  jurisdiction  to  the  fed- 
eral court  under  the  judiciary  act  of  1891  on 
the  ground  that  one  of  the  parties  is  a  citi- 
zen of  a  foreign  state,  it  is  not  necessary  to 
make  the  averment  of  alienage  if  the  aver- 
ment as  to  citizenship  shows  him  to  be  an 
alien.  **Hennessy  et  al.  v.  Richardson  Drug 
Company,  C.  D.  1903,  103  O.  G.  1681. 

27.  Where  the  complainants  describe  them- 
selves as  "all  of  Cognac  in  France,  and  citi- 
zens of  the  republic  of  France,"  Held,  a  suffi- 
cient averment  of  alienage  to  give  jurisdic- 
tion to  the  federal  court.     **Id. 

28.  The  action  by  the  owner  of  a  judgment 
recovered  against  a  corporation  for  infringe- 
ment of  a  patent  to  charge  the  directors  of 
such  corporation  with  payment  of  the  judg- 
ment on  the  ground  that  they  were  joint  tres- 
passers with  the  corporation  is  not  within 
the  jurisdiction  of  the  federal  court  as  a  suit 
upon  a  patent  nor  as  an  action  ancillary  to 
the  judgment  in  the  former  suit,  and  unless 
there  is  diversity  of  citizenship  such  court  is 
without  jurisdiction.  **H.  C.  Cook  Company 
V.  Beecher  et  al.,  C.  D.  1910,  155  O.  G.  308. 

(b)   Circuit  Court  of  Appeals. 

29.  Judgments  and  decrees  of  the  circuit 
court  of  appeals  in  all  cases  arising  under  the 
patent  laws  and  under  the  criminal  laws  are 
final  and  therefore  a  writ  of  error  from  the 
supreme  court  in  such  cases  cannot  be  main- 
tained. **Cary  Manufacturing  Company  v. 
Acme  Flexible  Clasp  Company,  C.  D.  1903, 
102  O.  G.  623. 

30.  Where  a  party  might  be  entitled  to  come 
directly  to  the  supreme  court  from  a  judg- 
ment involving  constitutional  rights.  Held, 
that  if  he  does  not  do  so  and  carries  his  case 
to  the  circuit  court  of  appeals  he  must  abide 
by  the  judgment  of  that  court.     **Id. 


434 


LABELS  AND  PRINTS,  1.  U,  (a). 


V.  Court  of  Appeals  of  the  District  of  Co- 
lumbia. 

31.  The  court  of  appeals  has  no  jurisdic- 
tion to  consider  an  appeal  from  a  decision  of 
the  commissioner  of  patents  which  is  not  a 
final  order,  and  such  an  appeal  will  be  dis- 
missed. *The  Union  Distilling  Co.  v.  Schnei- 
der, C.  D.  1907,  129  O.  G.  2503. 

32.  "The  jurisdiction  of  this  court  to  enter- 
tain appeals  from  the  commissioner  of  pat- 
ents is  limited  to  two  classes  of  decisions, 
namely,  a  fmal  rejection  of  an  application  for 
a  patent,  and  a  final  award  of  priority  to  one 
of  the  parties  in  an  interference  case.  (In  re 
FuUager,  C.  D.  1909,  270,  138  O.  G.  259,  32 
App.  D.  C.  222.)"  *Cosper  v.  Gold  and  Gold, 
C.  D.  1910,  151  O.  G.  194. 

33.  By  the  act  creating  the  court  of  appeals 
of  the  District  of  Columbia  (27  Stat.,  434) 
it  was  given  jurisdiction  to  "affirm,  reverse  or 
modify,"  on  appeal,  any  final  order,  judgment, 
or  decree  of  the  supreme  court  of  the  district, 
and  this  provision  clothes  it  with  authority  to 
inquire  whether  the  trial  court  has  exercised 
its  discretion  in  accordance  with  established 
rules  and  precedents  governing  the  exercise  of 
such  discretion.  *Billings,  Acting  Commis- 
sioner of  Patents  v.  Field,  C.  D.  1911,  163  O. 
G.  232. 

VI.  United  States  Supreme  Court. 

34.  Where  the  commissioner  with  the  ap- 
proval of  the  Secretary  of  the  Interior  and 
acting  under  the  authority  of  the  statute  makes 
a  rule  of  procedure  and  that  rule  constitutes 
in  part  the  powers  of  the  primary  examiner 
and  commissioner  in  the  action  complained  of 
and  the  plaintiflf  assails  the  validity  of  that 
rule.  Held  that  there  is  drawn  in  question  the 
validity  of  an  authority  exercised  under  the 
United  States  and  that  the  supreme  court  has 
jurisdiction  to  review  the  judgment  of  the 
court  of  appeals  by  writ  of  error.  **United 
States  ex  rel  Steinmetz  v.  Allen,  Commis- 
sioner of  Patents,  C.  D.  1904,  109  O.  G.  549. 


LABELS  AND  FEINTS. 

I.  Recistration. 
II.  Registrability. 

(a)  In  General. 

(b)  Public  Policy. 

III.  Misbranding. 

IV.  Pure  Food  and  Drugs  Act. 
V.  Right  to  use  Personal  Name. 

VI.  Symbols,  Etc. 


I.  Registration. 

1.  The  statute  under  which  copyrights  are 
granted  has  reference  only  to  such  writings 
or  discoveries  as  are  the  result  of  intellectual 
labor  (Higgins  v.  Keuffel,  C.  D.  1891,  403, 
55  O.  G.  1139),  or,  as  was  held  in  Trade-Mark 
Cases  (C.  D.  1879,  619,  16  O.  G.  999,  100  U. 
S.  82),  it  includes  such  original  designs  for 
engravings,  prints,  etc.,  as  are  founded  in  the 
creative  powers  of  the  mind.  Such  designs 
for  engravings,  prints,  etc.,  when  used  in  con- 
nection with  the  fine  arts  are  the  proper  sub- 
jects of  copyrights;  but,  as  provided  by  the 
section  of  the  statute  quoted  above,  prints  or 
labels  which  are  designed  to  be  used  for  any 
other  articles  of  manufacture,  may  be  regis- 
tered only  in  the  patent  office.  Ex  parte 
Baldwin,  C.  D.  1902.  98  O.  G.  1706. 

2.  In  so  providing  for  a  separate  place  for 
registration  of  prints  or  labels  to  be  used  in 
connection  with  articles  of  manufacture  the 
law  does  not  change  the  requirements,  as  in- 
terpreted by  the  supreme  court,  to  which  such 
prints  or  labels  must  conform — that  is,  they 
must  be  original,  the  result  of  intellectual  labor 
founded  on  the  creative  powers  of  the  mind. 
Id. 

II.  Registrability. 
(a)  In  General. 

3.  A  print  entitled  "The  Nile  Fortune 
Cards,"  to  be  used  for  playing-cards,  consist- 
ing of  a  representation  of  the  faces  and  backs 
of  certain  playing-cards  grouped  in  an  artistic 
manner  to  form  a  central  panel  on  which  are 
arranged  the  words  "The  Nile  Playing  Cards" 
and  other  words,  possesses  sufficient  merit  to 
entitle  it  to  registration,  and  it  may  be  regis- 
tered, although  it  contains  matter  capable  of 
sequestration  as  a  trade-mark.  Ex  parte 
United  States  Playing  Card  Company,  C.  D. 
1898,  82  O.  G.  1209. 

4.  The  rule  of  the  patent  office  that  "a  label 
cannot  be  registered  if  it  bear  a  device  capa- 
ble of  sequestration  as  a  trade-mark  until 
after  such  device  is  registered  as  a  trade- 
mark" does  not  apply  to  the  registration  of 
a  print.    Id. 

5.  A  print,  not  being  applied  to  an  article 
of  manufacture,  is  not  in  any  sense  a  trade- 
mark, nor  can  it  become  a  trade-mark.  It 
cannot  be  an  infringement  of  a  trade-mark, 
even  though  it  may  bear  a  device  which  is  a 
trade-mark  in  use  by  and  owned  by  a  person 


LABELS  AND  PRINTS,  H,  (a). 


455 


other  than  the  owner  of  the  print  or  even 
though  the  print  may  be  a  mere  representa- 
tion of  such  trade-mark.  A  trade-mark  be- 
comes property  only  when  used  upon  articles 
of  manufacture  or  commerce  and  is  infringed 
only  by  use  on  manufactures  of  the  same  class 
by  persons  other  than  the  rightful  owner. 
Only  those  marks  are  registrable  as  trade- 
marks which  are  applied  and  affixed  to  goods. 
Id. 

6.  A  print  or  label  consisting  of  "the  rep- 
resentation of  the  interior  of  a  richly-fur- 
nished room,  with  two  men  in  evening  dress 
sitting  at  a  table  on  which  is  displayed  an  open 
box  of  cigars;  each  man  is  smoking  a  cigar 
and  the  smoke  is  fancifully  wreathed  and 
formed  into  the  words  'A  Night  Off,'  with 
the  words  'Columbia  Club'  beneath  the  pic- 
ture" is  such  a  label  as  is  registrable  under  the 
statute.  (Trade-Mark  Cases,  C.  D.  1879,  619, 
16  O.  G.  999;  Higgins  v.  Keuflfel,  C.  D.  1891, 
403,  55  O.  G.  1139.)  Ex  parte  Mahn,  C.  D. 
1898,  82  O.  G.  1210. 

7.  The  rule  against  the  registration  of  a 
label  "'if  it  bear  a  device  capable  of  sequestra- 
tion as  a  trade-mark  until  after  such  device  is 
registered  as  a  trade-mark"  has  been  held  ap- 
plicable and  registration  refused,  although  the 
device  could  not  be  first  registered  as  a  trade- 
mark for  the  reason  that  it  had  not  been  used 
as  a  trade-mark ;  but  there  is  no  authority 
of  law  for  the  requirement  for  the  registra- 
tion of  the  trade-mark  matter  contained  in  a 
label  as  a  condition  precedent  to  the  regis- 
tration of  the  label.  The  law  was  designed 
to  give  protection  to  the  maker  of  a  new  cre- 
ation possessing  artistic  merit,  and  he  cannot 
be  deprived  of  this  protection  merely  because 
it  is  possible  that  some  device  contained  in  it 
might  be  protected  in  a  different  manner 
under  a  different  law  and  different  clause  of 
the  constitution.     Id. 

8.  A  label  of  artistic  merit,  indicating  pic- 
torially  or  otherwise  the  article  or  the  con- 
tents of  the  article  to  which  it  is  intended  to 
be  applied  and  otherwise  complying  with  the 
requirements  of  law,  is  registrable  regardless 
of  the  fact  that  it  may  include  matter  capable 
of  sequestration  as  a  trade-mark  so  long  as  it 
is  not  a  trade-mark.     Id. 

9.  A  label  which  is  merely  descriptive  in 
words  of  the  article  or  the  contents  of  the 
article  to  which  it  is  applied  and  involves  in 
its  creation  nothing  beyond  the  expected  skill 
of  an  experienced  type-setter  is  not  registrable 
under  the  law.    Id. 


10.  Where  the  examiner  refused  to  accept 
application  papers  signed  by  the  attorney  for 
applicant  on  the  ground  that  there  is  no  provi- 
sion in  the  copyright  law  which  permits  the 
application  to  be  signed  by  any  other  than 
the  proprietor  or  owner  of  a  label.  Held,  that 
as  there  is  no  provision  in  the  copyright  law 
that  requires  an  application  to  be  signed  by 
the  proprietor,  and  as  it  has  been  the  uni- 
form practice  of  this  office  and  the  librarian 
of  congress  to  register  for  an  author,  de- 
signer, etc.,  books,  etc.,  upon  an  application 
made  by  his  agent  or  attorney  the  application 
should  be  accepted.  Ex  parte  McLoughlin 
Brothers,  C.  D.  1899,  86  O.  G.  1633. 

ll-  Where  the  examiner  refused  to  accept 
application  papers  for  registration  of  a  label 
which  were  signed  by  the  attorney  for  appli- 
cant on  the  ground  that  there  was  no  written 
power  of  attorney.  Held,  that  as  it  has  been 
the  practice  to  receive  applications  so  signed 
without  a  written  power  the  application  should 
be  received.  (Blake  et  al.  v.  Allen  &  Co.,  56 
Fed.  Rep.  764,  cited.)     Id. 

12.  Where  the  examiner  required  that  as 
the  forms  in  the  Rules  of  Practice  of  the  pat- 
ent office  relating  to  the  registration  of  prints 
and  labels  provided  for  the  signing  of  the  ap- 
plication by  the  owner  or  proprietor  of  the 
label  these  forms  should  be  followed.  Held, 
that  the  forms  in  the  print  and  label  rules  are 
merely  suggestive  and  it  is  not  mandatory 
on  an  applicant  that  he  should  follow  them. 
Id. 

13.  An  arbitrary  and  fanciful  representa- 
tion to  be  placed  upon  cards  and  letter-heads 
as  an  ornamentation  thereof  is  not  a  print 
within  the  meaning  of  the  copyright  law,  such 
as  may  be  registered  in  this  office.  Ex  parte 
Barnhart  Bros.  &  Spindler,  C.  D.  1899,  87  O 
G.  2118. 

14.  When  an  alleged  print  possesses  artistic 
merit,  but  does  not  relate  to  the  trade  or  per- 
tain to  an  article  of  manufacture  within  the 
meaning  of  the  statute,  which  requires  that  if 
shall  be  for  some  article  of  manufacture. 
Held,  that  it  is  not  registerable  as  a  print, 
whatever  right  the  designer  may  have  to  pro- 
tection in  some  other  form.     Id. 

15.  "For  any  article  of  manufacture"  in  the 
statute  and  "pertaining  to  an  article  of  manu- 
facture" in  the  rule  have  reference  to  the  sub- 
ject-matter of  the  print  itself,  and  if  that 
subject-matter  does  not  suggest  or  in  some 
manner  indicate  some  other  article  of  manu- 
facture it  is  not  registrable  in  this  office.    The 


456 


LABELS  AND  PRINTS,  U,  (a). 


article   indicated  must  be  separate  and   inde- 
pendent of  the  print  itself.     Id. 

16.  Aside  from  the  rule  that  a  print  to  be 
registrable  must  not  be  borne  by  the  article 
to  which  it  pertains,  Held,  that  the  alleged 
print  in  this  case  does  not  pertain  to  cards 
and  letter-heads  within  the  meaning  of  the 
statute,  since  its  subject-matter  does  not  sug- 
gest them,  and  it  is  merely  an  ornamental  de- 
sign which  might  be  placed  upon  a  variety  of 
articles.    Id. 

17.  Proofs  or  prints  do  not  pertain  to  the 
plate  from  which  printed  in  the  sense  of  the 
statute  requiring  that  they  shall  be  for  an 
article  of  manufacture.  To  so  hold  would 
render  meaningless  the  statutes  distinguishing 
between  copyrights,  prints  and  designs.     Id. 

18.  Prints  are  designed  to  give  protection 
in  the  use  of  the  print  itself  in  whatever  man- 
ner produced  as  a  representation  or  indication 
of  the  article  of  manufacture  to  which  it  per- 
tains, but  not  to  the  manufacture  and  use  of 
that  article  itself.    Id. 

19.  After  a  label  producing  a  certain  artis- 
tic effect  has  become  non-registrable  because 
of  the  use  or  publication  before  application 
for  registration  was  filed,  it  cannot  be  ren- 
dered registrable  by  adding  thereto  an  incon- 
spicuous word  which  involves  nothing  more 
than  the  work  of  a  type-setter  and  which  does 
not  change  in  any  material  respect  the  appear- 
ance of  the  label.  Ex  parte  Wickert,  C.  D. 
1900,  90  O.  G.  1157. 

20.  It  is  not  necessary  that  a  label  be  com- 
posed exclusively  of  words  in  ordinary  use, 
used  with  their  ordinary  significance,  or  that 
it  be  in  all  respects  such  a  placard  as  might  be 
written  by  anyone.  Such  construction  would 
be  inconsistent  with  the  definition  given  by 
the  standard  dictionaries.  (Ex  parte  Moodie, 
C.  D.  1884,  35,  28  O.  G.  1271,  construed.)  Ex 
parte  New  England  Gas  and  Coke  Company, 
C.  D.  1900,  90  O.  G.  1365. 

21.  All  labels  which  bear  a  name,  title,  ad- 
dress, or  the  like  to  indicate  the  nature,  con- 
tents, ownership,  destination,  or  other  par- 
ticulars of  the  thing  to  which  they  are  to  be 
applied,  are  proper  subjects-matter  for  regis- 
tration in  the  patent  office  under  the  law.    Id. 

22.  Those  which  are  mere  labels,  simply 
designating  or  describing  the  article,  its  na- 
ture, contents,  or  other  characteristics  in 
words  which  would  naturally  be  used  by  any- 
one who  wished  to  designate  or  describe  the 
qualities  or  characteristics  of  the  article 
which    he    wished    to   sell,   arranged   as    they 


might  be  expected  to  be  arranged  by  an  ex- 
perienced type-setter,  involving  in  the  choice 
of  words  or  other  arrangement  nothing  of 
originality,  are  clearly  not  intended  to  be  the 
subject  of  an  exclusive  right.  (Higgins  v. 
Keuffel,  C.  D.  1891,  403,  55  O.  G.  1139,  cited.) 
Id. 

23.  A  label  in  order  that  its  owner  may  be 
entitled  to  be  protected  in  an  exclusive  right 
thereto  must  under  the  authorities  involve 
something  of  originality,  some  exercise  of  the 
creative  power  of  the  mind.     Id. 

24.  A  label  of  artistic  merit,  indicating  pic- 
torially  or  otherwise  the  article  or  the  con- 
tents of  the  article  to  which  it  is  intended  to 
be  applied,  is  entitled  to  protection ;  but  it  is 
not  necessary  to  restrict  registration  to  those 
labels  which  are  artistic  in  a  strict  sense  of 
the  word.    Id. 

25.  It  is  only  necessary  that  labels  which 
are  not  trade-marks  in  order  to  be  registra- 
ble be  other  than  such  as  would  naturally  be 
produced  by  an  experienced  type-setter  using 
the  expected  skill  of  his  calling  in  putting 
into  an  attractive  form  the  statement  fur- 
nished him  of  the  characteristics  of  the  arti- 
cle on  which  the  label  is  to  be  used,  whether 
such  label  be  in  a  strict  sense  artistic  or  not. 
Id. 

26.  Where  an  applicant  presents  for  regis- 
tration a  label  which  consists  of  a  monogram 
composed  of  the  letters  forming  the  word 
"Coke"  of  which  the  initial  "C"  is  the  con- 
spicuous and  surrounding  feature.  On  the 
initial  letter  "C"  is  printed  the  name  of  the 
registrant;  above  the  letter  "C"  are  the  words 
"Otto  Coke"  and  below  it  the  words  "Mystic 
Brand."  Surrounding  the  aforesaid  features 
of  the  label  is  a  diamond  or  lozenge.  Dis- 
posed in  a  circle  around  the  diamond  are  the 
words  "Smokeless  Fuel"  above  and  "Crushed 
Otto  Coke"  below  the  diamond.  Opposite  the 
left  corner  of  the  diamond  is  the  word 
"Lights"  and  opposite  the  right  corner  the 
word  "Quick."  Below  all,  in  a  horizontal  line, 
are  the  words  "Takes  the  place  of  coal." 
Held,  that  this  label  may  be  registered  in  the 
patent  office.     Id. 

27.  A  label  must  be  considered  as  a  whole, 
and  the  originality  exercised  in  the  creation 
of  the  part  which  forms  its  central  portion 
gives  originality  to  the  whole.     Id. 

28.  That  a  label  as  a  whole  is  not  a  trade- 
mark, in  the  sense  that  it  has  not  become  by 
adoption  and  use  the  subject  of  an  exclusive 
property   right,   may   be   accepted   in    the   ab- 


LABELS  AND  PRINTS,  H,  (a). 


457 


sence  of  any  showing  that  it  has   ever  been 
used  as  a  trade-mark.     Id. 

29.  The  distinction  between  a  label  and  a 
mark  which  may  by  adoption  and  use  become 
a  trade-mark  is  that  the  one  is  essentially  and 
obviously  descriptive  of  the  article  to  which 
it  is  applied,  while  the  other  is  essentially  ar- 
bitrary or  fanciful,  is  at  least  not  obviously 
descriptive,  is  distinctly  different  from  a  mark 
which  would  naturally  be  used  by  others  to 
indicate  the  contents,  nature,  or  quality,  origin, 
destination,  or  purpose  of  the  article  to  which 
it  is  applied.     Id. 

30.  Registration  of  a  print  or  label  should 
not  be  refused,  provided  it  is  a  print  or  label 
within  the  meaning  of  the  law  and  is  not  a 
trade-mark,  unless  it  is  beyond  question  that  it 
is  absolutely  without  artistic  or  intellectual 
merit,  is  not  original,  and  is  not  founded  in 
the  creative  powers  of  the  mind.     Id. 

31.  A  print  or  label  consisting  of  "the  word 
'Ceroleum'  in  large  heavy-faced  type  or  let- 
ters of  any  appropriate  size  and  style,  with 
the  words  'Dirt  Proof  Floor  Dressing'  printed 
in  small  block  letters  across  the  face  of  the 
said  word  'Ceroleum'  in  a  blank  space  or  strip 
left  in  the  center  thereof  and  equal  in  width 
to  about  one-third  of  the  width  of  the  said 
word  'Ceroleum,'  the  said  word  or  words  to 
be  printed  or  otherwise  reproduced  in  any  one 
or  different  colors  desired,"  Held,  to  only  in- 
volve the  expert  skill  of  the  type-setter  (ex 
parte  Mahn,  C.  D.  1S98,  598,  83  O.  G.  1210) 
and  not  to  present  a  print  which  involves  an 
intellectual  creation  of  such  artistic  merit  as 
to  warrant  its  registration.  Ex  parte  Miller, 
C.  D.  1901,  96  O.  G.  185.5. 

32.  Life-insurance  policies  are  not  such  ar- 
ticles as  are  here  defined.  Policies  are  con- 
tracts entered  into  between  the  companies  and 
the  assured.  (Paul  v.  Virginia,  3  Wall.  168.) 
They  are  not  articles  of  manufacture  for 
which  a  print  may  be  registered  under  the 
statute  relating  to  copyrights.  Ex  parte 
Bowles,  C.  D.  1901,  97  O.  G.  2308. 

33.  A  label  to  be  registrable  must  describe 
with  certainty  the  article  or  goods  upon  which 
it  is  used.  It  is  not  sufficient  that  the  name 
of  the  applicant  for  registration  appearing  on 
the  label  might  possibly  suggest  the  kind  of 
goods.  Ex  parte  American  Wire  Weavers' 
Protective  Association,  C.  D.  1901,  94  O.  G. 
586. 

34.  A  label  which  contains  nothing  more 
than  an  arrangement  of  printed  matter  naming 
and  describing  a  medicine,  together  with  di- 


rections for  its  use  and  the  name  and  resi- 
dence of  the  manufacturer  is  not  an  artistic 
production  and  is  not  registrable.  Ex  parte 
Houghton,  C.  D.  1902,  99  O.  G.  1622. 

35.  A  label  containing  a  new  arbitrary  word 
may  be  an  intellectual  production ;  but  such  a 
word  does  not  render  the  label  artistic.    Id. 

36.  In  the  absence  of  artistic  merit  there  is 
no  provision  for  the  registration  of  a  label 
under  the  statute  relating  to  copyrights,  under 
which  statute  such  registration  is  granted.    Id. 

37.  A  label  for  cement  printed  in  three 
kinds  of  type,  including  the  fanciful  words 
"Cast  Steel"  and  having  a  monogram  of  the 
letters  "C  S"  placed  between  two  of  the  lines 
of  printing,  Held,  not  registrable,  because  it 
involves  merely  the  expected  skill  of  the  type- 
setter, and  its 'production  was  not  the  result 
of  the  creative  powers  of  the  mind.  Ex  parte 
Clark  Cast  Steel  Cement  Company,  C.  D.  1902, 
99  O.  G.  2968. 

38.  The  commissioner  of  patents  is  author- 
ized and  required  to  determine  whether  the 
thing  presented  for  registration  is  a  label  and 
complies  with  the  requirements  of  the  law. 
He  is  not  required  to  register  everything 
which  is  presented  and  called  a  label.  Ex 
parte  Regina  Music  Box  Company,  C.  D. 
1902,  100  O.  G.  1112. 

39.  A  label  to  be  registrable  in  the  patent 
office  must  not  only  possess  artistic  merit,  but 
must  be  descriptive  of  the  article  for  which  it 
is  used.    Id. 

40.  A  mere  statement  by  the  applicant  for 
registration  that  he  intends  to  use  the  design 
presented  upon  a  particular  article  of  manu- 
facture does  not  make  it  for  that  article  with- 
in the  meaning  of  the  law.  The  indication  of 
the  article  must  be  in  the  label  itself.     Id. 

41.  The  registrability  of  a  label  must  be 
determined  by  its  intrinsic  qualities  and  not 
by  some  possible  or  contemplated  use  of  it. 
Id. 

42.  A  label  comprising  a  red  Greek  cross 
surrounded  by  a  yellow  circle  as  a  center- 
piece and  a  column  of  descriptive  matter  upon 
each  side.  Held,  not  registrable,  since  it  does 
not  involve  an  exercise  of  the  creative  powers 
of  the  mind,  but  merely  the  work  of  the  type- 
setter. Ex  parte  Booth,  C.  D.  1902,  101  O.  G. 
219. 

43.  Where  a  label  does  not  exhibit  the  high- 
est order  of  artistic  merit,  but  presents  a  pic- 
ture and  arrangement  of  parts  which  involves 
the  work  of  a  designer  rather  than  a  type- 
setter, Held,  "to  be   founded  in  the   creative 


45S 


LABELS  AND  PRINTS,  H,  (a). 


powers,  of  the  mind"  and  is  registrable.  Ex 
parte  Kornitzer,  C.  D.  1902,  101  O.  G.  2077. 

44.  A  print  in  order  to  be  registrable  must 
be  descriptive  of  the  article  which  it  is  in- 
tended to  advertise.  Ex  parte  Royal  Medi- 
cine Company,  C.  D.  1902,  100  O.  G.  2775. 

45.  Prints  and  labels  are  made  registrable 
by  the  same  section  of  the  copyright  law,  and 
the  requirement  that  they  indicate  the  article 
to  which  they  refer  applies  to  both.     Id. 

46.  It  is  necessary  that  the  goods  in  connec- 
tion with  which  a  print  is  used  be  identified 
in  some  way  in  the  print.  Ex  parte  Ball,  C. 
D.  1902,  98  O.  G.  2366. 

47.  It  is  contrary  to  public  policy  to  detract 
in  any  way  from  the  honor  which  is  due  to 
the  Hag.  This  result  certainly  follows  from 
its  use  as  an  advertisement  in  trade.  Such 
use  is  not  to  be  aided  or  encouraged  by  this 
office.    Id. 

48.  The  simulation  of  the  currency  of  the 
United  States  is  expressly  forbidden  by  the 
statute.  (Sec.  5430,  Rev.  Stats.)  The  fact 
that  a  print  for  which  registration  is  sought 
contains  such  simulation  is  of  itself  sufficient 
to  prevent  its  registration.    Id. 

49.  A  registrable  label  must  be  descriptive 
of  the  goods  to  which  it  is  attached.  (Ex 
parte    Regina    Music    Box    Company,    C.    D. 

1902,  286,  100  O.  G.  1112;  Ex  parte  American 
Wire  Weavers  Protective  Association,  C.  D. 
1901,  23,  94  O.  G.  586.)  Ex  parte  The  Lion 
Fig  and  Date  Company,  C.  D.  1903,  102  O.  G. 
823. 

50.  As  the  words  "brittle"  and  "nut"  when 
used  alone  with  no  qualifying  words  cannot 
be  said  to  describe  a  confection  composed  of 
sugar,  syrup,  and  peanuts,  the  single  word 
"Brittlenut"  does  not  describe  a  confection. 
The  label  not  indicating  in  any  manner  that  it 
is  to  be  used  with  candy  is  not  registrable. 
Id. 

51.  A  label  consisting  of  ordinary  printed 
matter,  printed  in  ordinary  type,  describing 
the  uses  and  price  of  the  article  and  contain- 
ing no  artistic  merit.  Held,  not  registrable. 
Ex  parte  Eupeptol  Medicine  Company,  C.  D. 

1903,  103  O.  G.   1417. 

52.  Where  a  label  is  made  up  of  printed 
matter  together  with  circles  and  scrollwork 
which  are  separately  old  in  the  printer's  art, 
but  which  are  so  combined  as  to  produce  an 
artistic  effect.  Held,  that  the  label  is  regis- 
tiable.  Ex  parte  Abraham,  C.  D.  1903,  107  O. 
G.  1971. 


53.  A  label  which  in  itself  possesses  no  ar- 
tistic merit  is  not  rendered  registrable  by  in- 
cluding as  one  feature  a  registered  trade- 
mark which  does  possess  artistic  merit.  Ex 
parte  Wm.  T.  Reynolds  &  Co.,  C.  D.  1904,  108 
O.  G.  559. 

54.  Where  the  only  thing  in  a  label  founded 
in  the  creative  powers  of  the  mind  is  a  regis- 
tered trade-mark  placed  on  it,  Held,  that  the 
label  is  not  registrable.     Id. 

55.  Where  the  title  given  to  a  print  does  not 
appear  on  it.  Held,  that  registration  was  prop- 
erly refused.  Ex  parte  Ruppert,  C.  D.  1906, 
121  O.  G.  2327. 

56.  Where  objection  is  made  that  the  title 
does  not  appear  upon  the  print.  Held,  that  the 
objection  may  be  cured  by  filing  copies  having 
the  proper  title  printed  thereon  or  by  chang- 
ing the  title  to  that  which  appears  upon  the 
present  copies.     Id. 

57.  Held,  that  a  print  for  malt  liquors  which 
includes  as  an  essential  feature  a  representa- 
tion of  a  beer-keg  is  a  sufficient  indication  of 
the  merchandise  for  which  it  was  designed. 
Id. 

58.  Held,  that  a  mere  title  for  goods  print- 
ed in  ordinary  type,  with  ordinary  printers' 
ornamentation,  is  not  registrable  as  a  label, 
since  it  is  not  an  artistic  production,  requires 
in  its  production  no  exercise  of  the  creative 
powers  of  the  mind,  and  displays  no  original- 
ity in  design.  Ex  parte  Ambrosia  Chocolate 
Company,  C.  D.  1906,  122  O.  G.  3011. 

59.  Labels  are  registrable,  in  conformity 
with  the  law  of  copyrights,  only  on  the  ground 
that  they  are  of  artistic  value  or  that  they  are 
useful  as  the  products  of  intellectual  effort. 
Ex  parte  J.  W.  Howe  &  Son,  C.  D.  1906,  123 
O.  G.  1283. 

60.  No  nice  application  of  rules  will  be 
made  in  the  patent  office  to  determine  the  de- 
gree of  artistic  or  intellectual  merit  displayed 
by  a  label,  but  the  label  will  be  registered  as 
a  matter  of  course  when  recognized  to  be  of 
a  character  which  is  commonly  regarded  as 
the  result  of  artistic  or  intellectual  effort  or 
which  might  properly  be  so  regarded.     Id. 

61.  Held,  that  a  label  comprising  merely 
printed  matter  and  printers'  ornamentation, 
which  are  not  artistic  productions,  should  not 
be  registered.  Ex  parte  Sides,  C.  D.  1906,  123 
O.  G.  1663. 

62.  The  use  of  a  paraph  under  certain 
words  of  a  label  which  is  otherwise  devoid 
of  artistic  merit  is  not  sufficient  to  render  the 


LABELS  AND  PRINTS,  II,  (b).  III,  IV. 


459 


label  registrable.    Ex  parte  The  Samuel  Wins- 
low  Skate  Mfg.  Co.,  C.  D.  1907,  131  O.  G.  692. 

63.  The  Copyright  Act  of  March  4,  1909, 
construed  and  Held,  to  permit  the  registration 
of  all  prints  and  labels  the  applications  for  the 
registration  of  which  were  on  file  and  pend- 
ing in  the  patent  office  on  June  30,  1909,  if 
otherwise  registrable.  Ex  parte  Lutz,  C.  D. 
1909,  14r,  O.  G.  256. 

64.  The  print  to  be  registrable  must  de- 
scribe the  article  of  manufacture  with  which 
it  is  connected  or  which  it  is  intended  to  ad- 
vertise (Ex  parte  Royal  Medicine  Company, 
C.  D.  1902,  337,  100  O.  G.  2775;  Ex  parte  Re- 
gina  Music  Box  Company,  C.  D.  1902,  286, 
100  O.  G.  1112,  and  Ex  parte  The  Lion  Fig  and 
Date  Company,  C.  D.  1903,  35,  102  O.  G.  823), 
and  the  article  must  be  separate  and  independ- 
ent of  the  print  itself.  (Ex  parte  Barnhart 
Bros.  &  Spindler,  C.  D.  1899,  125,  87  O.  G. 
2118.)  Ex  parte  Allen  &  Co.,  C.  D.  1910,  156 
O.  G.  1065. 

65.  The  fact  that  a  print  contains  a  repre- 
sentation of  the  seal  of  Philadelphia,  Held, 
not  a  sufficient  ground  for  refusing  to  regis- 
ter such  print  where  it  appears  that  the  cut 
appearing  in  the  print  which  bears  said  seal 
was  taken  from  a  medal  awarded  to  applicant 
by  that  city.  Ex  parte  Arguto  Oilless  Bearing 
Company,  C.  D.  1910,  157  O.  G.  999. 

(b)  Public  Policy. 

66.  Where  a  label  is  presented  including  as 
its  most  prominent  feature  the  words  "King 
Edward  VII,"  Held,  that  registration  should 
be  refused  upon  the  ground  of  public  policy, 
which  does  not  sanction  the  use  of  a  person's 
name  for  purposes  of  trade  without  his  con- 
sent. Ex  parte  John  Dewar  &  Sons,  Lim- 
ited, C.  D.  1902,  98  O.  G.  1037. 

67.  A  label  will  not  be  registered  where  it 
includes  as  a  feature  thereof  the  coat  of  arms 
of  a  foreign  nation.  Ex  parte  Rippen,  C.  D. 
1904,  105  O.  G.  798. 

68.  The  grounds  of  public  policy  which  pre- 
vent the  registration  of  the  coat  of  arms  of  a 
nation  as  a  trade-mark  have  equal  force  in 
the  matter  of  the  registration  of  labels.     Id. 

69.  Where  the  alleged  print  is  a  device  em- 
ployed to  further  a  lottery  scheme  or  game 
of  chance.  Held,  that  if  it  would  not  be  a 
violation  of  the  federal  laws  respecting  lot- 
teries and  similar  devices  for  a  bureau  of  an 
executive  department  of  the  United  States 
government  to  give  its  approval  to  appellant's 


device  by  registering  the  same  it  is  certainly 
against  public  policy  to  do  so.  Ex  parte 
Allen  &  Co.,  C.  D.  1910,  156  O.  G.  1065. 

III.  Misbranding. 

70.  The  action  of  the  examiner  of  trade- 
marks refusing  to  register  a  mark  on  the 
ground  that  the  labels  show  a  misbranding 
will  not  be  reviewed  on  petition,  but  only  as  a 
regular  appeal,  accompanied  by  the  fee  re- 
quired by  law.  Ex  parte  Zinn,  C.  D.  1911,  170 
O.  G.  703. 

IV.  Pure  Food  and  Drugs  Act. 

71.  Held,  that  a  label  should  be  refused 
registration  where  the  legend  "Guaranteed 
under  the  Food  and  Drugs  Act,  June  30, 
1900,"  is  so  used  as  to  be  likely  to  indicate  that 
the  merchandise  upon  which  the  label  is  based 
is  guaranteed  by  the  government.  Ex  parte 
Tennessee  Brewing  Company,  C.  D.  1908,  136 
O.  G.  1999. 

72.  A  label  containing  the  words  "Guaran- 
teed under  the  Food  and  Drugs  Act,  June  30, 
1906,"  is  not  entitled  to  registration,  as  the 
use  of  this  legend  tends  to  convey  the  im- 
pression that  the  government  guarantees  the 
merchandise  contained  in  the  receptacle  on 
which  the  label  may  be  applied.  Ex  parte 
Ruppert,  C.  D.  1909,  140  O.  G.  755. 

73.  For  the  reasons  stated  in  Ex  parte  Tenn- 
essee Brewing  Company  (C.  D.  1908,  227,  136 
O.  G.  1999),  and  Ex  parte  Ruppert  (ante,  43, 
140  O.  G.  755)  a  print  containing  the  words 
"Guaranteed  under  the  Food  and  Drugs  Act, 
June  30,  1906,"  was  properly  refused  regis- 
tration. Ex  parte  Lake  Chemical  Company, 
C.  D.  1909,  141  O.  G.  567. 

74.  Section  8  of  the  Pure  Food  and  Drugs 
Act  provides,  in  part,  that  a  drug  shall  be 
considered  misbranded  if  the  package  contain- 
ing it  fails  to  bear  a  statement  as  to  the 
quantity  or  proportion  contained  therein  of 
any  one  of  certain  named  substances  or  of 
any  derivative  or  preparation  thereof.  Held, 
that  the  omission  from  the  label  on  a  package 
containing  a  derivative  of  one  of  these  sub- 
stances of  a  statement  that  it  was  in  fact  such 
a  derivative  did  not  constitute  misbranding, 
the  trade  name  and  the  proportion  of  the  de- 
rivative being  given.  *United  States  of  Amer- 
ica v.  Anti-Chemical  Co.,  C.  D.  1911,  167  O.  G. 
514. 

75.  //,'/(/.  that  a  medicinal  preparation  can- 
not be  said  to  be  misbranded  within  the  mean- 


4  CO 


LACHES— LICENSE. 


ing  of  section  2  of  the  Food  and  Drugs  Act 
(34  Stat.  768)  merely  because  of  a  false  and 
misleading  statement  in  the  label  as  to  its 
curative  effect.  **The  United  States  v.  John- 
son, C.  D.  1911,  169  O.  G.  702. 

V.  Right  to  Use  Personal  Name. 

76.  Descriptions  and  publications  giving  in- 
formation in  regard  to  a  public  man  cannot 
be  suppressed  upon  the  ground  of  a  right  of 
privacy  upon  his  part ;  but  the  use  of  his  name 
for  commercial  purposes  in  advertisement  of 
goods  offered  for  sale  stands  upon  a  different 
footing.  Ex  parte  John  Dewar  &  Sons,  Ltd., 
C.  D.  1902,  98  O.  G.  1037. 

77.  If  a  person's  name  has  any  commer- 
cial value  as  applied  to  goods  offered  for 
sale,  he  alone  is  entitled  to  the  benefits,  and 
it  is  a  property  right  which  no  one  else  has 
the  right  to  usurp  without  his  consent.     Id. 

78.  Prints  and  labels,  although  registered 
under  the  copyright  law,  are  for  purposes  of 
trade,  and  the  use  of  a  person's  name  as  the 
most  prominent  feature  thereof  without  his 
consent  is  no  more  permissible  than  its  use 
as  a  trade-mark.    Id. 

VI.  Symbols,  Etc. 

79.  Held,  that  a  label  upon  which  the  shields 
of  certain  countries  are  shown  will  not  be  reg- 
istered, for  the  reasons  given  in  Ex  parte  Ball 
(C.  D.  1902,  102,  98  O.  G.  2366.)  Ex  parte 
R.  Steinecke  Company,  C.  D.  1906,  122  O.  G. 
3011. 

80.  The  words  "Red  Cross,"  whether  con- 
strued as  "the  sign  of  the  Red  Cross"  ex- 
pressed in  language  or  as  the  alternative  of 
the  sign  "Red  Cross,"  clearly  come  within  the 
spirit  and  intent  of  the  provisions  of  section 
4  of  the  act  entitled  "An  act  to  incorporate 
the  American  National  Red  Cross,"  approved 
January  5,  1905,  prohibiting  the  use  of  "such 
sign  or  any  insignia  colored  in  imitation  thereof 
for  the  purposes  of  trade  or  as  an  advertise- 
ment to  induce  the  sale  of  any  article  what- 
soever. Ex  parte  Strauss,  C.  D.  1907,  128  O. 
G.  883. 


LACHES. 

1-  Quaere  whether  the  rule  that  the  doc- 
trine of  laches  has  no  application  to  the  neg- 
lect of  the  government  to  pursue  trespasses 
upon  its  rights  applies  in  the  case  of  foreign 
governments  suing  in  the  courts  of  this  coun- 

V 


try.     **La  Republique  Francaise  v.   Saratoga 
V.  Vichy  Spring  Co.,  C.  D.  1903,  105  O.  G.  977. 

2.  Where  the  government  is  suing  for  the 
use  and  benefit  of  an  individual  or  for  the 
prosecution  of  a  private  and  proprietary  in- 
stead of  a  public  or  government  right,  the 
ordinary  rule  of  laches  applies  in  full  force. 
**Id. 

3.  Where  the  French  republic  is  nominally 
the  plaintiff,  but  the  real  party  in  interest  is 
a  company  leasing  the  springs  from  the  re- 
public, Held,  that  the  laches  of  that  company 
is  sufficient  to  prevent  granting  the  relief 
sought.    **Id. 


LICENSE. 

1.  The  fact  that  an  alleged  infringer  at  one 
time  held  a  license,  since  expired,  and  marked 
his  machines  as  made  under  the  patent  sued 
on  is  not  an  estoppel  against  him  on  the  ques- 
tion of  infringement  when  the  record  does 
not  show  whether  or  not  his  conduct  in  ob- 
taining such  license  and  so  marking  his  ma- 
chines was  because  he  misconstrued  the  pat- 
entee's rights  under  his  claims  or  was  merely 
not  disposed  to  make  any  contest  for  the  time 
being.  *Cushman  Paper  Box  Machine  Com- 
pany v.  Goddard  et  al.,  C.  D.  1899,  88  O.  G. 
2410. 

2.  A  party  having  a  mere  personal  license 
for  certain  of  the  states  which  is  not  trans- 
ferable owns  no  interest  in  the  invention  either 
legal  or  equitable  and  his  rights  will  not  be 
prejudiced  by  a  refusal  to  allow  him  to  in- 
spect or  obtain  copies  of  the  application. 
Held,  therefore,  that  he  is  not  entitled  to  cop- 
ies.   Ex  parte  Adam,  C.  D.  1900,  92  O.  G.  190. 

3.  Where  the  only  remedy  which  an  alleged 
licensee  had  against  a  violation  of  his  license 
by  the  patentee  was  to  prosecute  the  patentee 
as  an  infringer  of  his  rights  under  the  patent. 
Held,  that  the  question  is  one  arising  under 
the  patent  laws  and  is  within  the  jurisdiction 
of  the  United  States  courts.     **Id. 

4.  The  jurisdiction  of  the  federal  courts 
cannot  be  invoked  primarily  for  the  deter- 
mination of  the  rights  of  parties  to  a  contract 
concerning  patents ;  yet  when  the  bill  is  an 
ordinary  one  for  infringement  and  the  answer 
puts  in  issue  the  title  of  the  plaintiff  to  sue 
the  jurisdiction  is  not  ousted  by  the  mere 
allegation  that  the  license  has  been  revoked. 
**Id. 

5.  It  is  the  duty  of  the  circuit  court  on  its 
own  motion  to  dismiss  the  case  whenever  at 


MANDAMUS. 


461 


any  time  it  shall  appear  that  its  jurisdiction 
has  been  improperly  invoked.     **Id. 

6.  On  an  appeal  directly  to  the  supreme 
court  from  a  decision  of  the  circuit  court  it 
must  appear  either  that  the  question  of  juris- 
diction was  certified  or  that  the  decree  ap- 
pealed from  shows  upon  its  face  that  the  sole 
question  decided  was  one  of  jurisdiction.  A 
statement  to  that  effect  in  allowing  an  appeal 
is,  however,  a  sufficient  certificate  that  the 
question  is  one  of  jurisdiction.    **Id. 

7.  An  exclusive  licensee  of  an  invention  will 
not  be  permitted  to  intervene  in  the  prosecu- 
tion of  an  interference  so  long  as  the  inter- 
ference is  being  prosecuted  in  good  faith  by 
his  licensor.  In  re  The  National  Railway 
Materials  Company,  C.  D.  1907,  129  O.  G. 
481. 


MANDAMUS. 

1.  Where  a  principal  examiner  in  the  patent 
office  was  made  respondent  to  a  petition  for  a 
writ  of  mandamus  commanding  him  to  perfect 
an  appeal  to  the  examiners-in-chief,  the  ex- 
aminer having  refused,  under  the  rules  of  the 
patent  office  and  instructions  from  the  com- 
missioner, to  answer  the  appeal,  on  demurrer 
to  the  petition  on  the  ground  that  the  com- 
missioner, the  responsible  head  of  the  office, 
and  not  the  examiner,  should  have  been  made 
respondent,  Held,  that  the  demurrer  should  be 
sustained,  a  United  States  ex  rel.  Hodgins 
v.  Simpson,  C.  D.  1898,  82  O.  G.  190. 

2.  Where  a  mandamus  proceeding  against 
an  officer  of  the  government  abated  on  the 
death  of  the  officer  and  a  motion  was  made 
for  leave  to  substitute  his  successor,  who  con- 
sented to  be  substituted,  Held,  that,  in  the  ab- 
sence of  statutory  authority,  after  such  a 
cause  had  abated  the  court  cannot  bring  a 
new  party  into  the  case.  Nor  is  the  want  of 
such  authority  supplied  by  the  consent  of  a 
person  not  a  party  to  the  cause.  (Justices 
Harlan,  Brewer,  and  Peckham  dissented.) 
♦♦United  States  ex  rel.  Bernardin  v.  Butter- 
worth,  Commissioner  of  Patents,  C.  D.  189S, 
82  O.  G,  1991. 

3.  Held,  that  a  writ  of  mandamus  is  not 
available  where  the  petitioner  has  another 
specific  remedy,  such  as  in  this  case — the 
right  of  appeal  to  the  court  of  appeals  from 
the  decision  of  the  assistant  commissioner. 
a  United  States  ex  rel.  Stapleton  v.  Duell, 
Commissioner  of  Patents,  C.  D.  1900,  93  O.  G. 
2532. 


4.  Upon  a  petition  for  a  writ  of  mandamus 
to  require  the  commissioner  to  register  a  word 
as  a  trade-mark  which  he  considered  not  a 
valid  trade-mark  and  refused  to  register,  Held, 
that  it  was  the  duty  of  the  commissioner  to 
pass  upon  the  question  whether  or  not  the 
trade-mark  was  a  lawful  one  and  that  manda- 
mus does  not  lie  to  control  his  action.  (Sey- 
mour V.  State  of  South  Carolina,  C.  D.  1894, 
174,  66  O.  G.  1167.)  a  United  States,  ex  rel. 
Bronson  Company  et  al.  v.  Duell,  Commission- 
er of  Patents,  C.  D.  1900,  93  O.  G.  1491. 

5.  Where  an  applicant  sought  to  register 
a  trade-mark  under  section  13  of  the  trade- 
mark act  for  the  purpose  of  registering  abroad 
and  the  commissioner  refused  to  register  it 
on  the  ground  that  it  was  not  a  lawful  trade- 
mark, upon  petition  for  a  writ  of  mandamus 
to  compel  the  commissioner  to  register.  Held, 
that  the  commissioner  had  jurisdiction  to  con- 
sider the  question,  and  the  petition  denied. 
a  United  States,  ex  rel.  Buffalo  Pitts  Com- 
pany v.  Duell,  Commissioner  of  Patents,  C.  D. 
1900,  93  O.  G.  1491. 

6.  Held,  also,  that  the  whole  trade-mark  act 
must  be  read  and  construed  together,  and 
every  requisite  to  registration  required  by  the 
previous  sections  must  be  held  to  apply  to 
registration  under  section  13.    a  Id. 

7.  The  petition  for  a  writ  of  mandamus 
must  be  denied  in  this  case  for  the  same  rea- 
son given  in  the  case  of  Buffalo  Pitts  Com- 
pany, a  United  States,  ex  rel.  New  York  Con- 
densed Milk  Company  v.  Duell,  Commissioner 
of  Patents,  C.  D.  1900.  93  O.  G.  1492. 

8.  Where  a  party  alleges  that  an  invention 
has  been  in  public  use  for  more  than  two 
years  before  an  application  for  a  patent  upon 
it  was  filed  by  another  party  and  asks  the 
court  for  a  mandamus  to  compel  the  commis- 
sioner of  patents  to  institute  public-use  pro- 
ceedings and  recognize  him  as  a  party  in  in- 
terest, Held,  that  the  petition  will  be  denied 
because  the  petitioner  is  without  legal  inter- 
est in  the  matter,  a  United  States  of  Amer- 
ica, ex  rel.  National  Phonograph  Company  v. 
Commissioner  of  Patents,  C.  D.  1902,  101  O. 
G,   1133. 

9.  In  order  to  maintain  an  application  for 
a  mandamus  upon  a  public  officer,  the  author- 
ities are  very  clear  that  he  must  have  a  legal 
interest  in  the  matter.  A  mere  commercial 
interest  is  not  sufficient,     a  Id. 

10.  Where  the  commissioner  of  patents  re- 
fuses to  direct  the  primary  examiner  to  for- 
ward to  the  examiners-in-chief  an  appeal  from 


462 


MANDAMUS. 


the  primary  examiner's  action  in  requiring 
the  applicant  to  divide  his  application,  Held, 
that  his  action  will  not  be  interfered  with  by 
mandamus,  since  the  applicant  has  no  right 
of  appeal,  o  United  States  ex  rel.  Steinmetz 
V.  Allen,  Commissioner  of  Patents,  C.  D.  1903, 
102  O.  G.  231. 

11.  The  requirement  for  division  of  an  ap- 
plication is  interlocutory  and  cannot  be  rem- 
edied by  mandamus,  since  the  question  is  pe- 
culiarly within  the  jurisdiction  of  the  com- 
missioner of  patents  and  requires  judgment 
on  his  part  to  decide,    a  Id. 

12.  A  mandamus  will  not  issue  directing  the 
the  commissioner  of  patents  to  order  the  pri- 
mary examiner  to  forward  to  the  examiners- 
in-chief  an  appeal  from  a  requirement  for  di- 
vision. (Decision  of  Supreme  Court  of  the 
District  of  Columbia,  post  632,  102  O.  G.  231, 
affirmed.)  *United  States  ex  rel.  Steinmetz 
V.  Allen,  Commissioner  of  Patents,  C.  D.  1903, 
104  O.  G.  853. 

13.  Upon  a  petition  for  a  mandamus  to 
compel  the  allowance  of  an  appeal  it  must 
be  shown  clearly  and  affirmatively  that  there 
was  not  only  a  right  of  appeal,  but  that  such 
right  had  been  denied  under  such  circum- 
stances as  entitle  the  petitioner  to  a  man- 
damus to  enforce  the  right.     *Id. 

14.  A  mandamus  does  not  lie  to  compel  the 
commissioner  of  patents  to  register  in  the 
patent  office  an  alleged  label  which  in  his 
opinion  is  not  a  label  as  defined  by  the  stat- 
ute. *Allen,  Commissioner  of  Patents  v. 
United  States  ex  rel.  Regina  Music  Box  Com- 
pany, C.  D.  1903,  105  O.  G.  747. 

15.  Section  3  of  the  act  of  June  18,  1874, 
imposes  upon  the  commissioner  of  patents 
the  duty  of  determining  whether  or  not  the 
thing  presented  for  registration  is  a  label  as 
defined  by  the  statute,  and  his  decision  wheth- 
er right  or  wrong  is  not  subject  to  control  by 
mandamus.     *Id. 

16.  Where  an  officer  has  jurisdiction  to  de- 
cide at  all,  he  necessarily  has  jurisdiction  and 
it  is  his  duty  to  decide  as  he  thinks  the  law  is, 
and  the  courts  have  no  power  whatever  to 
review  his  determination  by  mandamus  or  in- 
junction.   *Id. 

17.  Where  the  commissioner  of  patents  re- 
fused to  direct  the  primary  examiner  to  for- 
ward to  the  examiners-in-chief  an  appeal 
from  his  ruling  that  process  and  apparatus 
claims  should  be  divided  and  presented  sep- 
arately, Held,  that  a  mandamus  will  lie  to 
compel  him  to  forward  the  appeal.    **United 


States   ex    rel.    Steinmetz   v.   Allen,   Commis- 
sioner of  Patents,  C.  D.  1904,  109  O.  G.  549. 

18.  Petition  for  a  mandamus  to  the  court 
of  appeals  to  hear  and  determine  an  appeal 
from  a  decision  of  the  commissioner  of  pat- 
ents requiring  division  of  an  application  for 
patent  dismissed,  since  the  remedy  was  not 
by  appeal  to  the  court,  but  by  mandamus  to 
compel  the  allowance  of  an  appeal  from  the 
primary  examiner  to  the  examiners-in-chief 
upon  the  question  of  division.  ♦*Ex  parte 
Frasch,  C.  D.  1904,  109  O.  G.  5.->4. 

19.  Held,  that  a  mandamus  should  issue  to 
compel  the  circuit  court  of  appeals  to  enter- 
tain and  decide  a  writ  of  error  where  the 
circuit  court  adjudges  a  party  in  contempt  and 
orders  him  to  pay  a  fine  to  the  United  States. 
**In  re  The  Christensen  Engineering  Com- 
pany, C.  D.  1904,  110  O.  G.  2237. 

20.  Judgment  of  the  supreme  court  of  the 
District  of  Columbia  granting  a  mandamus 
commanding  the  commissioner  of  patents  to 
cause  the  examiners-in-chief  to  hear  and  de- 
termine an  appeal  from  the  decision  of  the 
primary  examiner  upon  a  motion  to  dissolve 
in  interference  reversed.  *Allen,  Commis- 
sioner of  Patents  v.  United  States  of  Amer- 
ica ex  rel.  Lowry  and  Planters  Compress 
Company,  C.  D.  1905,  116  O.  G.  2253. 

21.  Where  the  circuit  court  in  a  suit  upon 
a  patent  held  part  only  of  the  claims  valid 
and  a  part  only  of  the  valid  claims  infringed 
and  referred  the  cause  to  a  master  to  take  and 
state  an  account,  and  granted  an  injunction 
against  further  infringement,  and  defendant 
took  an  appeal  from  that  part  of  the  decree 
granting  the  injunction,  a  writ  of  mandamus 
from  the  Supreme  Court  of  the  United  States 
commanding  the  circuit  court  of  appeals  to 
entertain  a  cross-appeal  by  complainants  from 
that  part  of  the  decree  adverse  to  them  will 
not  be  granted,  since  the  decree  is  merely  in- 
terlocutory and  not  final.  **Ex  parte  National 
Enameling  and  Stamping  Company  and  La- 
lance  &  Grosjean  Manufacturing  Company, 
C.  D.  1906,  121  O.  G.  1679. 

22.  The  writ  of  mandamus  cannot  be  used 
in  the  place  of  an  appeal  or  writ  of  error  to 
correct  any  erroneous  decision  made  by  the 
primary  examiner  in  the  course  of  his  official 
duties,  a  The  United  States  of  America  ex 
rel.  Tuttle  v.  Allen,  Commissioner  of  Patents, 
C.   D.   1907,  126  O.  G.  760. 

23.  The  writ  of  mandamus  cannot  be  used 
to  control  the  exercise  of  judicial  discretion, 
aid. 


MANDAMUS. 


463 


24.  Where  division  had  been  required  be- 
tween the  claims  of  an  application  for  patent 
and  it  was  sought  by  mandamus  to  compel 
consideration  of  the  claims  upon  their  merits. 
Held,  that  it  is  of  no  consequence  to  the  court 
in  rendering  the  decision  upon  mandamus 
whether  the  office  was  right  or  wrong  in  re- 
quiring division,    a  Id. 

25.  Where  the  relator  is  not  without  other 
complete  and  adequate  remedies,  a  writ  of 
mandamus  will  not  lie.  *The  United  States 
of  America  ex  rel.  The  Newcomb  Motor  Co. 
V.  Allen  (Moore  substituted),  Commissioner 
of  Patents,  C.  D.  1907,  130  O.  G.  302. 

26.  Although  the  writ  of  mandamus  might 
serve  as  an  inexpensive  and  summary  con- 
clusion of  the  whole  matter,  providing  this 
court  had  jurisdiction  to  issue  the  writ,  yet 
neither  economy  of  time  nor  expense  can 
weigh  anything  as  against  the  orderly  pro- 
cedure under  the  law  of  a  given  case.    *Id. 

27.  Where  the  commissioner  has,  in  fact, 
acted  and  rendered  his  decision  touching  the 
very  matter  here  in  controversy,  and  has  the 
clear  legal  right  to  act  and  decide  for  himself, 
this  court  is  without  jurisdiction  to  review 
his  action  and  above  all  to  compel  him  by 
its  writ  to  undo  what  he  has  done.     *Id. 

28.  Where  the  commissioner  had  the  power 
to  act  and  has  acted,  Held,  that  it  is  wholly 
immaterial  whether  in  the  judgment  of  the 
court  he  was  right  or  wrong  in  his  determina- 
tion and  that  in  overruling  the  motion  for  a 
writ  of  mandamus  no  opinion  will  be  express- 
ed as  to  the  merits  of  the  relator's  conten- 
tions.   *Id. 

29.  Where  a  primary  examiner  on  a  motion 
to  dissolve  decides  that  one  of  the  parties  has 
no  right  to  make  the  claims  of  an  interfer- 
ence issue  and  such  party,  after  filing  an  ap- 
peal from  such  decision,  fails  to  prosecute 
the  same  and  abandons  it,  such  judgment  be- 
comes final  and  binding  upon  the  parties,  and 
mandamus  is  the  proper  proceeding  to  secure 
the  enforcement  of  such  judgment  and  a  va- 
cation of  any  subsequent  ex  parte  or  inter 
partes  proceedings  adjudicating  the  same 
question  or  based  upon  such  an  adjudication. 
♦United  States  of  America  ex  rel.  The  New- 
comb  Motor  Company  v.  Moore,  Commis- 
sioner of  Patents.  C.  D.  1908,  133  O.  G.  1680. 

30.  The  court  is  powerless  to  direct  the  ac- 
tion of  an  executive  officer  unless  a  positive 
legal  right  is  being  invaded  by  the  officer 
where  the  duty  imposed  upon  him  is  clearly 
prescribed   and   enjoined  by   law.     The   duty, 


however,  must  be  so  plain  and  positive  that 
the  officer  has  no  discretion  left.  (Merrill  on 
Mandamus,  p.  64.)  *Moore,  Commissioner  of 
Patents  v.  The  United  States  of  America,  ex 
rel.   Boyer,  C.  D.  1909,  138  O.  G.  530. 

31.  The  courts  are  vested  with  no  power  to 
interfere  with  or  supervise  the  practice  of 
the  patent  office.  It  is  only  in  cases  where 
a  hearing  is  refused  a  party  or  the  commis- 
sioner refuses  to  perform  a  plain  duty  or 
where  he  undertakes  to  do  an  unwarranted 
act  for  which  there  is  no  other  adequate  rem- 
edy that  the  courts  are  authorized  to  interfere 
by  mandamus  or  injunction.  *Moore,  Commis- 
sioner of  Patents  v.  Heany,  The  Heany  Com- 
pany, and  the  Heany  Lamp  Co.,  C.  D.  1909, 
149  O.  G.  831. 

32.  The  writ  of  mandamus  cannot  be  used 
to  perform  the  office  of  an  appeal  or  writ 
of  error  or  granted  in  any  case  where  there 
is  another  adequate  remedy.  *Moore  v.  Unit- 
ed States  ex  rel.  Lindmark,  C.  D.  1909,  149  O. 
G.  310. 

33.  In  an  interference  between  F.  and  L.  the 
decision  of  the  commissioner  in  favor  of  L. 
was  reversed  by  the  court  of  appeals  of  the 
District  of  Columbia.  Thereafter  L.  filed 
with  the  commissioner  a  petition  that  the  in- 
terference be  reopened  for  the  purpose  of 
taking  further  testimony.  This  petition  was 
denied,  but  an  order  directing  a  patent  to  issue 
to  F.  was  not  entered.  Held,  that  mandamus 
would  not  lie  to  compel  the  commissioner  to 
reopen  the  case,  since  upon  the  entry  of  such 
final  order  L.  would  have  the  right  of  appeal 
to  the  court  of  appeals.    *Id. 

34.  Where  a  claim  was  finally  rejected  which 
was  not  identical  with  the  claim  previously 
presented,  but  which  the  commissioner  de- 
cided did  not  differ  in  matters  of  substance 
therefrom.  Held,  that  in  so  doing  the  commis- 
sioner was  exercising  his  judgment  within  the 
discretion  and  authority  given  to  him  and  that 
the  supreme  court  of  the  District  of  Columbia 
cannot  compel  him  to  reverse  such  judgment, 
if  erroneous,  by  issuing  a  writ  of  mandamus. 
a  United  States  ex  rel.  Lang  v.  Moore,  Com- 
missioner of  Patents,  C.  D.  1911,  168  O.  "G. 
527. 

35.  "Whether  or  not  the  claim  last  re- 
jected differed  in  substance  from  the  one 
acted  upon  immediately  previous,  so  as  to 
constitute  a  new  claim  upon  which  the  appel- 
lant was  entitled  to  a  re-examination  after 
rejection,  was  a  question  manifestly  for  the 
determination  of  the  patent  office,  unless  there 


464 


MANUSCRIPT  DECISIONS— MODELS. 


be  such  a  dissimilarity  as  would  show  on  its 
face  an  abuse  of  discretion.  That,  however, 
is  not  the  case  here.  The  claims  under  con- 
sideration are  so  nearly  alike  in  their  phrase- 
ology as  to  call  for  the  e.xercise  of  the  judi- 
cial discretion  intrusted  to  the  commissioner. 
It  is  highly  proper  that  a  question  of  this 
nature  should  be  left  to  the  judgment  of 
those  whose  training  has  rendered  them  pecu- 
liarly fitted  for  its  decision.  Hence,  it  is  not 
within  the  province  of  this  court  to  interfere 
by  writ  of  mandamus."  *United  States  ex  rel. 
Lang  V.  Moore,  Commissioner  of  Patents,  C. 
D.  1011,  172  O.  G.  8:^4. 

36.  Where  the  original  claims  of  an  appli- 
cation and  those  presented  in  successive 
amendments  were  each  time  rejected  on  the 
general  ground  that  they  failed  to  disclose 
a  patentable  invention  over  certain  references, 
Held,  that  "the  question,  whether  or  not  the 
difference  in  the  phraseology  of  the  rejec- 
tions, coupled  with  the  fact  that  two  more 
references  were  cited  against  the  claim  of 
July  13  than  against  that  of  April  ,3,  although 
all  had  previously  been  made  of  record,  con- 
stituted 'new  references  or  reasons  for  re- 
jection,' within  the  meaning  of  the  rules,  was 
purely  a  question  relating  to  practice,  exclu- 
sively within  the  jurisdiction  of  the  com- 
missioner. With  his  ruling  thereon  this  court 
has  no  power  to  interfere  in  a  proceeding  like 
the  present.  A  writ  of  mandamus  cannot 
take  the  place  of  an  appeal."    *Id. 


invention  or  making  it  necessary  for  the 
party  against  whom  they  are  cited  to  under- 
stand the  inventions  in  order  to  appreciate 
the  pertinence  of  the  decisions  to  the  matter 
under  consideration.     Id. 


MANUSCRIPT  DECISIONS. 

!•  Where  in  his  answer  to  an  appeal  to  the 
e.xaminers-in-chief  the  primary  examiner  re- 
fers to  a  decision  by  that  tribunal  in  regard 
to  another  pending  application  holding  that 
a  similar  invention  was  not  patentable,  Held, 
that  the  reference  will  be  canceled  from  the 
answer.  Ex  parte  Morlcy,  C.  D.  19n2,  99  O. 
G.  668. 

2.  An  applicant  should  be  fully  informed 
of  the  reasons  for  rejection  and  given  an  op- 
portunity to  meet  them,  and  therefore  in  the 
treatment  of  one  case  reference  should  not 
be  made  to  another  case  filed  by  a  different 
party  to  which  the  applicant  cannot  have  ac- 
cess.    Id. 

3.  Manuscript  decisions  of  the  examiners-in- 
chief  and  of  the  commissioner  may  be  cited 
in  support  of  some  contention  of  law  if  it 
can  be  done  without  disclosing  the  applicant's 


MODELS. 

1.  A  model  is  only  necessary  as  an  alter- 
native of  failure  to  properly  describe  an  in- 
vention, and  this  defect  can  often  be  removed 
by  compliance  with  objections  definitely  stated 
by  the  examiner.  E.x  parte  Isenhart,  C.  D. 
1899,  87  O.  G.  179. 

2.  Where  the  disclosure  of  an  invention  is 
so  vague  and  indefinite  that  the  construction 
or  alleged  mode  of  operation  cannot  be  under- 
stood, a  model  is  often  desirable  in  order  to 
make  possible  an  intelligent  examination.  In 
such  case  action  upon  the  merits  should  be 
suspended.  Ex  parte  Stocker,  C.  D.  1902,  98 
O.  G.  1705. 

3.  Where  the  disclosure  of  the  invention  is 
clear  and  complete,  but  the  examiner  takes 
the  position  that  it  is  not  operative,  as  stated. 
Held,  that  he  should  not  require  a  model  and 
suspend  action  upon  the  merits,  but  should 
reject  the  claims.     Id. 

4.  Where  it  appears  that  the  examiner  has 
given  careful  consideration  to  an  application 
and  it  is  apparent  that  the  disclosure  is  such 
that  the  application  cannot  be  intelligently 
acted  upon  as  to  its  merits  and  the  examiner 
cannot  give  suggestions  as  to  how  the  de- 
scription can  be  improved  or  what  portion  of 
the  machine  should  be  further  illustrated,  in- 
asmuch as  he  is  unable  to  understand  the  ma- 
chine as  at  present  described,  Held,  that  the 
examiner  was  justified  in  requiring  a  model 
or  a  full-sized  machine  to  be  filed.  Ex  parte 
McTammany  and  Wright,  C.  D.  1903,  103  O. 
G.  661. 

5.  Exhibits  filed  as  part  of  the  record  of 
proceedings  in  this  office  will  not  be  sent  to 
a  notary  for  use  in  presenting  testimony  in 
other  proceedings  except  upon  the  consent 
of  all  interested  parties.  They  will,  however, 
be  sent  in  charge  of  an  employee  of  the  of- 
fice. Seller  v.  Goldberg,  C.  D.  1905,  116  O.  G. 
595. 

6.  Models  filed  during  the  prosecution  of  an 
application  for  patent,  but  not  entered  as  part 
of  the  record  thereof,  will  not  be  so  entered 
after  the  grant  of  the  patent.  Ex  parte  Strat- 
ton  and  Claremont,  C.  D.  1910,  157  O.  G.  755. 


NOTARY— OATH  TO  APPLICATION,  1. 


465 


NOTARY. 

1-  A  motion  to  strike  out  a  preliminary 
statement  because  sworn  to  before  the  party's 
attorney  as  a  notary  public  was  properly  de- 
nied, since  there  is  nothing  in  the  rules  or 
the  practice  under  them  to  disqualify  an  at- 
torney from  acting  as  a  notary  public  in  such 
case.  Bundy  v.  Rumbarger,  C.  D.  1900,  91 
O.  G.  2210. 

2.  There  is  not  only  no  authority  for  strik- 
ing from  the  record  a  preliminary  statement 
because  executed  before  the  party's  attorney 
as  a  notary  public,  but  there  is  no  good 
ground  for  holding  it  informal  and  requiring 
him  to  file  another  statement.    Id. 

3.  Since  preliminary  statements  are  not  re- 
quired by  the  statute  and  cannot  be  used  as 
evidence,  the  requirement  that  they  be  filed  is 
merely  an  executive  matter  relating  to  the 
formal  procedure  in  the  office  and  is  insisted 
upon  merely  for  the  proper  administration  of 
the  work.  No  question  as  to  the  validity  of 
a  preliminary  statement  therefore  arises,  but 
merely  the  question  as  to  whether  it  is  in 
proper  form.     Id. 

4.  A  separate  certificate  by  a  United  States 
consul  as  to  the  authority  of  a  foreign  no- 
tary public  to  administer  oaths  to  applica- 
tions should  be  filed  in  each  case.  A  general 
certificate  of  authority  cannot  be  filed  and 
applied  to  all  cases  executed  before  the  notary. 
In  re  Fred  G.  Dieterich  &  Company,  C.  D. 
1904,  110  O.  G.  301. 

5.  The  act  of  June  29,  1906,  amending  sec- 
tion 558  of  the  code  of  the  District  of  Co- 
lumbia relative  to  the  powers  of  notaries 
public,  is  of  local  application  only.  Ex  parte 
Hipp,  C.  D.  1907,  126  O.  G.  2189. 

6.  Held,  that  the  "proviso" — "And  provided 
further.  That  no  notary  public  shall  be  au- 
thorized to  take  acknowledgments,  administer 
oaths,  certify  papers,  or  perform  any  official 
acts  in  connection  with  matters  in  which  he 
is  employed  as  counsel,  attorney,  or  agent  in 
which  he  may  be  in  any  way  interested  before 
any  of  the  departments  aforesaid" — in  the  re- 
cent act  of  congress  amending  section  538 
of  the  code  of  the  District  of  Columbia  ap- 
plies to  all  notaries  who  may  practice  before 
the  departments  and  not  merely  to  notaries 
of  the  District  of  Columbia.  ^Opinion  of  the 
Attorney-General,  C.  D.  1907,  127  O.  G.  3642. 

7.  Held,  that  the  provisions  of  section  .)58 
of  the  code  of  the  District  of  Columbia,  which 
provides  that  no  notary  public  shall  be  author- 

30 


ized  to  take  acknowledgments,  administer 
oaths,  certify  papers,  or  perform  any  official 
acts  in  connection  with  matters  in  which  he  is 
employed  as  counsel,  attorney,  or  agent,  or 
in  which  he  may  be  in  any  way  interested,  for 
any  of  the  departments  of  the  United  States 
government  in  the  District  of  Columbia  or 
elsewhere,  applies  to  all  notaries,  whether 
within  or  without  the  District  of  Columbia. 
*The  Hall's  Safe  Company  v.  Herring-Hall- 
Marvin  Safe  Company,  C.  D.  1908,  135  O.  G. 
1804. 


OATH  TO  APPLICATION. 

1.  Original. 

2.  Supplemental. 

3.  Delay  in  Filing  Application. 

4.  Reissue. 

5.  Design. 

1.  Original. 

1.  The  statement  by  an  applicant  in  his 
oath  that  he  does  not  know  that  the  inven- 
tion was  ever  before  known  or  used  and  that 
it  has  not  to  his  knowledge  been  in  public 
use  for  more  than  two  years  prior  to  the 
filing  of  his  application  is  not  sufficient,  since 
the  statute  and  rule  require  that  these  state- 
ments be  made  upon  belief  as  well  as  upon 
knowledge.  Ex  parte  Buddington,  1898,  84 
O.  G.  1728. 

2.  The  oath  must  state  that  no  foreign  ap- 
plication has  been  filed  before  the  filing  of 
this  application  or  give  the  data  of  any  such 
applications  which  have  been  filed  as  required 
in  Rule  46,  and  it  is  not  sufficient  to  state 
that  no  foreign  application  has  been  filed  more 
than  seven  months  before  this  application.    Id. 

3.  The  forms  given  in  the  Rules  of  Practice 
for  adoption  by  applicants  are  merely  sugges- 
tive, and  a  mistake  in  them  furnishes  no 
ground  upon  which  the  requirements  of  the 
rules  may  be  disregarded.     Id. 

4.  An  oath  executed  before  a  judge  of  the 
Imperial  Royal  District  Court  of  Austria  and 
filed  in  this  office  as  part  of  an  application  for 
patent  cannot  be  accepted,  as  it  is  not  a  legal 
oath  under  the  statutes.  (Ex  parte  Gruson 
and  Schumann,  C.  D.  1884,  2,  26  O.  G.  274, 
cited.)  Ex  parte  Wolski  et  al.,  C.  D.  1898, 
84  O.  G.  2022. 

5.  As  Rules  10  and  32  of  the  Rules  of  Prac- 
tice require  that  a  letter  concerning  an  appli- 
cation must  properly  identify  the  application, 


466 


OATH  TO  APPLICATION,  1. 


and  that  when  all  parts  of  an  application  are 
not  filed  together  a  letter  should  accompany 
each  part  accurately  and  clearly  connecting 
it  with  the  other  parts  of  the  application, 
Held,  that  these  rules  apply  to  an  oath  as 
well  as  to  any  other  papers  relating  to  an  ap- 
plication. Ex  parte  Heusch,  C.  D.  1899,  88 
O.  G.  1703. 

6.  Where  applicant  filed  a  new  oath  in  com- 
pliance with  the  requirement  of  the  exam- 
iner and  said  oath  referred  to  "the  annexed 
specification"  and  no  such  specification  accom- 
panied the  oath,  but  the  oath  was  intended 
to  apply  to  an  application  already  on  file,  Held, 
that  the  oath  did  not  properly  identify  the 
application  by  serial  number  and  date  of  fil- 
ing and  that  a  new  oath  should  be  furnished 
properly  identifying  the  application  to  which 
it  is  to  be  applied.     Id. 

7.  An  oath  to  an  application  stating  that 
the  applicant  believes  that  the  improvement 
was  not  known  or  used  in  the  United  States 
before  his  invention.  Held,  not  a  compliance 
with  section  4892  of  the  Revised  Statutes, 
since  it  is  limited  by  its  terms  to  the  United 
States  and  fails  to  state  that  he  "does  not 
know"  that  the  invention  was  ever  before 
known.  Ex  parte  Nicholson,  C.  D.  1901,  96 
O.  G.  1035. 

8.  The  word  "believe"  in  an  oath  cannot  be 
held  to  include  the  whole  meaning  of  the 
words  "know  and  believe"  as  such  in  the  stat- 
ute, since  knowledge  and  belief  are  different 
things  and  since  effect  must  be  given,  if  pos- 
sible, to  every  clause  and  word  of  a  statute. 
Id. 

9.  Where  the  oath  to  a  divisional  applica- 
tion referred  to  the  original  case,  but  failed 
to  make  the  allegations  as  to  public  use  and 
prior  publication  required  by  the  rules.  Held, 
that  the  application  was  properly  treated  as 
incomplete.  Ex  parte  Halsey,  C.  D.  1903,  102 
O.  G.  1293. 

10.  The  oath  to  a  divisional  application  must 
be  complete  within  itself  and  must  contain  all 
of  the  allegations  required  by  the  rule  to  make 
out  a  prima  facie  case  of  the  applicant's  right 
to  a  patent.    Id. 

11.  The  oath  in  a  divisional  case  cannot  be 
supplemented  by  the  oath  in  the  original  case; 
but  it  may  by  a  mere  change  in  form  make  it 
appear  that  the  allegations  as  to  publications 
and  public  use  have  reference  to  the  date 
of  the  original  case.    Id. 

12.  Where  the  oath  to  a  joint  application  al- 
leges that  the  parties  are  sole  inventors.  Held, 


that  a  new  oath  alleging  that  they  are  joint 
inventors  must  be  filed.  The  oath  must  make 
out  a  prima  facie  right  to  a  patent.  Ex  parte 
Cole,  C.  D.  1903,  105  O.  G.  744. 

13.  Where  the  oath  does  not  state  the  appli- 
cant's citizenship,  but  states  that  he  has  de- 
clared his  intention  of  becoming  a  citizen  of 
this  country.  Held,  that  it  is  defective  and  a 
new  oath  should  be  required.  Ex  parte 
Rhodes,  C.  D.  1903,  105  O.  G.  1261. 

14.  The  provisions  of  Rule  46,  relating  to 
the  oath  which  forms  a  part  of  an  application 
for  a  patent,  must  be  strictly  followed.  To 
rule  otherwise  would  cause  endless  confusion 
in  determining  whether  or  not  language 
chosen  by  the  applicant  in  his  oath  was  suffi- 
cient to  comply  with  the  requirements  of  the 
statute.  Ex  parte  Thorsten  von  Zweibergk, 
C.  D.  1904,  110  O.  G.  859. 

15.  The  oath  must  positively  state  that  the 
invention  has  not  been  patented  in  a  foreign 
country  on  an  application  filed  by  the  in- 
ventor, his  legal  representatives,  or  assigns 
more  than  twelve  months  prior  to  his  applica- 
tion in  this  country.  Ex  parte  Levenstein  and 
Naef,  C.  D.  1904,  110  O.  G.  1726. 

16.  Every  portion  of  Rule  46  is  material, 
and  a  compliance  with  some  of  its  require- 
ments is  not  a  compliance  with  all  of  them. 
Id. 

17.  Where  the  applicant  in  his  oath  cited  his 
foreign  application  and  stated  that  no  other 
foreign  application  had  been  filed  and  that  no 
patent  had  been  granted  upon  an  application 
filed  in  any  foreign  country  more  than  twelve 
months  before  the  date  of  the  domestic  ap- 
plication. Held,  that  the  applicant  has  made 
every  allegation  respecting  his  foreign  appli- 
cations and  patents  required  by  the  rule  or  by 
the  decision  in  the  case  of  Ex  parte  Leven- 
stein and  Naef  (C.  D.  1904,  217,  110  O.  G. 
1726)  and  the  notice  concerning  this  decision 
in  the  Official  Gazette,  volume  110,  page  2239, 
when  said  decision  and  notice  are  properly 
construed,  and  the  requirement  that  he  should 
further  state  that  the  foreign  application  was 
not  filed  more  than  twelve  months  prior  to 
the  filing  of  the  domestic  application  is  im- 
proper. Ex  parte  Girardot,  C.  D.  1905,  115  O. 
G.  1584. 

18.  Where  the  original  oath  accompanying 
the  application  contained  no  statement  of 
venue.  Held,  that  the  applicant  should  either 
file  a  new  oath  provided  with  a  venue  or 
should  furnish  the  affidavit  of  the  notary  who 


OATH  TO  APPLICATION,  2,  3. 


467 


administered  the  original  oath,  stating  where 
that  oath  was  administered.  Ex  parte  Dela- 
voye,  C.  D.  1906,  124  O.  G.  626. 

19.  The  decision  of  the  commissioner  of 
patents  ruling  that  defects  in  the  application 
oath  of  one  of  the  parties,  if  there  were  such, 
might  be  corrected  after  the  termination  of 
the  interference  is  judicial  or  quasi-judicial 
in  character  and  subject  only  to  review  by  the 
courts,  and  the  Secretary  of  the  Interior  has 
no  appellate  or  supervisory  control  of  the 
matter.  fDukesmith  v.  Corrington  v.  Turner, 
C.  D.  1907,  126  O.  G.  3425. 

20.  Where  an  applicant  is  not  a  citizen  of 
any  country  and  so  alleges  in  his  oath,  Held, 
to  be  a  proper  compliance  with  the  require- 
ments of  section  4892,  Revised  Statutes,  and 
that  this  section  should  not  be  construed  as 
requiring  citizenship  of  some  country  as  a 
condition  precedent  to  the  grant  of  a  patent. 
Ex  parte  Benccke,  C.  D.  1907,  126  O.  G.  3423. 

21.  Where  the  oath  forming  part  of  the 
application  papers  is  executed  before  the  at- 
torney in  the  case  as  notary,  the  oath  is  in- 
valid and  without  legal  effect.  Riegger  v. 
Beierly,  C.  D.  1910,  150  O.  G.  826. 

22.  Applications  in  which  the  oath  is  exe- 
cuted before  the  attorney  will  not  be  for- 
warded to  the  examiner,  but  notice  to  file  a 
proper  oath  will  be  given  applicant,  and  the 
application  will  not  be  given  a  date  and  serial 
number  until  the  papers  are  so  completed.  Id. 

23.  The  omission  of  the  word  "sole"  in  the 
oath  accompanying  an  application  for  patent. 
Held,  not  such  a  vital  defect  as  to  render  the 
oath  invalid.  (Riegger  v.  Beierl,  ante,  12,  150 
O.  G.  826,  distinguished.)  Ex  parte  Mygatt, 
C   D.  1910,  160  O.  G.  773. 

2.  Supplemental. 

24.  The  question  as  to  whether  a  supple- 
mental oath  should  or  should  not  be  fur- 
nished is  an  ex  parte  matter  not  open  to  ar- 
gument in  interference  proceedings.  Kane 
V.  Brill  and  Adams,  C.  D.  1898,  84  O.  G.  1142. 

25.  A  supplemental  oath,  like  the  original 
oath,  must  be  executed  by  the  inventor,  if  he 
is  alive,  and  where  executed  by  the  assignee 
it  cannot  be  accepted  as  sufficient.  E-^c  parte 
Richards,  C.  D.  1900,  95  O.  G.  1853. 

26.  The  question  whether  or  not  a  party 
should  be  called  upon  for  a  supplemental  oath 
is  an  ex  parte  matter  not  open  to  argument 
in  an  interference  proceeding.  Silverman  v. 
Hcndrickson,  C.  D.  1902,  99  O.  G.  445. 


27.  Where  a  supplemental  oath  is  required 
in  support  of  a  claim.  Held,  that  the  require- 
ment does  not  relate  to  the  merits  and  should 
be  disposed  of  before  forwarding  an  appeal 
to  the  examiners-in-chief.  (Rule  64.)  Ex 
parte  Matthcs,  C.  D.  1902,  101  O.  G.  3108. 

28.  Where  a  claim  originally  presented  is 
broad  enough  to  cover  other  forms  of  the  in- 
vention as  well  as  the  specific  form  shown  and 
described.  Held,  that  a  supplemental  oath  is 
not  necessary  to  support  a  specific  claim  to  the 
form  disclosed.     Id. 

29.  Where  an  application  as  filed  was  lim- 
ited to  a  process  and  thereafter  an  amendment 
was  presented  including  article  claims.  Held, 
that  the  examiner  properly  refused  to  admit 
the  amendment  in  the  absence  of  a  supple- 
mental oath.  Ex  parte  Ruckrich  and  Bode, 
C.  D.  1903,  106  O.  G.  765. 

30.  Where  an  amendment  is  filed  claiming 
matter  not  covered  by  the  original  statement 
of  invention  or  claim.  Held,  that  a  supple- 
mental oath  should  be  attached  to  the  amend- 
ment, since  an  oath  to  matter  presented  for 
the  first  time  after  filing  is  just  as  important 
as  is  the  original  oath.     Id. 

31.  An  amendment  which  requires  a  supple- 
mental oath  should  ordinarily  be  refused  ad- 
mission in  the  absence  of  such  oath.  Where 
great  hardship  or  irreparable  injury  is  shown, 
the  requirement  may  be  waived  temporarily. 
Id. 

32.  Held,  that  the  requirement  for  a  supple- 
mental oath  should  be  disposed  of  before  an 
appeal  is  forwarded.  Ex  parte  Teller,  C.  D. 
1904,  113  O.  G.  548, 

33.  Where  the  alleged  invention  is  a  means 
for  transporting  butter  in  a  certain  form  of 
container  and  this  container  is  described  and 
claimed  in  the  original  application  as  a  "can," 
Held,  that  a  supplemental  oath  should  not  be 
required  to  support  the  statement  that  the 
"original  package  consists  of  a  can."     Id. 

3.  Delay  in  Filing  Application. 

34.  An  additional  oath  will  be  required 
under  Rule  46  where  the  delay  in  filing  the 
application  after  the  execution  of  the  original 
oath  is  longer  than  three  weeks  in  addition  to 
the  time  which  may  naturally  be  expected  to 
be  required  in  transmitting  the  papers  by  mail 
to  the  patent  oflice.  Ex  parte  Branna,  C.  D. 
1901,  97  O.  G.  2.-)33. 

35.  In  cases  where  there  has  been  a  longer 
delay  than  three  weeks  in  filing  the  application 


468 


PANAMA  CANAL  ZONE,  PHILIPPINE  ISLANDS. 


the  office  may  in  its  discretion  waive  the  re- 
quirement for  an  additional  oath  upon  a  show- 
ing of  special  reasons  excusing  the  delay  or 
of  special  hardship  resulting  from  the  re- 
quirement, but  not  in  cases  of  long  and  un- 
reasonable delays.    Id. 

36.  Where  the  application  is  not  filed  within 
a  reasonable  time  after  the  execution  of  the 
oath,  Held,  that  a  new  oath  must  be  furnished. 
Ex  parte  Ilicks,  C.  D.  1903,  104  O.  G.  309. 

37.  Where  the  oath  to  an  application  is 
executed  more  than  nineteen  months  prior 
to  the  filing  of  the  application,  a  new  oath 
cannot  be  waived  on  a  mere  allegation  that 
differences  have  arisen  between  the  inventor 
and  assignee  by  reason  of  which  the  inventor 
refuses  to  execute  another  oath.  Where  there 
is  such  long  delay,  the  requirement  for  a  new 
oath  can  be  waived  only  upon  a  showing  of 
the  most  satisfactory  character.  Ex  parte 
Hoschke,  C.  D.  1906,  122  O.  G.  1045. 

38.  Where  a  petition,  oath,  specification,  and 
drawing  were  filed  in  the  office  on  a  certain 
date,  but  the  fee  was  not  paid  until  over  four 
months  l^ter,  a  new  oath  was  properly  re- 
quired. Ex  parte  Miller,  C.  D.  1908,  137  O. 
G.  1943. 

39.  Affidavits  tending  to  show  that  the  oath 
in  an  application  was  executed  later  than  it 
purported  to  be  executed.  Meld,  insufficient  to 
excuse  filing  a  substitute  oath  under  the  prac- 
tice laid  down  in  Ex  parte  Branna  (C.  D. 
1901,  232,  97  O.  G.  2.')33),  but  rather  to  con- 
stitute an  additional  reason  for  requiring  a 
new  oath.  Ex  parte  Tillman,  C.  D.  1909,  145 
O.  G.  1023. 

4.  Reissue. 

40.  A  formal  requirement  that  the  oath  of 
a  reissue  application  be  supplemented  by  a 
particular  statement  of  the  circumstances  at- 
tendant upon  the  making  of  the  original  ap- 
plication is  not  warranted.  This  is  a  ground 
of  rejection.  E.x  parte  Janowitz,  C.  D.  1898, 
85  O.  G.  152. 

41.  The  question  of  the  sufficiency  of  a  re- 
issue affidavit  relates  to  the  merits.  The  ques- 
tion of  its  definiteness  is  a  subject  for  peti- 
tion to  be  raised  by  objection.    Id. 

42.  An  applicant  need  not  be  required  as  a 
condition  precedent  to  consideration  of  a  re- 
issue application  to  recount  all  the  reasons 
which  prevented  a  compliance  with  the  stat- 
ute in  filing  his  original  application.     Id. 


43.  The  fact  that  a  new  device  may  have 
displaced  others  by  reason  of  its  manifest 
superiority  is  material  only  when  the  ques- 
tion of  patentability  is  otherwise  a  matter  of 
doubt.  *Miller  et  al.  v.  Allen,  Commissioner 
of    Patents,   C.   D,   1906,    124   O.   G.   1524. 

44.  The  oath  filed  by  an  applicant  for  re- 
issue should  not  be  entirely  ignored,  but  must 
be  traversed  by  the  patent  office.  *In  re 
Briede,  C.  D.  1906,  123  O.  G.  322. 

5.  Design. 

45.  The  act  of  congress,  approved  March  3, 
1897,  amending  sections  4886  and  4887,  Re- 
vised Statutes,  so  that  an  invention  which  has 
been  described  in  a  patent  or  printed  publica- 
tion more  than  two  years  prior  to  the  appli- 
cation for  a  patent  or  which  has  been  pat- 
ented in  a  foreign  country  on  an  application 
filed  in  the  foreign  country  more  than  seven 
months  prior  to  filing  the  application  in  this 
country  cannot  be  patented  apply  to  design 
inventions,  and  an  oath  to  a  design  applica- 
tion must  comply  with  the  statute  as  amended. 
Ex  parte  Hartman,  C.  D.  1898,  84  O.  G.  648. 


PANAMA   CANAL   ZONE,  PHILIPPINE   IS- 
LANDS, ETC. 

1.  The  statute  does  not  provide  for  the  reg- 
istration of  a  generic  trade-mark — one  em- 
bracing something  more  than  has  been  used 
and  more  than  applicant  is  entitled  to  use. 
Ex  parte  Hall,  C.  D.  1902,  98  O.  G.  2174. 

2.  The  trade-mark  law  regulating  our  ar- 
rangements with  foreign  countries  and  refer- 
ring to  treaties  and  conventions  upon  the 
same  subject  should  be  liberally  construed 
and  treated  as  concerning  the  United  States 
in  a  very  broad  sense  and  as  including  not 
only  the  states,  but  all  organized  territories. 
JTrade-Marks.  Rights  of  Residents  of  Porto 
Rico,  Cuba,  and  Philippine  Islands  to  Register, 
C.  D.  1902,  98  O.  G.  2175. 

3.  Porto  Rico  has  been  added  to  the  other 
territories  similarly  and  completely  organized, 
and  therefore  residents  thereof  are  entitled 
to  register  trade-marks  in  this  country,     tid. 

4.  Cuba  is  a  foreign  country  and  persons 
domiciled  there  are  not  domiciled  in  the  Unit- 
ed States  within  the  meaning  of  the  trade- 
mark law ;  but  that  country  is  now  governed 
by  ourselves  and  laws  have  been  passed  there 
giving  to  citizens  of  the  United  States  privi- 


PATENTABILITY  AND  INVENTION. 


4C9 


leges  in  regard  to  trade-marks  similar  to 
those  given  here.  Held,  therefore,  that  resi- 
dents of  Cuba  may  register  trade-marks  in 
this  country.     Jld. 

5.  The  PhiHppine  Islands  are  not  a  part  of 
the  United  States  or  completely-organized 
territories  within  the  meaning  of  section  1981 
of  the  Revised  Statutes,  and  the  legislation 
and  executive  orders  relating  to  them  cannot 
be  considered  a  treaty  or  convention  within 
the  meaning  of  the  trade-mark  law.  Held, 
therefore,  that  residents  of  the  Philippines  are 
not  entitled  to  register  trade-marks  in  this 
country.    Jld. 

6.  The  rights  of  patentees  and  trade-mark 
registrants  in  this  country  do  not  extend  to 
the  Panama  canal  zone,  fin  re  Panama  Canal 
Zone,  C.  D.  1904,  113  O.  G.  2503. 

7.  The  Panama  canal  zone  is  not  an  organ- 
ized territory  of  this  country,  and  there  is  no 
provision  in  the  treaty,  laws,  or  regulations 
making  the  laws  of  the  United  States  gen- 
erally applicable,  nor  is  there  any  provision 
specifically  making  the  patent  laws  and  the 
laws  relating  to  the  registration  of  trade- 
marks and  labels  applicable  thereto,    fid. 

8.  Where  patents  were  delivered  in  Spain 
before  August  30,  1899,  and  extended  to  the 
Philippine  Islands,  the  annual  tax  required 
by  the  Spanish  law  to  keep  the  patents  in 
force  should  be  paid  to  the  office  of  patents, 
copyrights,  and  trade-marks  in  the  Philip- 
pines. tProtection  of  Spanish  Patents  in  the 
Philippine  Islands,  C.  D.  1905,  114  O.  G. 
2094. 

9.  Under  Spanish  law  a  patent  became 
void  by  failure  to  pay  the  annual  tax  in  ad- 
vance; but  in  such  case  a  declaration  of  null- 
ity and  other  formalities  were  necessary  after 
non-payment  of  the  tax.  Under  the  code  for 
the  Philippines  an  action  by  the  government  in 
the  courts  to  have  the  patent  declared  invalid 
is  necessary,    fid. 

10.  The  question  whether  the  payment  of 
the  annual  taxes  in  Madrid  was  sufficient 
to  keep  the  patents  in  force  and  the  question 
whether  the  payment  in  the  Philippines  of  the 
arrears  in  taxes  would  re-establish  the  pat- 
entee rights  are  questions  for  the  determina- 
tion of  the  courts  of  the  Philippine  Islands, 
tid. 

11.  The  Trade-Mark  Act  of  1905,  sections 
1  and  29,  construed  and  Held,  that  under  this 
act  residents  of  the  Philippine  Islands  are  en- 
titled to  register  trade-marks  in  this  country. 


(Opinion  of  the  Attorney-General,  C.  D.  1902, 
493,  98  D.  C.  2175,  23  Op.  635,  distinguished.) 
tin  re  Philippine  Islands,  C.  D.  1909,  147  O. 
G.  239. 


PATENTABILITY  AND  INVENTION. 

I.  In  General. 
II.  Invention  and  Skill  Distinguished. 

(a)  Merely  Mechanical  Skill. 

(b)  More  than  Mechanical  Skill. 

III.  Extensive  Use. 

IV.  Utility. 

V.  Rule  as  to  Doubtful  Cases. 
VI.  Held  Patentable. 

(a)  Combination. 

(b)  Use  in  Non  Analogous  Art. 

(c)  Process  or  Method. 

1.  In  General. 

2.  Not  mere  Function  of  Machine. 

(d)  Composition  of  Matter. 

(e)  New  Combination  of  Old  Elements 

— New  Results. 

(f)  Reorganization. 

(g)  Useful — Long    Undiscovered. 

(h)  Substitution  or  Use  of  Proper  Ma- 
terial or  Parts. 
(i)  Particular  Cases. 
VII.  Not  Held  Patentable. 

(a)  Aggregation  or  Unpatentable  Com- 
bination. 

(b)  Novelty  in  Part  of  Old  Combina- 
tion. 

(c)  Arrangement. 

(d)  Composition  of  Matter. 

(e)  Degree  or  Duplication. 

(f)  Double  or  Analogous  Use. 

(g)  Process,  Mere  Function  of  Machine. 
(h)  Omission  of  Part  with  its  Function. 
(i)  Process  or  Method. 

(j)  Substitution  or  Use  of  Proper  Ma- 
terial or  Parts. 

(k)  .Making  Integral  or  Separate. 

(1)  Defect  Apparent — Remedy  Obvious. 

(m)  Design   .Merely. 

(n)  Slight    Change     in    Structure — No 
New  Result. 

(o)  .Method  of  Doing  Business. 

(p)   Carrying  Forward  Old  Idea. 

(q)  Reversal  of  Parts. 

(r)  Not  Statutory  Subject. 
(s)  Many  Applications  for  Same  Inven- 
tion. 

(t)  Printed  .Matter. 

(u)  Particular  Cases. 


470 


PATENTABILITY  AND  INVENTION,  I,  II,  (a). 


I.  In  General. 

1-  An  inventor  is  charged  with  knowledge 
of  the  prior  art  as  exhibited  in  prior  patents 
whether  he  had  actual  knowledge  of  them  or 
not.  *MilIett  et  al.  v.  Allen,  Commissioner 
of  Patents,  C.  D.  19U6,  124  O.  G.  1524. 

2.  "When  we  are  dealing  with  electricity,  an 
invisible,  intangible  agency,  and  in  itself  of 
different  kinds,  and  when  we  know  that  in  its 
different  phases  it  may  affect,  or  be  affected 
by,  metals  and  appliances  in  different  ways 
and  with  wholly  different  results,  we  must 
guard  against  being  misled  by  the  mere  su- 
perficial resemblances  of  the  appliances  and 
machines  used  in  connection  with  it;  for  from 
an  electrical  standpoint  the  real  significance 
of  such  appliance  lies,  not  in  their  material, 
e.xternal  appearance,  but  in  their  working  ef- 
fect under  the  influence  of  diverse  electrical 
factors."  d  Westinghouse  Electric  &  Manu- 
facturing Company  v.  Allis-Chalmers  Com- 
pany, C.  D.  1910,  158  O.  G.  482. 

3.  "Patentable  novelty  in  a  case  like  the 
present  may  be  founded  upon  superior  effi- 
ciency; upon  superior  durability,  including 
the  ability  to  retain  a  permanent  form  when 
exposed  to  the  atmosphere ;  upon  a  lesser 
tendency  to  breakage  and  loss;  upon  purity, 
and,  in  connection  with  other  things,  upon 
comparative  cheapness.  So,  as  supplementing 
other  considerations,  commercial  success  may 
properly  be  compared  with  mere  laboratory 
experiments."  d  Union  Carbide  Co.  v.  Amer- 
ican Carbide  Co.,  C.  D.  1910,  160  O.  G.  493. 

II.  Invention  and  Skill  Distinguished. 
(a)  Merely  Mechanieal  Skill. 

4.  Claim  2  of  letters  patent  No.  472,095, 
granted  April  5,  1892,  to  Charles  H.  Willcox 
and  Stockton  Borton,  for  a  sewing-machine, 
cannot  be  sustained,  since  the  changes  set 
forth  over  the  prior  art  involve  merely  the 
exercise  of  mechanical  skill,  d  Willcox  & 
Gibbs  Sewing  Machine  Company  v.  The  Mer- 
row  Machine  Company  et  al.,  C.  D.  1898,  85 
O.  G.  1078. 

5.  Where  a  patentee  applied  an  old  com- 
bination to  a  new  purpose  in  a  machine  where 
it  had  not  before  been  used  for  that  purpose. 
Held,  that  such  transfer  did  not  rise  to  the 
dignity  of  invention,  although  the  result  may 
have  added  to  the  efficiency  and  popularity  of 
the  early  device.    **Mast,  Foos  &  Company  v. 


Stover  Manufacturing  Company,   C.   D.   1900, 
91  O.  G.  1239. 

6.  The  line  between  invention  and  mechan- 
ical skill  is  often  an  exceedingly  difficult  one 
to  draw;  but  the  application  of  an  old  device 
to  a  use  which  was  only  new  in  the  particular 
machine  to  which  it  was  applied  was  nothing 
more  than  would  have  been  suggested  to  an 
intelligent  mechanic  who  had  before  him  the 
anticipating  references.     **Id. 

7.  While  it  is  true  that  the  fact  that  a 
change  had  not  occurred  to  any  mechanic 
familiar  with  the  art  is  evidence  of  some- 
thing more  than  mechanical  skill  in  the  per- 
son who  made  it,  and  it  is  probable  that  no 
one  was  fully  aware  of  the  date  of  the  art 
and  the  prior  device,  yet  in  determining  the 
question  of  invention  it  must  be  presumed 
that  the  patentee  was  fully  informed  of  every- 
thing which  preceded  him.    ♦*Id. 

8.  An  improvement  in  musical  notation 
which  consists  in  dividing  the  whole  tone  first 
by  three  and  then  successively  by  two,  where- 
by the  expression  of  whole  tones  and  one- 
third,  one-sixth,  one-twelfth,  one  twenty- 
fourth  tones,  etc.,  are  obtained,  Held,  to  be 
not  patentable.  *Beswick  v.  Duell,  Commis- 
sioner of  Patents,  C.  D.  1900,  91  O.  G.  1436. 

9.  Letters  Patent  No.  348,289,  granted  Aug- 
ust 31,  1886,  to  Edward  W.  McKenna,  for 
air-brake  attachment,  which  consists  of  a 
short  flexible  tube  with  a  coupling  on  one 
end  by  which  it  is  attached  to  the  train-pipe 
of  an  ordinary  air-brake  at  one  end  of  the 
car  and  a  stop-cock  at  the  other  end  which  is 
carried  up  so  as  to  be  conveniently  reached 
by  a  brakeman  on  the  platform  and  by  means 
of  which  the  air  from  the  train-pipe  can  be 
vented.  Held,  to  cover  a  device  which  is  mere- 
ly the  result  of  mechanical  skill  and  to  be  in- 
valid by  reason  of  lack  of  patentable  novelty  in 
view  of  the  prior  art.  c  Plumb  v.  New  York, 
New  Haven  &  Hartford  Railroad  Company 
et  al.,  C.  D.  1900,  91  O.  G.  820. 

10.  To  make  the  handle  of  a  knife  for 
cutting  hay  reversible  on  the  head  of  the 
shank  to  which  the  blade  is  attached  does  not 
require  anything  more  than  ordinary  mechan- 
ical ingenuity  and  does  not  involve  invention. 
*In  re  Iwan,  C.  D.  1901,  95  O.  G.  441. 

11-  It  is  not  every  improvement  that  will 
entitle  a  party  to  a  patent  therefor,  since  it 
must  be  shown  to  be  the  result  of  an  act  of 
invention  as  distinguished  from  an  act  of 
applied  skill  by  those  familiar  with  the  state 


PATENTABILITY  AND  INVENTION,  II,  (b). 


471 


of  the  art.     *In  re   Klemm,  C.   D.  1903,  103 
O.  G.  1682. 

12.  A  slide-scale  provided  with  logarithmic 
scales  on  its  coacting  members  representing 
a  particular  formula,  Held,  to  be  anticipated 
by  a  slide-scale  which  is  substantially  the  same 
as  to  its  mechanical  details,  but  is  provided 
with  logarithmic  scales  on  its  coacting  mem- 
bers representing  another  formula.  Ex  parte 
Merritt,  C.  D.  1903,  104  O.  G.  1393. 

13.  When  the  difference  between  the  scale 
defined  in  the  claims  and  those  shown  in  the 
references  lies  only  in  the  fact  that  one  old 
and  well-known  formula  has  been  substituted 
for  another.  Held,  to  be  only  the  skill  of  the 
mathematician  and  is  not  an  inventive  act. 
There  is  no  new  function  involved  in  the  sub- 
stitution of  one   formula  for  another.     Id. 

14.  Where  a  prior  patent  shows  a  rubber 
sole  vulcanized  to  the  inner  sole  with  an 
interposed  layer  of  rubber-coated  cloth,  Held, 
that  the  omission  of  the  cloth  does  not  in- 
volve invention,  but  mere  mechanical  skill. 
*In  re  Butterfield,  C.  D.  1904,  108  O.  G.  1589. 

15.  Not  even  the  ingenuity  of  a  skilled  me- 
chanic, much  less  the  inventive  faculty,  seems 
to  have  been  required  to  device  an  aggrega- 
tion or  combination  consisting  of  a  catalogue 
and  desk-pad  bound  together.  *In  re  Daven- 
port, C.  D.  1904,  110  O.  G.  2017. 

16.  The  method  of  grinding  down  the 
"hinge"  part  of  a  shell  to  use  a  portion  of 
it  which  was  formerly  wasted  is  no  more  than 
the  method  used  by  all  workers  in  stone, 
wood,  and  metal  of  first  dressing  an  irregu- 
lar surface  before  treating  it  to  obtain  the 
article  desired.  Ex  parte  Weber  and  Barry, 
Jr.,  C.  D.  1904,  111  O.  G.  2211. 

17.  While  such  an  old  method  applied  to 
this  particular  art  is  novel  and  useful.  Held, 
that  it  is  but  an  act  of  applied  skill  by  those 
familiar  with  the  state  of  the  art  and  does  not 
involve  invention.    Id. 

18.  Held,  in  view  of  the  state  of  the  art 
relating  to  combined  funnels  and  valves  and 
the  Baker  patent,  which  shows  a  reversible 
funnel  in  combination  with  a  valve,  that  using 
the  neck  of  a  funnel  as  part  of  a  plug-valve 
to  be  opened  by  turning  the  funnel  involves 
nothing  more  than  the  work  of  a  skilled  me- 
chanic. *In  re  Baker,  C.  D.  1906,  121  O.  G. 
1332. 

19.  To  increase  or  decrease  the  number  of 
intermediate  gear-wheels  in  the  train  of  gear- 
ing of  a  timepiece  from  the  number  shown  in 
the    reference   to    accommodate    the    mechan- 


ism to  the  size  of  the  case  and  still  maintain 
the  proper  value  between  the  rate  of  revolu- 
tion of  the  minute  and  hour  hands  is  within 
the  skill  of  the  mechanic  familiar  with  the 
art  and  does  not  involve  invention.  Ex  parte 
Volkmann  and  Truax,  C.  D.  1906,  124  O.  G. 
1843. 

20.  The  change  of  location  of  projections  on 
the  seat  portion  of  a  bed  couch.  Held,  to  relate 
to  mechanical  skill.  Ex  parte  Hoey,  C.  D. 
1907,  127  O.  G.  2815. 

21.  The  change  in  location  of  projections  on 
the  seat  portion  of  a  bed  couch  from  the 
upper  to  the  lower  side  of  the  seat  does  not 
amount  to  invention.  It  is  possible,  but  not 
apparent,  that  a  better  balance  of  the  seat 
and  back  is  secured  by  changing  these  pro- 
jections. It  is  possible  that  a  more  attractive 
exterior  is  thereby  presented.  It  is  possible 
that  a  more  salable  article  is  thereby  secured; 
but  all  this  does  not  prove  originality  of  in- 
vention. While  courts  deal  liberally  with  in- 
ventors in  sustaining  patents  having  but  slight 
distinctions  over  prior  structures,  they  do  not 
and  ought  not  to  permit  the  real  inventor  to 
be  deprived  of  the  fruits  of  his  genius  and 
labor  by  a  mere  copyist.  *In  re  Hoey,  C.  D. 
1907,  127  O.  G.  2817. 

22.  Where  the  device  shown  in  the  appli- 
cation differs  from  that  of  a  prior  patent 
merely  in  the  shape  of  the  grooves  in  which 
a  sealing  mixture  is  to  be  placed,  Held,  that 
it  would  be  a  mere  matter  of  mechanical  skill 
to  adapt  the  shape  of  the  grove  to  the  nature 
of  the  sealing  material  to  be  used.  Ex  parte 
Williams,   C.  D.   1907,  130  O.  G.  1688. 

23.  Where  the  claim  is  distinguishable  from 
the  prior  art  by  a  mere  arbitrary  variation 
which  amounts  only  to  a  change  in  mechanical 
design.  Held,  that  such  a  claim  is  unpatent- 
able. *In  re  Williams,  C.  D.  1907,  130  O.  G. 
1692. 

24.  The  Hovey  patent.  No.  876,058,  for  a 
railway  motor-velocipede,  discloses  nothing 
more  than  the  adaptation  of  an  old  motor  to 
an  old  vehicle,  in  an  old  way,  requiring  no 
more  than  mechanical  skill,  and  is  void,  for 
lack  of  patentable  invention,  d  Sheffield  Car 
Co.  v.  Buda  Foundry  &  Mfg.  Co.,  C  D.  1911, 
170  O.  G.  930. 

(b)  More  than  Mechanical  Skill 

25.  Held,  that  a  machine  for  attaching 
gummed  strips  to  the  corners  of  paper  boxes 
is  not  anticipated  by   machines   for   stitching 


472 


PATENTABILITY  AND  INVENTION,  III,  IV,  V. 


wire  or  attaching  metallic  stays,  since,  al- 
though the  possibility  of  adapting  the  devices 
to  that  use  might  occur  to  an  ordinary  me- 
chanic, it  could  not  be  carried  into  effect  with- 
out the  employment  of  something  more  than 
mechanical  skill.  *Hobbs  et  al.  v.  Beach,  C. 
D.  1901,  94  O.  G.  2357. 

III.  Extensive  Use. 

26.  Although  it  may  appear  that  a  device 
is  of  superior  utility  over  other  devices,  as  it 
has  gone  into  general  use,  the  fact  that  it 
has  gone  into  such  use,  even  to  the  displace- 
ment of  other  devices,  has  no  weight  upon  the 
question  of  patentable  novelty  except  when 
it  is  otherwise  in  doubt.  *Smith  v.  Duel,  Com- 
missioner of  Patents,  C.  D.  1899,  87  O.  G.  893. 

27.  Held,  that  the  fact  that  a  device  has 
resulted  in  commercial  success  where  those  of 
the  prior  art  have  not  can  only  have  weight 
when  the  question  of  patentability  of  the  de- 
vice claimed  is  in  doubt,  but  not  otherwise. 
Ex  parte  Thomson,  C.  D.  1905,  118  O.  G.  266. 

28.  A  patent  should  not  be  granted  merely 
because  a  device  or  combination  may  possess 
great  advantages,  thereby  bringing  it  into 
immediate  use,  as  it  is  only  when  the  ques- 
tion of  novelty  is  in  doubt  that  the  fact  that 
the  device  has  gone  into  commercial  use,  dis- 
placing others  employed  for  a  like  purpose  or 
supplying  the  place  of  others  whose  intrinsic 
defects  have  prevented  their  general  adoption 
and  use,  is  sufficient  to  turn  the  scale  in  favor 
of  invention.  (Potts  v.  Creager,  C.  D.  1895, 
143,  70  O.  G.  494,  155  U.  S.  597,  609.)  *In  re 
Thomson,  C.  D.   1906,  120  O.  G.  2756. 

29.  Where  the  assertion  was  made  that  the 
new  machine  had  met  with  instant  favor  and 
large  sales,  but  there  was  nothing  in  the 
record  to  bear  out  the  assertion.  Held,  that 
no  effect  could  be  given  thereto.  *In  re 
Thurston,  C.  D.  1906,  120  O.  G.  1166. 

30.  The  fact  that  a  patented  article  has  gone 
into  extensive  or  general  use  is  evidence  of 
its  utility  and  in  doubtful  cases  may  be  con- 
sidered as  evidence  of  invention,  but  is  not 
conclusive,  and  where  there  is  no  invention 
the  extent  of  the  use  is  immaterial,  d  Boss 
Mfg.  Co.  V.  Thomas,  C.  D.  1911,  162  O.  G. 
1183. 

IV.  UtaiTY. 

31.  The  grant  of  a  patent  is  /ri'ma  facie 
evidence  of  the  utility  of  the  invention,  and 
this  is  not  negatived  by  the  fact  that  the  de- 


vice is  susceptible  of  improvement  or  that 
like  inventions  are  so  far  superior  to  it  that 
they  may  entirely  supersede  the  use  of  it. 
Comparative  utility  is  no  criterion  of  infringe- 
ment. To  negative  utility,  the  defendant  must 
show  that  the  invention  will  not  operate  as 
claimed,  d  Crown  Cork  &  Seal  Co.  of  Balti- 
more City  v.  Aluminum  Stopper  Co.  of  Balti- 
more City  et  al.,  C.  D.  1901,  96  O.  G.  2573. 

32.  The  drawings  filed  with  the  application 
in  the  patent  office  are  not  required  or  ex- 
pected to  exhibit  the  exact  dimensions  of  the 
parts,  and  if  the  disclosure  is  such  that  an 
intelligent  mechanic  would  so  proportion  the 
dimensions  as  to  secure  practical  results  utility 
is  not  negatived  by  the  fact  that  a  device  made 
in  strict  conformity  to  the  drawings  is  inop- 
erative,   d  Id. 

33.  Where  there  was  doubt  as  to  the  suffi- 
ciency of  the  references  and  the  applicant 
demonstrated  that  he  had  produced  an  appa- 
ratus of  great  utility.  Held,  that  the  doubt 
should  be  resolved  in  favor  of  the  applicant's 
claim.  'In  re  Thomson,  C.  D.  1906,  120  O.  G. 
2756. 

34.  Where  the  want  of  patentable  novelty  is 
reasonably  clear  and  not  in  doubt.  Held,  that 
the  fact,  if  established,  that  the  apparatus 
claimed  has  displaced  others  generally  by  rea- 
son of  its  obvious  superiority  can  have  no 
weight.  *In  re  Garrett,  C.  D.  1906,  122  O.  G. 
1047. 

35.  The  Kurda  patent.  No.  600,228,  for  a 
polyphase-current  transformer.  Held,  to  dis- 
close patentable  invention,  since  it  embodies 
means  for  economic  improvement  over  poly- 
phase transformers  of  the  prior  art  which  is 
of  undoubted  utility,  although  not  a  great  ad- 
vance in  the  art.  d  General  Electric  Co.  v. 
Winona  Interurban  Ry.  Co.,  C.  D.  1911,  164 
O.  G.  509. 

36.  The  Schmid  patent.  No.  609,977,  for  an 
electric  railway-motor,  while  not  of  a  funda- 
mental character,  covers  an  improvement  of 
utility  in  the  art  and  discloses  patentable  in- 
vention, d  Allis  Chalmers  Co.  v.  Westing- 
house  Electric  Mfg.  Co.,  C.  D.  1911,  166  O.  G. 
751. 

V.  Rule  as  to  Doubtful  Cases. 

37.  On  a  question  of  anticipation,  if  the 
identity  of  methods  and  results  is  doubtful, 
the  doubt  must  be  resolved  in  favor  of  the 
successful  patentee  who  has  in  a  practical 
way  materially  advanced  the  art.     (Washburn 


PATENTABILITY  AND  INVENTION,  VI,  (a),  (b). 


473 


V.  Gould,  3  Story,  122,  144,  cited.)  d  Simonds 
Rolling  Machine  Co.  v.  Hathorn  Mfg.  Co.,  C. 
D.  1899,  88  O.  G.  2066. 

38.  Where  there  is  a  serious  doubt  as  to 
patentability,  that  doubt  should  be  resolved 
in  favor  of  the  one  seeking  a  patent,  for  if 
his  claim  be  denied  he  has  nothing  with  which 
he  can  go  into  court  and  attempt  to  enforce 
a  lawful  monopoly;  but  in  reversing  the  con- 
current decisions  of  the  patent  office  there 
should  be  conviction  beyond  a  reasonable 
doubt  that  in  the  absence  of  anything  but 
what  is  shown  by  the  record  a  patent  granted 
on  the  application  would  be  held  a  valid  one. 
*In  re  Schraubstadter,  C.  D.  1906,  120  O.  G. 
1167. 

VI.  Held  Patentable. 
(a)   Combination. 

39.  Where  none  of  the  elements  referred  to 
in  the  claim  are  in  themselves  new,  but  the 
invention  consisted  in  combining  them  in  a 
different  manner  from  any  heretofore  sug- 
gested, and  where  the  principles  and  func- 
tions in  all  are  entirely  different  and  they 
have  only  the  shade  of  an  unsubstantial  re- 
semblance, Held,  that  the  claim  involves  in- 
vention and  is  valid.  *Crown  Cork  &  Seal 
Co.  of  Baltimore  City  v.  Aluminum  Stopper 
Co.  of  Baltimore  City  et  al.,  C.  D.  1901,  96  O. 
G.  2573. 

40.  A  device  for  breaking  and  transporting 
magnetic  products,  consisting  of  the  combina- 
tion of  an  electromagnet,  a  hoisting  device 
therefor,  and  a  weight  adapted  to  be  hoisted 
and  dropped  upon  materials  to  be  crushed, 
Held,  to  involve  patentable  invention  over  the 
prior  art,  which  discloses  in  one  patent  a  de- 
vice for  the  same  purpose  consisting  of  me- 
chanical means  for  hoisting  a  weight  and  e- 
leasing  it  and  in  another  a  magnet  simpl> 
for  hoisting  and  conveying  magnetic  materials. 
The  invention  lies  in  a  new  combination  which 
was  not  obvious  in  view  of  the  prior  art.  *In 
re  Eastwood,  C.  D.  1909,  144  O.  G.  819. 

(b)   Use  in  Non  Analogous  Art. 

41.  The  case  of  Potts  v.  Creager  (C.  D. 
isg.'j,  143,  70  O.  G.  494,  155  U.  S.  597)  does  not 
lay  down  any  new  principle  of  law,  nor  does 
it  overrule  the  earlier  decisions  which  were 
cited  in  Briggs  v.  Central  Ice  Co.  (GO  Fed. 
Rep.  87.)  d  Briggs  v.  Duell,  Commissioner  of 
Patents,  C.  D.  1899,  87  O.  G.  1077. 


42.  Held,  further,  that  a  machine  for  at- 
taching gummed  strips  to  the  corners  of  paper 
boxes  is  not  anticipated  by  a  machine  for 
feeding,  cutting,  and  pasting  addresses,  al- 
though by  strengthening  it  and  changing  it  in 
certain  particulars  it  could  be  adapted  for 
the  use.  While  there  is  an  analogy  there 
can  scarcely  be  said  to  be  a  similarity  in  the 
functions  of  the  machines.  *Hobbs  et  al.  v. 
Beach,  C.  D.  1901,  94  O.  G.  2357. 

43.  Held,  that  the  changes  in  the  prior  de- 
vices to  adapt  them  to  perform  the  wholly- 
different  function  of  the  patented  machine 
was  a  minor  part  of  the  work  involved,  the 
invention  consisting  rather  in  the  idea  that 
such  change  could  be  made  than  in  making 
the  necessary  mechanical  alterations.     *Id. 

44.  While  none  of  the  elements  of  the 
Beach  patent,  taken  separately  or  perhaps  even 
in  a  somewhat  similar  combination,  was  new, 
their  adaptation  to  a  new  use  and  the  minor 
changes  required  for  that  purpose  resulted  in 
the  establishment  of  practically  a  new  industry 
and  was  a  decided  step  in  advance  of  any 
that  had  heretofore  been  made.     *Id. 

45.  Where  addressing-machines  had  been  on 
the  market  for  many  years,  and  yet  it  never 
seems  to  have  occurred  to  any  one  engaged 
in  the  manufacture  of  paper  boxes  that  they 
could  be  made  available  for  the  purpose  of 
attaching  strips  to  the  corners  of  such  boxes, 
Held,  that  this  fact  is  evidence  that  the  man 
who  discovered  the  possibility  of  their  adap- 
tation to  this  new  use  was  gifted  with  the 
prescience  of  an  inventor.    *Id. 

4G.  Where  the  holding  of  thin  paper  in 
place  by  pneumatic  pressure  to  be  operated 
upon  for  making  paper  bags  and  cigarettes 
was  old.  Held,  not  an  anticipation  of  a  pro- 
cess of  wrapping  cigars,  since  a  tobacco-leaf 
fit  for  a  cigar-wrapper  is  of  much  more  deli- 
cate fiber  than  paper  for  bags  or  cigarrettes, 
and  holding  it  in  place  as  it  receives  the 
filler  and  is  progressively  folded  about  that 
as  it  is  rolled  along  the  perforated  table  and 
shaped  by  hand  is  a  very  different  operation 
from  any  in  which  paper  had  been  confined 
by  pneumatic  force,  cjohn  R.  Williams  Co. 
et  al.  V.  Miller,  Du  Brul  &  Peters  Mfg.  Co., 
C.  D.  1901,  97  O.  G.  2308. 

47.  Where  the  invention  relates  to  finger- 
rings,  Held,  that  the  expedient  of  forming 
shoulders  within  holes  in  the  band  with  which 
shoulders  on  the  stud  engage  would  not  be 
suggested  to  one  skilled  in  the  art  by  a  sim- 


474 


PATENTABIUTY  AND  INVENTION,  VI,  (e),  I. 


ilar  construction  in  street-signs.  Street-signs 
and  finger-rings  are  not  in  analogous  or  cor- 
related arts.  *In  re  Weiss,  C.  D.  1903,  103  O. 
G.  191S. 

48.  A  lathe  having  a  bed  consisting  of  two 
horizontal  bars  arranged  one  above  the  other 
is  not  anticipated  by  a  drill-frame  having  two 
vertically-arranged  bars,  the  two  devices  hav- 
ing different  functions  and  belonging  to  re- 
mote arts.  *In  re  Sheldon,  C.  D.  1908,  135 
O.  G.  l.-)S.-.. 

49.  The  application  of  an  old  machine  or 
combination  to  a  new  use  is  not  in  itself  in- 
vention or  the  subject  of  a  patent.  If  the  re- 
lations between  the  two  uses  be  remote,  and 
if  the  use  of  the  old  device  produce  a  new 
and  beneficial  result,  the  application  to  the 
new  use  may  involve  the  exercise  of  the  in- 
ventive faculty  and  be  patentable;  but  it  is 
only  when  the  new  use  is  so  recondite  or  so 
remote  from  that  to  which  the  old  device  has 
been  applied  or  for  which  it  was  evidently 
conceived  that  its  application  to  the  new  use 
would  not  readily  occur  to  the  trained  mind 
of  the  ordinary  mechanic  skilled  in  the  art, 
seeking  to  devise  means  to  accomplish  the  de- 
sired function,  that  its  conception  rises  to  the 
dignity  of  invention,  rf  Warren  Webster  & 
Co.  V.  C.  A.  Dunham  Co.,  C.  D.  1910,  161  O. 
G.  531. 

(c)  Process  or  Method. 

1.  In  General. 

50.  In  view  of  the  case  of  Westinghouse  v. 
Boyden  Co.  (C.  D.  1898,  443,  83  O.  G.  1067, 
170  U.  S.  537)  it  cannot  be  claimed  that  the 
case  of  Risdon  Works  v.  Medart  (C.  D.  1895, 
330,  71  O.  G.  751,  158  U.  S.  68)  decided  that  a 
process  to  be  patentable  necessarily  involves 
a  chemical  or  other  similar  elemental  action. 
Ex  parte  Rogers  and  Winslow,  C.  D.  1899, 
87  O.  G,  699. 

51.  From  the  decision  of  Westinghouse  v. 
Boyden  Co.  it  may  be  deduced,  first,  that 
processes  which  involve  "some  chemical  or 
other  elemental  action"  are  patentable;  sec- 
ond, that  processes  which  involve  "nothing 
more  than  the  operation  of  a  piece  of  mechan- 
ism or  the  function  of  a  machine"  are  not 
patentable,  and,  third,  that  processes  may  be 
patentable  which  "though  ordinarily  and  most 
successfully  performed  by  machinery  may 
also  be  performed  by  simple  manipulation." 
Id. 


52.  Processes  which  consist  in  the  manipu- 
lation of  a  blank  to  make  abrasive  pad-covers 
for  buffing-machines,  the  steps  of  which  con- 
sist substantially  in  holding  the  edge  of  the 
blank,  stretching  and  forming  the  center  of 
the  blank,  and  manipulating  the  blank  so  that 
the  edges  will  be  brought  over  the  central 
part.  Held,  to  fall  within  the  third  class  of 
processes  and  to  be  patentable.    Id. 

53.  From  the  authorities  it  may  be  deduced, 
first,  that  processes  involving  a  chemical  or 
other  elemental  action,  if  new  and  useful,  are 
patentable;  second,  that  a  proc«ss  which 
amounts  to  no  more  than  the  function  of  a 
machine  is  not  patentable ;  third,  that  a  pro- 
cess or  method  of  a  mechanical  nature  not  ab- 
solutely dependent  upon  a  machine,  although 
perhaps  best  illustrated  by  mechanism,  may, 
if  new  and  useful,  be  the  proper  subject  of  a 
patent  even  though  it  involves  no  chemical 
or  other  elemental  action.  *In  re  Weston,  C. 
D.  1901,  94  O.  G.  1786. 

54.  The  steps  in  a  process  of  making  a  coil 
for  electrical  measuring  instruments,  which 
consist  in  securing  the  pivot-pins  in  the  axial 
line  of  the  coil  and  simultaneously  adjust- 
ing the  needle-supporting  pivot  in  such  man- 
ner that  the  point  of  the  needle  is  located  in 
the  central  plane  of  the  coil  or  in  a  plane  at 
a  definite  angle  thereto.  Held,  to  be  more 
than  mere  mechanical  steps  and  when  added 
to  a  process  which  is  merely  mechanical  to 
confer  patentability  on  claims  covering  the 
combined  steps.  (Mr.  Justice  Shepard  dis- 
senting.) *In  re  Weston,  C.  D.  1901,  94  O.  G. 
1786. 

55.  A  process  of  making  an  insulator  which 
consists  in  making  two  or  more  bowls  or  shells 
molded  so  as  to  nest  or  fit  each  other,  pour- 
ing liquid  glaze  into  the  cup-like  spaces  be- 
tween them  when  in  an  inverted  position,  so 
that  it  will  flow  down  and  not  only  fill  up  the 
joints  between  them,  but  also  penetrate  into 
whatever  cracks  or  crevices  are  formed  and 
cement  and  solidify  the  parts  into  a  single 
mass.  Held,  not  anticipated  by  insulators  made 
up  of  separate  parts  fitted  to  each  other  or  by 
the  old  process  of  fusing  parts  of  pottery. 
c  R.  Thomas  &  Sons  Company  v.  Electric 
Porcelain  and  Manufacturing  Company  et  al., 
C.  D.  1901,  97  O.  G.  1838. 

56.  Held,  that  it  is  not  so  much  the  fusing 
but  the  manner  of  doing  so  by  which  all  the 
cracks  and  crevices  which  exist  or  may  arise 
in   the  process  of   firing   shall   be  completely 


PATENTABILITY  AND  INVENTION,  VI,  (c),  2. 


475 


closed  and  filled  which  constitutes  the  inven- 
tion,    c  Id. 

57.  Where  a  process  is  used  under  new 
conditions  and  produces  new  and  extraordi- 
nary as  well  as  highly  satisfactory  results. 
Held,  that  it  must  be  regarded  as  patentable, 
cid. 

58.  Where  the  patentee's  process  of  mixing 
molten  metal  drawn  from  several  blast-fur- 
naces includes  retaining  at  all  times  a  sub- 
stantial quantity  of  molten  metal  in  the  mixer 
and  this  step  is  what  adds  value  to  the  pro- 
cess and  makes  it  a  success,  Held,  not  antici- 
pated by  mixing  devices  in  which  the  metal 
might  be  retained  when  the  users  did  not  con- 
template such  use  or  understand  its  advan- 
tages. **Carnegie  Steel  Company,  Limited  v. 
Cambria  Iron  Company,  C.  D.  1902,  99  O.  G. 
1866. 

59.  To  anticipate  a  process  patent  it  is  nec- 
essary not  only  to  show  that  the  prior  patent 
might  have  been  used  to  carry  out  the  pro- 
cess, but  that  such  use  was  contemplated  or 
that  it  would  have  occurred  to  an  ordinary 
mechanic  in  operating  the  device.     **Id. 

60.  A  mechanical  patent  is  anticipated  by  a 
prior  device  of  like  construction  and  capable 
of  performing  the  same  function,  but  it  is 
otherwise  with  a  process  patent.  A  process 
patent  can  only  be  anticipated  by  a  similar 
process.    **Id. 

61.  If  a  process  is  the  mere  function  of  a 
machine,  another  machine  capable  of  per- 
forming the  same  function  might  be  an  antici- 
pation ;  but  this  is  not  because  a  process  can 
be  anticipated  by  a  mechanism,  but  because 
the  mere  function  of  a  machine  is  not  patent- 
able as  a  process  at  all.    **Id. 

62.  A  process  of  pasteurizing  beer  which 
consists  in  continuously  moving  the  bottles 
through  the  pasteurizing  agent.  Held,  not  anti- 
cipated by  a  process  in  which  the  pasteurizing 
agent  is  continuously  moved  in  reference  to 
the  stationary  bottles  of  beer.  *In  re  Wag- 
ner, 105  O.  G.  1783. 

63.  Where  the  prior  art  of  welding  tubes 
shows  that  it  is  old  to  weld  tubes  from  strips 
of  metal  cut  into  lengths  which  are  of  sub- 
stantially the  length  of  the  finished  tube. 
Held,  that  it  involves  invention  to  weld  a 
tube  of  multiple  length  and  subsequently  cut 
the  welded  tube  at  different  points  to  make 
shorter  tubes  of  normal  length,  as  by  so  doing 
the  tubes  were  found  to  have  a  more  complete 
weld  at  their  ends  and  the  tubes  made  by  the 


new  process  resulted  in  saving  of  material. 
Ex  parte  Patterson,  C.  D.  1905,  116  O.  G. 
2533. 

64.  Where  in  a  process  of  butt-welding 
tubes  it  is  new  to  weld  a  multiple-length  tube 
and  subsequently  cut  the  same  into  normal 
lengths,  thereby  avoiding  the  severe  twisting 
strain  in  finishing  to  which  the  tube  would  be 
otherwise  subjected  by  the  old  mechanism  em- 
ployed. Held,  that  because  of  this  new  result 
the  process  claimed  amounted  to  invention. 
Id. 

65.  Where  the  process  claimed  is  not  only 
new,  but  useful,  and  a  distinct  advance  in  the 
art.  Held,  that  the  principles  announced  in 
the  case  of  Carnegie  Steel  Company  v.  Cam- 
bria Iron  Company  (C.  D.  1902,  592,  99  O.  G. 
1866,  185  U.  S.  403)  apply  and  that  the  pro- 
cess defined  in  the  appealed  claims  amounts 
to  invention.     Id. 

66.  The  mere  function  or  effect  of  the  op- 
eration of  a  machine  cannot  be  the  subject- 
matter  of  a  lawful  patent;  but  the  invention 
or  discovery  of  a  process  or  method  involv- 
ing mechanical  operations  and  producing  a 
new  and  useful  result  may  be  within  the  pro- 
tection of  the  federal  statute  and  entitle  the 
inventor  to  a  patent  for  his  discovery  **The 
Expanded  Metal  Co.  v.  Bradford  et  al.,  & 
Vice  Versa,  C.  D.  1909,  143  O.  G.  863. 

2.  Not   Mere   Function   of   Machine. 

67.  Claim  1  of  the  patent  to  Hamraerstein, 
No.  261,849,  August  1,  1882,  covering  a  pro- 
cess of  applying  the  wrapper  to  a  cigar,  Held, 
not  for  the  mechanical  operation  of  the  ma- 
chine nor  for  a  principle  of  nature,  but  for  a 
patentable  art  under  the  statute.  Held,  fur- 
ther, that  the  process  is  patentably  novel. 
c  John  R.  Williams  Co.  et  al.  v.  Miller,  Du 
Brul  &  Peters  Mfg.  Co.,  C.  D.  1901,  97  O.  G. 
2308. 

68.  A  claim  for  the  "method  of  making 
open  or  reticulated  metal-work,  which  con- 
sists in  simultaneously  slitting  and  bending 
portions  of  a  plate  or  sheet  of  metal,  in  such 
manner  as  to  stretch  or  elongate  the  bars 
connecting  the  slit  portions  and  body  of  the 
sheet  or  plate,  and  then  similarly  slitting  and 
bending  in  places  alternate  to  the  first-men- 
tioned portions,  and  producing  the  finished 
expanded  sheet  metal  of  the  same  length  as 
that  of  the  original  sheet  or  plate,  substan- 
tially as  described,"  Held,  to  set  forth  a  novel 
series  of  operations  independent  of  any  par- 


476 


PATENTABILITY  AND  INVENTION,  VI,  (d),  (e). 


ticular  mechanism  and  to  constitute  patent- 
able subject-matter.  **The  Expanded  Metal 
Company  et  al.  v.  Bradford  et  al.,  and  The 
General  Fire-proofing  Company  v.  The  Ex- 
panded Metal  Company,  C.  D.  1909,  143  O.  G. 
863. 

(d)   Composition  of  Matter. 

69.  A  material  consisting  of  the  commin- 
uted cellular  portion  of  corn-pith  freed  from 
sappy,  deleterious,  and  adherent  matters  by 
subjecting  the  pith  to  the  action  of  a  blast  of 
air,  preferably  heated,  Held,  to  be  not  antici- 
pated liy  applicant's  prior  patent  disclosing 
corn-pith  obtained  by  passing  cornstalks 
through  breakers  and  then  separating  the  pith 
from  the  fiber  and  outside  shell,  as  there  is 
no  description  in  the  patent  that  the  pith  is 
subjected  to  air  at  a  high  temperature.  ♦Mars- 
den  V.  Duell,  Commissioner  of  Patents,  C.  D. 
1899,  87  O.  G.  1239. 

(e)  New  Combination  of  Old  Elements — New 
Result. 

70.  The  fact  that  each  and  every  element 
of  a  combination  was  old  and  well  known  at 
the  date  of  a  patent  is  not  sufficient  to  de- 
prive the  invention  claimed  of  novelty,  for 
most  of  the  inventions  of  the  present  day  con- 
sist of  the  utilization  and  adaptation  of  me- 
chanical appliances  that  are  themselves  old 
and  well  known,  d  American  Tobacco  Com- 
pany V.  Streat,  C.  D.  1898,  82  O.  G.  1212. 

71.  The  new  result  of  a  patentable  combina- 
tion is  a  result  which  is  new  and  distinguish- 
able as  compared  with  results  produced  by  the 
elements  in  their  separated  state  or  as  assem- 
bled in  a  mere  aggregation,  without  function- 
al relations  to  each  other.  A  combination  is 
not  unpatentable  merely  because  its  results 
may  also  have  been  produced  by  other  com- 
binations, d  Deere  &  Company  v.  Rock  Island 
Plow  Company,  C.  D.  1898,  82  O.  G.  1561. 

72.  It  is  not  necessary  in  a  new  combina- 
tion of  old  elements  that  each  element  should 
modify  or  change  the  mode  of  operation  of 
all  the  others,  but  only  that  the  combination 
should  produce  a  new  and  useful  result.  (Na- 
tional Cash  Register  Company  et  al.  v.  Amer- 
ican Cash  Register  Company,  C.  D.  1893,  100, 
62  O.  G.  449.)  McCormick  v.  Robinson,  C. 
D.   1906,   124   O.  G.  2903. 

73.  Where  the  applicant  claimed  a  com- 
bination   of    old    elements    and    a    reference 


shows  a  combination  which  is  intended  for  a 
different  use  and  which  involves  differences  of 
operation,  and  one  of  the  elements  shown  in 
the  reference  is  different  from  the  correspond- 
ing clement  in  the  applicant's  device.  Held, 
that  a  patent  should  not  necessarily  be  re- 
fused on  account  of  such  reference.  *In  re 
Thomson,  C.  D.  1906,  120  O.  G.  2756. 

74.  Where  a  prior  combination  cited  against 
the  combination  claimed  includes  elements  in 
addition  to  those  used  by  the  applicant  which 
result  in  differences  in  operation  undesirable 
for  the  purposes  of  the  applicant's  device 
and  one  of  the  elements  of  the  prior  com- 
bination is  different  from  the  corresponding 
element  of  the  applicant's  combination.  Held, 
that  a  patent  should  not  necessarily  be  refused 
on  account  of  the  prior  combination.     Id. 

75.  Held,  that  a  claim  to  a  printing-press 
comprising  three  printing-couples,  together 
with  means  for  perfecting  webs  thereby,  is  not 
anticipated  by  a  press  which  comprises  four 
couples  so  arranged  that  a  web  could  not  be 
perfected  by  the  operation  of  three  couples. 
Bechman  v.  Southgate,  C.  D.  1906,  123  O.  G. 
2309. 

78.  The  provision  of  two  cranes  in  a  bor- 
ing machine  for  the  purpose  of  enabling  the 
new  work  to  be  hoisted  to  position  simul- 
taneously with  the  removal  of  the  completed 
piece.  Held,  to  amount  to  a  patentable  im- 
provement where  the  prior  art  shows  only  one 
crane.  Ex  parte  Sears,  C.  D.  1909,  148  O.  G. 
279. 

77.  Claims  for  a  rubber-covered  roll.  Held, 
patentable  over  the  prior  art,  since  not  only 
is  a  new  and  useful  result  acquired  by  the 
structure  covered  thereby,  but  the  exercise  of 
the  inventive  faculty  was  required  to  obtain 
the  same.  Ex  parte  Burnham,  C.  D.  1911, 
172  O.  G.  260. 

78.  A  claim  for  a  snap-hook,  Held,  patent- 
able over  the  prior  art  for  the  reason  that 
although  the  elements  are  old  they  are  so 
brought  together  in  a  practical  device  as  to 
co-operate  one  with  another  to  produce  a  new 
and  useful  result.  Ex  parte  Armstrong,  C.  D. 
1911,  172  O.  G.  259. 

(f)  Reorganisation. 

79.  Although  the  patentees  have  borrowed 
in  part  from  the  earlier  art,  they  have  so  ar- 
ranged the  various  parts  as  to  tend  toward 
simplicity  and  have  doubled  speed  of  the  over- 
seam-machine,  and  therefore  the  court  is  dis- 


PATENTABILITY  AND  INVENTION,  VI,   (f)-(i). 


477 


posed  to  consider  the  changes  in  parts  and 
arrangement  of  parts  as  showing  meritorious 
invention,  (f  Wilcox  &  Gibbs  Sewing  Ma- 
chine Co.  V.  The  Merrow  Machine  Co.,  C.  D. 
1898,  85   O.   G.   1078. 

80.  The  substitution  of  electrical  means  for 
operating  a  chuck  jaw  in  place  of  mechanical 
means  shown  in  the  art,  Held,  to  require  such 
rearrangement  of  the  machine  as  to  involve 
invention.  Ex  parte  Johnson,  C.  D.  1909,  147 
O.  G.  770. 

81.  The  reorganization  of  a  crane  having 
main  and  supplementary  trolleys,  so  that  the 
hoisting-chains  from  the  main  trolley  are 
placed  inside  instead  of  outside  the  girders 
supporting  the  main  trolleys.  Held,  to  have 
required  invention.  d  Morgan  Engineering 
Company  v.  Alliance  Machine  Company,  C.  D. 
1910,  1.57  O.  G.  1244. 

(g)   Useful — Long  Undiscovered. 

82.  Where  the  manufacturers  of  steel  had 
spent  years  in  endeavoring  to  find  out  a  pro- 
cess for  accomplishing  the  results  of  this  in- 
vention which  is  but  a  step  from  what  they 
already  knew  it  is  surprising  with  the  wisdom 
which  comes  after  the  fact  that  they  did  not 
discover  it.  **Carnegie  Steel  Company,  Ltd. 
V.  Cambria  Iron  Co.,  C.  D.  1902,  99  O.  G. 
18R6. 

83.  Where  the  patents  of  the  prior  art 
wire  in  existence  for  many  years  without 
suggesting  to  any  one  the  useful  device  sought 
to  be  patented,  and  affidavits  of  those  skilled 
in  the  art  and  having  full  knowledge  of  the 
anticipating  devices  are  filed  averring  that  the 
device  sought  to  be  patented  never  occurred 
to  them,  and  the  improvement  is  shown  to 
be  of  great  practical  utility.  Held,  that  these 
facts  constitute  evidence  that  the  improvement 
was  not  an  obvious  one.  *In  re  Eastwood, 
C.  D.  1909,  144  O.  G.  819. 

84.  If  those  skilled  in  the  mechanical  arts 
are  working  in  a  given  field  and  have  failed 
after  repeated  efforts  to  discover  a  certain 
new  and  useful  improvement,  he  who  first 
makes  the  discovery  has  done  more  than  make 
the  obvious  improvement  which  would  sug- 
gest itself  to  a  mechanic  skilled  in  the  art  and 
is  entitled  to  protection  as  an  inventor.  **The 
Expanded  Metal  Company  ct  al.  v.  Bradford 
et  al.,  and  The  General  Fireproofing  Com- 
pany V.  The  Expanded  Metal  Company,  C.  D. 
1909,  143  O.  G.  863. 


(h)  Substitution  or  Use  of  Proper  Material 
or  Parts. 

85.  The  substitution  of  an  internal-toothed 
spur-wheel  for  external  toothed  spur-gear  in 
the  machinery  of  windmills,  by  combining  the 
same  with  the  pinion,  pitman,  and  pump. 
Held,  to  involve  patentable  invention  in  view 
of  the  difficulties  thereby  overcome  and  the 
fact  that  the  improvement  immediately  went 
into  general  use,  though  internal-toothed  spur- 
wheels  had  long  been  used  in  many  other  ma- 
chines, c  Mast,  Foos  &  Company  v.  Demp- 
ster Mill  Manufacturing  Company,  C.  D. 
1898,  83  O.  G.  338. 


(i)  Particular   Cases. 

86.  A  system  of  ventilation  the  novel  fea- 
ture of  which  consists  in  supplying  each  of 
the  branch  pipes  leading  into  a  room  or  com- 
partment to  be  ventilated  with  nozzles  com- 
posed of  articulated  sections  of  such  con- 
struction that  the  current  of  air  forced  into 
the  pipe  may  be  discharged  in  any  direction 
in  the  room  by  the  adjustment  of  the  nozzles, 
so  that  the  incoming  air  may  be  more  thor- 
oughly agitated  and  commingled  and  drafts 
prevented.  Held,  to  be  patentable  over  the 
systems  of  ventilation  disclosed  by  patent  to 
Brown,  No.  182.746,  and  to  Jennison,  No. 
177,847.  *McCreery  v.  Commissioner  of  Pat- 
ents, C.  D.  1898,  S3  O.  G.  1310. 

87.  Means  for  fastening  an  initial  flat  upon 
a  finger-ring,  consisting  of  a  stud  on  the  initial 
having  square  shoulders  engaging  shoulders 
in  a  hole  made  in  the  ring.  Held,  not  antici- 
pated by  a  construction  in  which  the  stud  on 
the  initial  was  provided  with  a  rounded  spring- 
head which  did  not  engage  the  ring  proper, 
but  after  extending  through  an  onyx-setting 
engaged  a  box  attached  to  the  ring.  *In  re 
Weiss,  C.  D.  1903,  103  O.  G.  1918. 

88.  The  Fuechtwanger  patent.  No.  662,714, 
for  a  skirt  consisting  of  three  parts,  the  lower 
part  being  of  non-elastic  material,  the  hip 
portion  of  a  material  having  some  elasticity, 
and  the  waistband  of  still  more  elastic  mate- 
rial. Held,  to  disclose  patentable  novelty  and 
invention,  d  Greenwald  Bros.  Inc.  v.  Enochs, 
C.  D.  1911,  104  O.  G.  976. 

89.  Claims  for  a  package-binder  for  letters 
and  the  like,  Held,  patentable  over  the  prior 
art  for  the  reason  that  while  the  differences 
over  the  prior  art  are  slight  the  production 


478 


PATENTABILITY  AND  INVENTION,  VII,   (a). 


of  the  device  covered  by  these  claims  involved 
the  exercise  of  the  inventive  faculties.  Ex 
parte  Millsop,  C.  D.  1911,  172  O.  G.  1092. 

VII.  Not  Held  Patentable. 

(a)  Aggregation   or    Unpatentable   Combina- 
tion. 

90.  The  decision  of  the  examiners-in-chief 
that  a  valid  combination  does  exist  in  a  cer- 
tain claim  in  a  particular  case  between  a  cart- 
ridge-clip and  the  magazine  of  a  gun  is  not 
a  ruling  that  such  combination  exists  in  all 
cases  where  they  are  made  elements  of  a 
claim,  and  the  holding  by  the  examiner  that  a 
particular  claim  in  another  case  covering  them 
does  not  define  a  valid  combination  does  not 
show  any  disposition  on  his  part  to  disregard 
the  rulings  of  the  examiners-in-chief.  Ex 
parte  Russell,  C.  D.  1898,  84  O.  G.  1871. 

91.  An  article  manufactured  in  a  machine 
in  the  manner  and  for  the  purposes  contem- 
plated when  the  machine  itself  was  made 
cannot  be  held  to  be  a  part  of  the  machine 
which  so  produces  it,  so  as  to  constitute  an 
element  in  the  combination  covered  by  a  ma- 
chine patent,  d  American  Tobacco  Co.  v. 
Streat,  C.  D.  1898,  82  O.  G.  1213. 

92.  A  pill-dipping  bar  with  nipples  against 
which  the  pills  are  held  by  suction  created 
by  exhaustion  of  the  air  from  the  interior  of 
the  bar  and  which  is  manipulated  by  hand  in 
dipping  the  pills  has  no  such  relation  to  the 
pills  and  the  gelatin-bath  as  to  form  with 
them  a  patentable  combination  or  mechanism. 
Frederick  R.  Stearns  &  Co.  v.  Russell,  C.  D. 
1898,  84  O.  G.  14.34. 

93.  The  combination  here  claimed  has  not 
produced  a  new  device  differing  in  character 
and  function  from  others  then  in  existence 
and  common  use,  nor  does  it  accomplish  a 
novel  result  through  the  co-operative  action  of 
old  agencies.  The  applicant  has  done  nothing 
more  than  exercise  mechanical  skill  in  bring- 
ing old  devices  into  juxtaposition,  and  thereby 
constituting  an  aggregation  merely  of  separate 
elements.  *Smith  v.  Duell,  Com.  of  Patents, 
C.   D.  1899,  87  O.  G.  893. 

94.  It  is  as  necessary  to  the  validity  of  a 
claim  that  the  construction  covered  by  it  in- 
volve invention  as  that  it  involve  novelty.  Ex 
parte  Perkins,  C.  D.  1899,  88  O.  G.  548. 

95.  Claims  for  an  alleged  combination  may 
properly  be  rejected  on  references  none  of 
which  shows  the  combination,  but  which  show 
the  elements  to  be  old,  if  it  is  clear  that  by 


assembling  the  elements  in  one  structure  no 
new  effect  different  from  the  sum  of  the  ef- 
fects of  the  separate  elements  is  secured.  Ex 
parte  Perkins,  C.  D.  1899,  88  O.  G.  548. 

96.  An  article  of  manufacture  consisting 
of  an  advertising-catalogue  and  desk-pad 
bound  together  in  book  form,  Held,  a  mere 
aggregation  of  old  elements  and  not  patent- 
able. Ex  parte  Davenport,  C.  D.  1904,  110 
O.  G.  1427. 

97.  The  fact  that  the  appellant's  article  is 
convenient  and  has  commercial  advantages 
does  not  render  it  patentable  where  it  is 
made  up  of  independent  devices,  each  of 
which  is  unaffected  by  the  presence  or  ab- 
sence of  the  other.     Id. 

98.  An  article  consisting  of  a  catalogue 
having  a  desk-pad  bound  to  it  as  one  of  its 
covers  Held,  a  mere  aggregation  of  unrelated 
elements  and  not  a  patentable  combination. 
*In  re  Davenport,  C.  D.  1904,  110  O.  G.  2017. 

99.  The  use  of  a  well-known  perforated 
pivoted  closure  and  an  ordinary  screw-cap  on 
a  powder  can  Held,  a  mere  aggregation  of 
independent  and  well-known  elements  and  not 
invention.  *In  re  Seabury  C.  D.  1904,  110  O. 
G.  2238. 

100.  The  combination  of  a  jacketed  engine- 
cylinder,  means  for  supplying  a  cooling  fluid 
to  the  jacket,  and  engine-stopping  means  op- 
erated by  a  thermostat  adjacent  the  engine- 
cylinder  is  not  patentable  in  view  of  prior 
devices  showing  means  for  stopping  the  en- 
gine upon  failure  of  the  supply  of  cooling- 
water,  thermostats  upon  engine-cylinders  to 
control  flow  of  water  through  jacket,  and  a 
thermostat  upon  an  engine-cylinder  to  regu- 
late flow  of  fuel  thereto,  and  in  view  of  com- 
mon knowledge  that  thermostats  are  in  gen- 
eral use  for  cutting  off  the  supply  of  heat- 
ing medium  when  the  temperature  rises  above 
a  desired  point.  Ex  parte  Adams,  C.  D.  1904, 
111  O.  G.  1623. 

101.  Stopping  an  engine  by  a  rise  in  the 
temperature  thereof  is  not  such  a  new  result 
as  will  confer  patentability  upon  the  com- 
bination of  an  engine-stopping  device  and 
thermostat.     Id. 

102.  Though  stopping  an  engine  while  the 
cooling-water  circulation  continues  were  a 
new  result,  it  would  not  involve  a  patentable 
change  in  prior  devices  using  thermostats  to 
vary  the  amount  of  cooling-water,  as  it  would 
be  obvious  that  such  thermostats  might  oper- 
ate the  fuel-valve  or  sparking  apparatus  if  it 
were  considered  desirable  to  stop  the  engine 


PATENTABILITY  AND  INVENTION,  VII,   (b). 


479 


at  temperatures  occurring  while  the  water  cir- 
culation continued.     Id. 

103.  It  does  not  involve  invention  to  use  an 
automatic  alarm  upon  engine-stopping  appa- 
ratus, as  it  is  well  known  that  automatic 
alarms  are  in  general  use  upon  machinery  to 
indicate  the  occurrence  of  some  particular 
condition  therein,  and  the  reference  shows  a 
bell  upon  a  gas-engine  rung  when  the  tem- 
perature reaches  the  allowable  limit.    Id. 

104.  Held,  that  the  claims  appealed  are  not 
patentable  over  the  state  of  the  art,  as  they 
amount  to  mere  double  use  and  aggregation 
of  old  features  which  do  not  co-operate.  Ex 
parte  Thurston,  C.  D.  1905,  117  O.  G.  2361. 

105.  Where  two  distinct  combinations  of 
elements,  each  of  which  is  old,  and  which  have 
no  special  co-operation  with  each  other,  are 
grouped  in  a  single  claim.  Held,  to  be  a  mere 
aggregation  and  not  patentable.  Ex  parte 
Thomson,  C.  D.  1905,  118  O.  G.  266. 

108.  Where  claims  are  considered  to  be  ag- 
gregations, it  is  not  necessary  to  a  valid  rejec- 
tion thereof  that  all  the  features  specified  in 
the  claims  shall  be  found  in  a  single  reference. 
A  rejection  for  lack  of  patentable  novelty  in 
view  of  the  prior  art  calls  for  a  general  view 
of  the  prior  art.  This  general  view  can  be 
obtained  only  by  looking  at  each  reference 
cited  in  the  light  of  the  disclosure  contained 
in  the  other  references.  It  is  the  knowledge 
of  the  public  derived  not  from  one  patent 
alone,  but  from  all,  which  negatives  patentable 
novelty  in  any  case.  Ex  parte  Sindingchris- 
tensen,  C.  D.  1906,  120  O.  G.  2755. 

107.  The  mere  combination  of  articles  dis- 
closed in  two  former  patents  will  not  consti- 
tute invention  unless  it  results  in  producing 
a  new  and  useful  article  not  applied  by  those 
familiar  with  the  state  of  the  art.  A  patent 
should  not  be  issued  when  the  alleged  inven- 
tion is  a  mere  modification  of  the  principle  in- 
volved in  former  inventions  or  discoveries. 
*In  re  Fabcr,  C.  D.  1908,  136  O.  G.  229. 

108.  The  mere  combining  of  an  ordinary 
calking  tool  or  blade  with  an  automatically- 
operating  pneumatic  hammer  which  is  adapt- 
ed to  be  controlled  and  adjusted  by  hand 
amounts  to  nothing  more  than  an  obvious 
double  use  that  would  naturally  occur  to  one 
skilled  in  the  art  with  mind  directed  to  cheap- 
ening the  cost  of  ship-calking  and  does  not 
rise  to  the  dignity  of  invention.  ♦In  re  Mason, 
C.  D.   1908,  136  O.  G.  441. 

109.  Where  two  mechanisms  for  perform- 
ing successive  operations  upon  a  piece  of  work 


are  both  old  in  the  art,  the  assembling  of 
these  mechanisms  upon  a  unitary  support  in 
such  manner  that  the  operator  may  transmit 
the  work  from  one  to  the  other  without 
changing  his  position  at  the  machine,  Held, 
not  to  involve  invention.  Ex  parte  Smith, 
C.  D.  1909,  148  O.  G.  831. 

110.  Claims  for  a  sheet-metal  locker.  Held, 
properly  rejected  as  stating  merely  aggrega- 
tions of  features  old  in  the  prior  art.  (For 
commissioner's  decision  see  161  O.  G.  1043.) 
*In  re  Merritt,  Black,  &  Morris,  C.  D.  1911, 
162  O.  G.  540. 

(b)  Novelty  in  Part  of  Old  Combination. 

111.  If  the  elements  covered  by  a  claim  do 
not  co-operate  in  such  manner  as  to  come 
within  the  definition  of  a  true  combination, 
it  may  be  rejected,  since  a  claim  covering  an 
aggregation  of  elements  is  not  patentable,  al- 
though some  or  all  of  those  elements  are  sep- 
arately new  and  patentable.    Ex  parte  Griffith, 

C.  D.   1898,  85   O.  G.  936. 

112.  A  party  may  invent  an  improvement 
on  a  certain  element  of  an  old  combination 
without  in  any  manner  changing  that  com- 
bination itself,  and  in  such  case  he  is  not 
entitled  to  a  claim  as  the  inventor  of  the  com- 
bination, although  it  includes  the  thing  which 
he  really  has  invented.  Mere  double  use  of 
his  invention  does  not  give  him  a  right  to  the 
combination  in  which  he  places  it.    Id. 

113.  The  question  as  to  whether  the  claims 
do  in  fact  cover  mere  aggregations  and  not 
true  combinations  is  appealable  to  the  exam- 
iners-in-chief.    Id. 

114.  The  combination  of  a  trimmer  with 
one  type  of  stitch-forming  mechanism  being 
old.  Held,  that  it  is  not  invention  to  combine 
that  trimmer  with  another  stitch-forming 
mechanism,  whether  the  second  stitch-form- 
ing mechanism  be  new  or  old,  when  no  new 
result  is  accomplished  which  differs  in  kind 
from  the  result  accomplished  by  the  first 
combination  and  when  each  element  acts  in  its 
own  way  and  is  not  affected  by  the  other  and 
performs  its  function  in  the  combination  ir- 
respective of  the  other.     Ex  parte  McNeil,  C. 

D.  1902,  100  O.  G.  1978. 

115.  Held,  further,  that  the  invention,  if 
any,  is  in  the  stitch-forming  mechanism  and 
that  the  applicant  should  claim  it  separately 
if  he  regards  himself  as  the  inventor  of  it 
Id. 


480 


PATENTABILITY  AND  INVENTION,  VII,  (c). 


116.  Where  the  combination  in  a  sewing- 
machine  of  a  trimmer  in  advance  of  one  form 
of  stitch-forming  mechanism  is  old,  Held,  that 
the  combination  of  that  trimmer  with  another 
stitch-forming  mechanism  is  not  patentable, 
whether  that  stitch-forming  mechanism  is  new 
or  old.  In  re  McNeil,  C.  D.  1902,  100  O.  G. 
2178. 

117.  Where  the  claims  appealed  cover  a 
combination  between  a  record-cylinder  having 
a  removable  surface  and  a  means  for  moving 
the  surface  to  form  the  record.  Held,  not 
patentable  over  the  prior  art,  which  shows  the 
broad  invention  of  a  recording-surface  in 
combination  with  means  for  printing  the  rec- 
ord by  pressure  upon  the  surface,  in  view  of 
the  fact  that  it  is  old  to  make  records  by 
removing  the  surface  in  an  analogous  device. 
Ex  parte  Hawley,  C.  D.  1905,  117  O.  G.  2364. 

118.  Where  it  was  old  in  a  time  recording 
mechanism  to  provide  a  revolving  drum  oper- 
ated by  clockwork,  a  record  sheet  to  be  wound 
thereon  as  the  drum  revolved,  and  a  marking 
point  which  made  a  mark  on  the  record  sheet 
when  placed  in  contact  therewith,  and  it  was 
also  old  to  make  a  record  on  a  lampblacked 
surface  by  the  removal  of  a  portion  of  such 
surface  by  means  of  a  coacting  stylus,  it  does 
not  involve  invention  to  use  in  a  time-record- 
ing mechanism  a  record-sheet  having  a  re- 
movable surface  in  combination  with  a  stylus 
which  removes  a  portion  of  said  surface,  al- 
though the  record-sheet  itself  may  be  novel. 
*In  re  Hawley,  C.  D.  1906,  121  O.  G.  691. 

119.  The  substitution  for  an  old  element 
in  a  combination  of  an  element  performing 
a  similar  function,  but  constructed  in  a  differ- 
ent way,  does  not  render  the  combination  it- 
self patentable  where  there  is  no  resultant 
change  in  the  operation.  In  such  a  case,  al- 
though the  substituted  element  may  be  su- 
perior, the  invention  lies  in  the  element  and 
not  in  the  combination.    *Id. 

120.  Where  an  applicant  claimed  the  various 
elements  of  a  street-washing  machine  in  com- 
bination and  it  appears  that  the  novelty,  if 
any,  was  in  the  nozzle  used.  Held,  that  "if  ap- 
pellant has  made  an  improvement  upon  the 
nozzle  of  the  prior  art  he  is  entitled  to  be 
protected  in  the  use  of  his  invention,  but  he 
is  certainly  not  entitled  to  a  patent  on  a  new 
combination  merely  because  he  has  improved 
a  single  element  of  that  combination.  (In  re 
McNeil,  20  App.  D.  C.  294.)  He  has  im- 
proved an  element  of  but  has  not  made  a  new 


combination.    *In  re  Ratican,  C.  D.  1911,  163 
O.  G.  r,40. 

121.  The  Langan  patent.  No.  595,181,  for  a 
grab-hook.  Held,  invalid,  since  the  invention 
described  is  a  specific  form  of  hook,  whereas 
the  claim  is  for  a  combination  of  a  pair  of 
grab-hooks  and  a  draft  device  and  there  is  no 
new  coaction  or  co-operation  of  the  elements 
of  the  combination,  d  Langan  v.  Warren  Axe 
&  Tool  Co.,  C.  D.  1911,  166  O.  G.  986. 

122.  Where  the  claim  of  a  patent  is  for  a 
combination  of  a  pair  of  grab-hooks  and  a 
draft  device  and  it  appeared  from  the  spe- 
cification that  the  invention,  if  any,  consists 
in  the  specific  form  of  hook,  Held,  that  the 
claim  cannot  be  construed  as  covering  the 
hook  alone,    d  Id. 

(c)  Arrangemenl. 

123.  Shows  the  same  combination  as  that 
claimed,  some  of  the  elements  of  which  are 
placed  in  a  different  location,  which  position, 
however,  is  also  old.  Held,  that  the  claims 
present  nothing  more  than  ordinary  mechani- 
cal skill  not  amounting  to  invention.  Ex 
parte  Garrett,  C.  D.  1905,  117  O.  G.  2634. 

124.  Where  the  Magee  patent  and  the  ap- 
pellant's claims  show  the  same  arrangement 
of  diving  and  discharge  flues  at  the  rear  of 
the  stove,  though  the  return-flues  connecting 
the  last  two  named  in  Magee's  patent  are  lo- 
cated in  the  bottom  of  the  stove,  while  the 
applicant  locates  them  on  the  side,  and  the 
stoves  of  Hynes  and  Williams  have  horizontal 
flues  on  the  side,  and  Varney's  hot-air  heater 
shows  a  similar  arrangement,  Held,  that  there 
is  no  invention  in  these  claims.  *In  re  Clunies, 
C.  D.  1906,  123  O.  G.  2631. 

125.  Held,  that  it  is  shown  by  the  record 
patents  that  the  applicant's  claims  were  anti- 
cipated and  that  by  recombining  selected  ele- 
ments the  appellant  has  not  produced  a  com- 
bination w-hich  amounts  to  invention,  and  the 
details  of  construction  specified  in  some  of  the 
claims  are  within  the  scope  of  the  skill  of 
mechanics  familiar  with  this  art.    *Id. 

126.  Held,  that  the  change  in  the  relative 
location  of  the  various  elements  of  the  appa- 
ratus is  nothing  more  than  would  suggest  it- 
self to  a  skilled  mechanic  having  in  view  the 
conditions  and  conveniences  of  the  different 
places  in  which  the  construction  and  use  of 
the  apparatus  may  be  desired.  *In  re  Garrett, 
C.  D.  1906,  132  O.  G.  1047. 


PATENTABILITY  AND  INVENTION,  VII,   (d)-(f). 


431 


127.  Where  a  given  combination  of  elements 
is  old  in  an  automatic  computing-scale  of  the 
horizontal  type  and  the  prior  art  also  shows 
a  computing-scale  arranged  vertically,  al- 
though /t  was  not  entirely  automatic,  a  claim 
covering  a  rearrangement  of  the  elements  of 
the  automatic  horizontal  scale  to  provide  a 
vertical  construction  can  be  sustained  only 
to  a  limited  extent.  **Computing  Scale  Com- 
pany of  America  v.  The  Automatic  Scale 
Company,  C.  D.  1907,  137  O.  G.  849. 

128.  Mounting  a  hand  wheel  in  a  conve- 
nient place  on  the  spindle  of  a  self-contained 
electric  motor  head  stock,  Held,  to  require  no 
invention  over  the  art,  which  showed  such  a 
wheel  on  a  belt-driven  headstock.  Ex  parte 
White  and  Medford,  C.  D.  1909,  147  O.  G. 
771. 

(d)   Composilion  of  Matter. 

129.  Hoffman  having  disclosed  the  unalky- 
lated  dyestuff  prior  to  any  claim  made  by 
Bender  and  the  record  showing  that  the  pro- 
cess, purpose,  and  result  of  alkylation  as  used 
by  Hoffmann  were  old  and  well  known.  Held, 
that  Bender  made  no  invention  in  alkylating 
Hoffmann's  dyestuff.  Bender  v.  Hoffmann, 
C.  D.  1898,  85  O.  G.  1737. 

130.  A  patentable  compound  or  composition 
of  matter  is  one  that  is  produced  by  the  in- 
termixture of  two  or  more  specific  ingredients 
and  possesses  properties  pertaining  to  none 
of  those  ingredients  separately,  thereby  ac- 
complishing a  new  and  useful  result.  *Lane 
V.  Levi,  C.  D.  1903,  601,  104  O.  G.  1898. 

(e)  Degree  or  Duplication. 

131.  A  powder-can  having  a  perforated  out- 
let with  a  pivoted  cover  having  corresponding 
perforations  and  also  having  an  imperforate 
cap-fitting  over  the  outled.  Held,  not  patent- 
able, since  both  forms  of  closure  were  well- 
known,  and  the  use  of  both  on  one  can  was 
not  invention.  Ex  parte  Seabury,  C.  D.  1904, 
110  O.  G.  2013. 

132.  The  use  of  two  closures  upon  the  same 
powder-can,  each  being  separately  old,  Held, 
not  to  constitute  invention,  since  the  mere 
duplication  of  closures  does  not  involve  even 
the  ingenuity  of  the  skilled  mechanic.  *In  re 
Seabury,  C.  D.  1904,  110  O.  G.  2238. 

133.  A  claim  to  a  printing-press  held  un- 
patentable where  it  amounts  to  a  mere  dupli- 
cation of  what  is  shown  in  the  prior  art  and 
involves  the  production  of  no  new  result  save, 

31 


perhaps,   greater   convenience.     *In   re   Scott, 
C.  D.  1905,  117  O.  G.  278. 

134.  Where  the  reference  shows  a  printing- 
press  provided  with  folding,  cutting,  and  de- 
livering mechanisms  on  one  level  at  the  end 
of  the  press.  Held,  that  the  mere  provision  of 
a  series  of  presses  and  folders  one  above  an- 
other in  the  same  frame  involves  mere  dupli- 
cation and  arrangement  well  within  the  prov- 
ince of  the  skilled  designer  of  such  machinery 
and  is  not  invention.  Ex  parte  Scott,  C.  D. 
1905,  114  O.  G.  200. 

(f)  Double  or  Analogous  Use. 

135.  It  is  now  settled  that  Potts  v.  Creager 
(C.  D.  1895,  143,  70  O.  G.  494,  155  U.  S.  597) 
did  not  announce  any  new  doctrine  or  modify 
the  existing  rules  of  law.  The  same  prin- 
ciple had  already  been  stated  and  applied  in 
Blake  v.  City  of  San  Francisco  (C.  D.  1885, 
233,  31  O.  G.  380,  113  U.  S.  679)  ;  Pa.  R.  R. 
Co.  V.  Locomotive  Co.  (C.  D.  1884,  168,  27 
O.  G.  207,  110  U.  S.  490)  ;  Aron  v.  Railroad 
Co.  (C.  D.  1889,  650,  49  O.  G.  1365,  132  U.  S. 
186),  and  in  Briggs  v.  Central  Ice  Co.  (54  Fed. 
Rep.  376,  and  60  Fed.  Rep.  87).  *Briggs  v. 
Butterworth,  Commissioner  of  Patents,  C.  D. 
1898,  83  O.  G.  159. 

136.  Letters  Patent  No.  389,485,  granted 
September  11,  1888,  to  John  B.  Russell,  for 
a  device  for  holding  and  dipping  pills,  con- 
sisting of  a  hollow  bar  having  a  number  of 
seats  for  the  reception  of  pills  and  adapted  to 
have  the  air  exhausted  from  its  interior,  so 
as  to  hold  the  pills  to  the  seats  by  atmospheric 
pressure,  is  void  for  want  of  invention  in  view 
of  the  prior  use  of  similar  devices  for  analo- 
gous purposes,  d  Frederick  R.  Stearns  &  Com- 
pany V.  Russell,  C.  D.  1898,  84  O.  G.  1434. 

137.  The  application  of  a  device  designed 
for  lifting  sheets  of  paper  by  e.\hausting  the 
air  in  hollow  points  of  contact  therewith  to 
the  lifting  and  holding  of  pills  while  dipping 
them  in  a  gelatin-bath  considered  to  be  a  mere 
analogous  use  where  no  substantial  change  in 
the  device  was  necessary.  (Potts  &  Co.  v. 
Creager,  C.  D.  1895,  143,  70  O.  G.  494,  155  U. 
S.  597,  distinguished.)     did. 

138.  Where  it  requires  substantially  no 
change  in  an  old  device  to  adapt  it  to  a  new 
use,  such  adaptation  cannot  be  the  subject  of 
a  patent  no  matter  how  remote  and  unthought 
of  the  new  use  may  be,  provided  no  new  force 
or  mode  of  application  be  necessary  in  carry- 
ing on  such  use.    d  Id. 


482 


PATENTABILITY  AND  INVENTION,  VII,  (f). 


139.  The  decision  of  Potts  v.  Creager  indi- 
cates that  the  question  of  so-called  "double- 
use" — whether,  that  is  to  say,  the  new  use 
is  so  nearly  analogous  to  the  former  one  that 
the  applicability  of  the  device  to  its  new  use 
would  occur  to  a  person  of  ordinary  mechan- 
ical skill — is  one  dependent  upon  the  peculiar 
facts  of  each  case,  d  Briggs  v.  Duell,  Com- 
missioner of  Patents,  C.  D.  1899,  87  O.  G. 
1077. 

140.  Where  the  device  covered  by  the  claim 
is  an  apparatus  for  planing  cakes  of  ice  for 
storage,  consisting  of  a  cutter-head,  racks  and 
pinions  for  raising  the  cutter-head,  guides  for 
the  racks,  etc.,  and  the  anticipating  reference 
is  a  wood-planer  attachment  consisting  of  a 
cutter-head,  racks  and  pinions  for  raising 
the  cutter-head,  guides  for  the  racks,  etc., 
Held,  that  the  use  of  the  rack  and  pinion  in 
the  device  of  the  claim  is  analogous  to  the 
use  of  the  rack  and  pinion  in  the  wood-plan- 
ing attachment,  as  in  each  case  they  move  a 
cutter  (which  is  itself  to  remove  surplus  ma- 
terial), and  it  makes  little  difference  that  the 
workmen  who  plane  wood  do  not  plane  ice. 
did. 

141-  A  claim  for  a  traveling  carrier  of  a 
hog-hoisting  machine  the  essential  feature 
of  which  is  chain-pendants  permanently  at- 
tached to  the  carrier.  Held,  to  be  anticipated 
by  an  endless  carrier  for  hoisting  building 
material,  having  rod-pendants  permanently  at- 
tached thereto,  the  uses  of  the  two  devices 
being  practically  the  same,  as  by  substituting 
the  chain  for  the  rod  attached  to  the  carrier 
of  the  reference  the  latter  would  be  available 
for  drawing  hogs  from  the  pen  to  the  hoisting 
point  in  the  manner  described  by  appellant 
♦Lowry  V.  Duell,  Commissioner  of  Patents, 
C.  D.  1899,  88  O.  G.  717. 

142.  A  pliable  metallic  capsule  for  bottles 
having  applied  to  its  inner  surface  a  coating 
of  material  which  becomes  adhesive  when 
moistened,  Held,  to  be  not  patentable,  as  ce- 
mented appliances — such  as  envelops,  labels, 
and  postage-stamps — requiring  merely  the  ap- 
plication of  moisture  to  put  them  into  use  are 
old.  *Nimmy  v.  Commissioner  of  Patents, 
C.  D.  1899,  86  O.  G.  345. 

143.  An  improvement  in  a  stocking-sup- 
porter, consisting  in  raised  lugs  on  the  side 
of  the  slot-plate  to  prevent  the  stud  over 
which  the  upper  end  of  the  stocking  is  grip- 
ped from  rising  in  the  slot  and  becoming 
disengaged,  does  not  rise  to  the  dignity  of 
invention  in  view  of  the  fact  that  lugs  for  the 


same  purpose  have  been  used  in  suspender- 
clasps.  *Smith  V.  Duell,  Commissioner  of 
Patents,  C.  D.  1899,  87  O.  G.  893. 

144.  There  is  no  such  remoteness  in  the  use 
of  the  slot-plate  with  the  lugs  in  the  clasp 
of  the  suspender  as  is  sufficient  to  raise  its 
adaptation  to  use  in  a  stocking-supporter  from 
the  plane  of  mechanical  ingenuity  to  that  of 
invention.  The  use  is  clearly  analogous. 
(Potts  V.  Creager,  C.  D.  189.5,  143,  70  O.  G. 
494,  155  U.  S.  597,  and  Briggs  v.  Commissioner 
of  Patents,  C.  D.  1897,  211,  78  O.  G.  169, 
cited.)     *Id. 

145.  Mechanism  for  wrapping  a  cigar  which 
differs  from  previous  devices  used  for  analo- 
gous purposes  merely  in  having  the  perforated 
part  of  the  table  in  the  form  of  a  cigar-wrap- 
per, Held,  lacking  in  patentable  novelty  under 
the  doctrine  of  double  use.  John  R.  Williams 
Co.  et  al.  V.  Miller,  Du  Brul  &  Peters  Mfg. 
Co..  C.  D.  1901,  97  O.  G.  2308. 

146.  In  denying  patentability  to  a  change 
in  prior  devices.  Held,  that  the  change  was 
not  made  by  transferring  an  old  device  to  use 
in  an  entirely  different  and  unrelated  art  and 
that  therefore  the  case  of  Potts  v.  Creager 
(C.  D.  1895,  143,  70  O.  G.  494,  155  U.  S.  597) 
does  not  apply.  *In  re  Thurston,  C.  D.  1906, 
120  O.  G.  1166. 

147.  Where  a  patented  device  disclosing  the 
structure  claimed  had  been  used  with  a  heat- 
ing medium  to  increase  the  temperature  of 
circulating  water  and  a  cooling  medium  could 
be  used  without  the  slightest  alteration  to  de- 
crease the  temperature  of  the  circulating 
water.  Held,  that  the  claims  to  this  structure 
as  a  cooling  device  are  without  invention.  Ex 
parte  Welch,  C.  D.  1906,  123  O.  G.  995. 

148.  The  application  of  an  old  device  or 
process  to  a  similar  or  analogous  subject  with 
no  change  in  the  manner  of  applying  it  and 
no  result  substantially  distinct  in  its  nature 
is  not  patentable,  even  if  the  new  form  of 
result  has  not  before  been  contemplated.  (Pa. 
R.  R.  V.  Locomotive  Truck  Co.,  C.  D.  1884, 
168,  27  O.  G.  207,  110  U.  S.  490,  494;  Howe 
Machine  Co.  v.  National  Co.,  C.  D.  1890,  281, 
51  O.  G.  475,  134  U.  S.  388,  397;  Durham  v. 
Seymour,  C.  D.  1895,  307,  71  O.  G.  601,  6  App. 
D.  C.  78.)  *Millet  et  al.  v.  Allen.  Commis- 
sioner of  Patents,  C.  D.  1906,  124  O.  G.  1524. 

149.  Where  applicant  changed  the  size  and 
mode  of  fastening  of  the  tubes  of  the  device 
shown  in  the  reference  and  transferred  the 
device  for  heating  water  into  one  for  cooling 
it.   Held,   that    the   use   of    the    latter   is    too 


PATENTABILITY  AND  INVENTION,  VII,   (g). 


483 


nearly  analogous  to  the  former  to  raise  the 
transfer  to  the  dignity  of  invention,  notwith- 
standing the  fact  that  the  new  device  may 
possess  great  advantages  over  others  used  to 
accomplish  the  same  purpose.  It  evinces  the 
skill  of  the  mechanic  informed  in  the  art  and 
not  the  exercise  of  the  inventive  faculty.  *In 
re  Welch,  C.  D.  1906,  125  O.  G.  2767. 

150.  Patentable  novelty  cannot  be  predicted 
merely  on  a  difference  in  the  relation  between 
the  parts  of  a  mechanism  and  the  material 
operated  upon  by  such  mechanism.  There  is 
involved  no  new  use  of  an  old  mechanism.  Ex 
parte  McNeil  and  Sturtevant,  C.  D.  1906,  124 
O.  G.  2177. 

151.  A  patent  will  not  be  granted  upon  the 
discovery  of  a  new  and  analogous  function 
for  an  old  machine.  (Roberts  v.  Ryer,  C.  D. 
1876,  439,  10  O.  G.  204,  91  U.  S.  150;  Ansonia 
Co.  V.  Electrical  Supply  Co.,  C.  D.  1892,  313, 
58  O.  G.  1692,  144  U.  S.  11 ;  Potts  V.  Creager, 
C.  D.  1895,  143,  73  O.  G.  494,  155  U.  S.  597.) 
*In  re  McNiel  v.  Sturtevant,  C.  D.  1907,  126 
O.  G.  3425. 

152.  Where  it  was  old  to  communicate  mo- 
tion to  a  movable-band  advertising  device  by 
means  of  a  lever  operated  by  removing  a 
weight  from  or  restoring  it  to  a  hook,  the  use 
of  the  lever  of  a  telephone  for  that  purpose  is 
not  a  new,  but  an  additional  use  for  that 
lever.    *In  re  Lyon,  C.  D.  1905,  149  O.  G.  1121. 

153.  Photography  and  blue-printing  are 
simply  different  phases  of  the  art  of  light- 
printing,  and  the  mere  transfer  of  a  device 
used  in  one  to  the  other  does  not  involve  pat- 
entable invention,  d  Elliott  &  Co.  v.  Youngs- 
town  Car  Mfg.  Co.,  C.  D.  1910,  160  O.  G. 
1273. 

(g)  Process  Mere  Function  of  Machine. 

154.  Where  a  process  is  simply  the  function 
or  operative  effect  of  a  machine.  Corning  v. 
Burden,  Risdon  Locomotive  Works  v.  Med- 
art,  and  other  cases  are  conclusive  against  its 
patentability ;  but  where  it  is  one  which, 
though  ordinarily  and  most  successfully  per- 
formed by  machinery,  may  also  be  performed 
by  simple  manipulation — such,  for  instance, 
as  the  folding  of  a  paper  in  a  peculiar  way 
for  the  manufacture  of  paper  bags  or  a  new 
method  of  weaving  a  hammock — there  are 
cases  to  the  effect  that  such  a  process  is  pat- 
entable, though  none  of  the  powers  of  nature 
be  invoked  to  aid  in  producing  the  result. 
(Eastern  Paper  Bag  Co.  v.  Standard  Paper 


Bag  Co.,  C.  D.  1887,  537,  41  O.  G.  231,  30  Fed. 
Rep.  63 ;  Union  Paper  Bag  Machine  Co.  v. 
Waterbury,  30  Fed.  Rep.  389 ;  Travers  v.  Am. 
Cordage  Co.,  C.  D.  1895,  125,  70  O.  G.  277, 
64  Fed.  Rep.  771.)  **Boyden  Power  Brake 
Co.  et  al.  V.  Westinghouse  et  al.,  and  vice 
versa,  C.  D.  1898,  83  O.  G.  1067. 

155.  A  claim  for  a  process  of  dry-pressing 
which  includes  subjecting  a  collection  of  sheets 
of  paper  to  pressure  without  the  use  of  fuller- 
boards,  tying  them  into  a  bundle  while  under 
pressure,  removing  them  from  the  press,  and 
allowing  them  to  remain  tied  until  fixed.  Held, 
to  describe  merely  the  operation  and  effect 
of  the  machine  and  to  be  invalid.  **Busch 
v.  Jones,  et  al.,  C.  D.  1902,  99  O.  G.  229. 

156.  Claim  5  of  Letters  Patent  No.  204,741, 
granted  to  Joshua  W.  Jones,  for  a  process  of 
dry-pressing  and  removing  type-indentations 
from  printed  sheets.  Held,  invalid,  as  covering 
merely  the  function  of  the  machine.  (Deci- 
sion below,  16  App.  D.  C.  23,  reversed.) 
*Busch  V.  Jones  et  al.,  C.  D.  1902,  99  O.  G. 
229. 

157.  An  alleged  process  of  coaling  ships  at 
sea  consisting  in  making  a  flexible  connection 
athwartships  and  creating  a  pressure  between 
one  ship  and  the  water  on  the  side  toward  the 
other,  Held,  to  cover  the  function  of  the  ap- 
paratus and  not  a  true  process.  Ex  parte  Cun- 
ningham, C.  D.  1902,  101  O.  G.  2288. 

158.  A  claim  stating  the  function  of  mech- 
anism can  be  sustained,  if  at  all,  only  by  con- 
struing it  as  covering  the  means  for  effecting 
the  function,  and  where  a  claim  to  that  means 
has  already  been  allowed  the  claim  stating  the 
function  of  the  means  must  be  refused.    Id. 

159.  A  process  of  coaling  ships  at  sea  con- 
sisting in  making  a  flexible  connection  between 
them  and  creating  a  pressure  between  one  ship 
and  the  water  on  the  side  toward  the  other 
ship.  Held,  to  cover  merely  the  function  of 
mechanism  and  not  a  true  process,  *In  re 
Cunningham,  C.  D.  1903,  102  O.  G.  824. 

160.  Where  the  applicant  has  been  allowed 
a  claim  for  means  for  effecting  a  certain  pur- 
pose and  he  claims  the  process  of  effecting  it, 
but  that  alleged  process  cannot  be  conceived 
as  independent  of  the  means  and  cannot  be 
described  without  reference  to  the  means, 
Held,  that  the  alleged  process  is  the  function 
of  the  means  and  is  not  patentable.    *Id. 

161.  Where  the  claims  are  for  an  alleged 
electrical  process  which  is  identical  with  the 
mode  of  operation  of  the  electrical  mechanism 
and  the  result  of  the  use  of  the  mechanism  is 


484 


PATENTABILITY  AND  INVENTION,  VII,  (h),   (i). 


nothing  more  than  its  expected  function,  Held, 
that  the  claims  cover  no  more  than  the  func- 
tion of  the  machine  and  are  not  patentable. 
Ex  parte  Creveling,  C.  D.  1904,  111  O.  G. 
2489. 

162.  Where  the  claims  are  drawn  in  the 
form  of  process  claims,  but  are  merely  for 
the  results  of  the  actions  of  various  electrical 
devices,  the  results  of  which  actions  are  well 
known  and  are  just  as  inevitable  as  the  ac- 
tions of  mechanical  devices  and  their  results, 
Held,  that  the  claims  are  for  the  function  of 
the  electrical  mechanism  and  as  such  are  not 
patentable.    Id. 

163.  Where  the  method  claims  cover  merely 
the  function  or  result  of  the  operation  of  the 
machine  disclosed  and  claimed  in  the  appel- 
lant's prior  patent.  Held,  that  to  grant  the 
present  claims  would  result  in  the  grant  of 
a  second  patent  for  the  same  invention,  which 
patent  would  be  invalid.    Id. 

164.  A  claim  for  a  process  Held,  unpatent- 
able when  it  does  not  appear  that  said  pro- 
cess can  be  carried  out  by  any  other  means 
than  that  invented  for  such  purpose  by  ap- 
pellant and  for  which  he  has  obtained  a  pat- 
ent.   *Id. 

(h)  Omission  of  Part  with  its  Function. 

165.  Where  the  omission  of  certain  ele- 
ments of  a  structure  merely  involves  the  omis- 
sion of  their  well-known  functions  and  effects. 
Held,  that  such  omission  involves  only  the 
judgment,  selection,  and  adaptation  of  old  ma- 
chines to  particular  work,  which  is  expected 
as  a  matter  of  course  from  those  skilled  in  the 
art  and  is  not  invention.  Ex  parte  Thomson, 
C.  D.   1905,  118  O.  G.  266. 

(i)  Process  or  Method. 

166.  Risdon  Locomotive  Works  v.  Medart 
and  other  cases  assume,  although  they  do  not 
expressly  decide,  that  a  process  to  be  patent- 
able, must  involve  a  chemical  or  other  sim- 
ilar elemental  action,  and  it  may  be  still  re- 
garded as  an  open  question  whether  the  pat- 
entability of  processes  extends  beyond  this 
class  of  inventions.  **Boyden  Power  Brake 
Co.  et  al.  v.  Westinghouse  et  al.,  and  vice 
versa,  C.  D.  1898,  83  O.  G.  1067. 

167.  Where  the  commissioner  of  patents  re- 
fused to  applicant  a  claim  for  the  process  of 
reducing  a  metallic  oxid  by  electrolysis  and 
applicant    acquiesced    in    that    rejection,    but 


prosecuted  another  claim  which  differed  from 
the  rejected  claim,  first,  in  mentioning  zinc 
specifically  as  the  metal  to  be  extracted  from 
the  metallic  oxid,  and,  second,  in  the  intro- 
duction into  the  claim  of  the  preliminary  step 
of  producing  the  xincate  solution  by  lixivia- 
tion  of  roasted  zinc  ores  by  caustic-alkali  so- 
lutions. Held,  that  the  first  modification  does 
not  add  to  the  patentability  of  the  alleged  in- 
vention, that  the  second  modification  simply 
adds  to  the  process  which  was  rejected  as  un- 
patentable a  preliminary  step  which  was  al- 
ready well  known,  and  that  the  claim  is  not 
patentable.  ♦Mond  v.  Duell,  Commissioner  of 
Patents,  C.  D.  1900,  91  O.  G.  1437. 

168.  If  a  process  for  the  reduction  of  any 
and  all  metallic  oxids  is  not  patentable,  the 
same  process  for  one  specific  metal  oxid — the 
oxid  of  zinc — cannot  be  patentable.     *Id. 

169.  The  addition  of  one  well-known  pro- 
cess to  another  well-known  process  does  not 
constitute  invention  unless  some  different  or 
better  result  is  produced  than  that  which  had 
been  previously  obtained.    *Id. 

170.  Claims  for  the  process  of  making  a 
coil  for  electrical  measuring  instruments, 
which  consists  merely  in  drawing  a  section 
of  sheet  metal  over  a  mandrel  and  subjecting 
it  to  pressure  until  a  desired  configuration 
is  acquired  and  then  turning  down  the  lateral 
edges.  Held,  to  cover  simple  and  well-known 
mechanical  operations  and  to  be  without  any 
element  of  patentable  novelty.  *In  re  Weston, 
C.  D.  1901,  94  O.  G.  1786. 

171.  The  law  being  well  settled  that  "a  pro- 
cess which  amounts  to  no  more  than  the 
mere  function  of  a  machine  is  not  patentable" 
(In  re  Weston,  ante,  290,  94  O.  G.  1786),  it 
follows  that  as  a  corollary  to  this  proposition 
it  is  equally  true  that  a  process  which  amounts 
to  nothing  more  than  the  necessary  or  obvious 
manner  of  effecting  the  production  of  the  ar- 
ticle is  not  patentable.  Ex  parte  Trevette, 
C.  D.  1901,  97  O.  G.  1173. 

172.  In  the  case  of  process  and  product 
the  product  is  the  only  patentable  subject- 
matter  where  the  process  is  no  more  than  the 
necessary  or  obvious  manner  of  effecting  the 
product.  (Ex  parte  Simonds,  C.  D.  1888,  78, 
44  O.  G.  445.)      Id. 

173.  In  the  case  of  two  claims,  one  being 
for  the  product  and  the  other  for  the  method 
of  making  that  product,  which  method  is 
merely  a  recitation  of  the  necessary  and  ob- 
vious steps  employed  in  producing  the  article 
desired,  these  claims  though  differing  in  form 


PATENTABILITY  AND   INVENTION,   VII,    (i). 


485 


are,  in  effect,  for  the  same  thing — they  cover 
the  same  invention ;  but  the  invention  is  a  pro- 
duct, and  therefore  is  properly  covered  by 
a  claim  which  purports  to  be  for  a  pro- 
duct. (Citing  Mosler  Safe  and  Lock  Co.  v. 
Mosler,  Bahmann  &  Co.,  C.  D.  1888,  420,  43 
O.  G.  1115.)     Id. 

174.  Where  claims  are  presented  which  state 
nothing  "more  than  the  necessary  or  obvious 
manner  of  effecting  the  product,"  said  claims 
are  not  patentable  as  processes,  as  they  do 
not  state  the  invention.  It  is  for  the  invention 
that  the  patent  is  granted.    Id. 

175.  If  an  alleged  method  claim  is  not  pat- 
entable as  such  for  the  reason  that  it  sets 
forth  nothing  more  than  the  necessary  or  ob- 
vious manner  of  effecting  the  article  or  pro- 
duct, the  claim  is  in  fact  a  claim  for  the  ar- 
ticle or  product.  The  claim  being  in  fact  a 
claim  for  the  article,  it  should  be  so  expressed. 
Id. 

176.  When  the  invention  is  not  properly 
claimable  as  a  process,  it  is  the  duty  of  the 
office  tribunals  to  so  hold,  if  they  be  of  that 
opinion.  The  patent  office  should  not  issue  a 
patent  containing  claims  which  on  their  face 
purport  to  cover  one  statutory  class  of  inven- 
tion when  the  invention  which  they  do  cover 
in  fact  belongs  to  another  statutory  class.  Id. 

177.  A  process  of  repairing  asphalt  pave- 
ments, the  essential  feature  of  which  consists 
in  applying  heat  to  the  edges  of  the  excava- 
tion, so  as  to  soften  the  material  and  make 
a  bond  with  the  new  material.  Held,  unpatent- 
able in  view  of  publications  describing  this 
process,  although  the  patentee  uses  a  new 
means  for  heating  and  applies  it  to  a  different 
kind  of  asphalt.  **United  States  Repair  and 
Guaranty  Company  v.  Assyrian  Asphalt  Com- 
pany, C.  D.  1902,  98  O.  G.  582. 

178.  Where  a  process  was  broadly  old  and 
an  applicant  modified  the  same  by  merely  per- 
forming the  last  step  thereof  by  machinery 
in  place  of  the  old  way  of  performing  it  by 
hand,  he  has  not  patentably  modified  the  pro- 
cess. Ex  parte  Colton,  C.  D.  1902,  101  O.  G. 
2285. 

179.  Where  it  was  old  to  divide  a  pill  mass 
into  parts  by  machinery,  each  part  containing 
sufficient  material  to  make  a  single  pill,  and 
then  to  roll  the  separate  parts  by  hand  into 
pills,  and  it  was  also  old  to  roll  individual  pill 
masses  between  grooved  surfaces  to  form 
them  into  pills,  it  did  not  add  novelty  to  the 
first  process  to  substitute  for  the  hand-roll- 
ing operation  thereof  the  step  of  effecting  the 


same  result  by  rolling  the  pill  parts  between 
grooved  surfaces.     Id. 

180.  A  method  claim  is  not  patentable  which 
on  its  face  is  nothing  more  than  the  necessary 
or  obvious  mode  of  making  the  shoe  of  the 
application.  (Ex  parte  Trevette,  C.  D.  1901, 
170,  97  O.  G.  1173.)  Ex  parte  Butterfield, 
108  O.  G.  795. 

181.  Held,  that  the  appealed  claims  to  an 
alleged  process  of  regulating  a  generator  are 
not  patentable,  since  they  do  not  include  all  of 
the  steps  necessary  to  effect  the  result  stated 
or  any  useful  result.  *In  re  Creveling,  C.  D. 
1905,  117  O.  G.  1167. 

182.  A  claim  purporting  to  cover  a  method 
cannot  be  regarded  as  patentable  where  it  is 
lacking  in  one  of  the  steps  which  in  accord- 
ance with  the  statement  of  invention,  descrip- 
tion, and  drawings  is  essential  to  the  carrying 
out  of  the  alleged  method.    *Id. 

183.  Where  an  alleged  process  claim  in- 
cludes the  step  of  rotating  an  armature  and 
concludes  "and  by  said  motion  in  one  direc- 
tion increasing  the  output  of  the  generator 
and  in  the  other  direction  decreasing  the  said 
output,"  but  it  appears  that  the  result  stated 
is  not  accomplished  by  the  mere  motion  of 
the  armature,  but  by  the  interposition  of  other 
means.  Held,  that  there  is  no  foundation  in 
the  case  for  the  claim.    *Id. 

184.  A  claim  which  is  inaccurate  is  not  pat- 
entable.   Id. 

185.  After  the  generic  process  of  preparing 
printing  plates  with  projecting  portions  on  the 
back  thereof  and  pressing  these  to  the  face 
of  the  plates,  giving  a  graduated  surface,  has 
been  claimed,  and  the  specific  mode  of  pre- 
paring the  plates  by  the  use  of  photolitho- 
graphing  and  etching  has  also  been  claimed, 
there  is  nothing  left  to  claim  in  a  separate 
application  as  a  separate  invention  as  a  pro- 
cess of  making-ready  printing  plates.  What 
remains  would  appear  to  be  a  mere  carrying 
out  of  the  purposes  of  the  original  invention, 
which  ought  to  be  obvious  to  skilled  workers 
in  the  art.  *In  re  Wickers  and  Furlong,  C. 
D.  1907,  129  O.  G.  2074. 

186.  Where  it  is  old  in  the  art  of  dyeing  to 
fix  anilin-black  upon  vegetable  textile  fabrics 
by  a  two-step  process  consisting  in  treating 
the  farbric  with  salt  of  anilin  alone  and  with 
an  oxidizing  salt  mixed  with  a  compound 
containing  a  satalytic  agent  and  it  was  old 
to  print  textile  fabrics  in  two-step  processes, 
Held,  that  to  apply  to  the  two-step  printing 
process   the   selection   of   ingredients   thereto- 


486 


PATENTABILITY  AND  INVENTION,  VII,  (j). 


fore  used  in  dyeing  did  not  arise  to  the  dig- 
nity of  invention.  *In  re  Chase  and  McKen- 
zie,  C.  D.  1908,  135  O.  G.  895. 

187.  A  claim  for  a  process  of  forming  metal 
rings  which  differs  from  the  references  mere- 
ly by  the  statement  that  a  bead  is  formed  cen- 
trally of  the  blank,  Held,  unpatentable.  *In 
re  White,  C.  D.  1908,  136  O.  G.  1771. 

188.  Where  the  prior  art  disclosed  the  cool- 
ing of  a  tempering  fluid  by  means  of  a  liquid 
circulating  in  a  cooling-coil  and  it  was  also 
old  to  introduce  ice  into  a  tempering  bath, 
Held,  that  to  coo!  such  bath  by  a  refrigerating 
coil  to  "a  point  approximating  the  freezing 
point"  involved  no  invention.  *In  re  Chase, 
C.  D.  1009,  146  O.  G.  960. 

189.  Where  the  art  showed  it  was  old  to 
introduce  a  powder  as  a  modifying  element 
into  a  stream  of  molten  metal  in  the  direc- 
tion of  its  travel  between  the  ladle  and  the 
mold,  also  that  it  was  old  to  blow  powder 
into  a  stream  of  metal  transversely.  Held, 
that  no  invention  is  involved  in  introducing 
the  powder  in  the  manner  first  described  by 
the  aid  of  fluid  pressure.  Ex  parte  Wright, 
C.   D.    1909,   147  O.   G.  235. 

190.  It  makes  no  difference  in  considering 
the  patentability  of  the  "method"  claim  of 
what  materials  the  bridge  is  made.  *In  re 
Luten,  C.  D.  1909,  143  O.  G.  1110. 

191.  A  process  of  producing  aldehyde  which 
consists  "in  inducing  a  reaction  between  hy- 
drocarbon and  o.xygen  and  abstracting  the  ex- 
cess heat  therefrom,"  Held,  not  patentable  in 
view  of  the  prior  art,  which  shows  that  it  was 
old  to  produce  formic  aldehyde  both  from 
methyl  alcohol  and  hydrocarbon  and  that  ap- 
plicant's method  of  extracting  heat  from  the 
reaction-chamber  was  also  old.  *In  re  Black- 
more,   C.    D.   1909,  145   O.   G.   358. 

192.  "The  fact  that  appellant  has  in  his 
possession  an  apparatus  suitable  for  the  pro- 
duction of  formic  aldehyde  in  the  manner  set 
forth  in  his  specification  in  larger  quantities 
than  any  apparatus  set  forth  in  the  refer- 
ences cited,  is  immaterial  and  has  no  bearing 
upon  the  patentability  of  the  process."    Id. 

193.  Claims  for  a  process  of  making  am- 
monia. Held,  unpatentable  in  view  of  the  prior 
art.  Ex  parte  Woltereck,  C.  D.  1910,  150  O. 
G.  1041. 

194.  Claims  for  a  process  of  making  am- 
monia. Held,  unpatentable  in  view  of  the  prior 
art.  *In  re  Woltereck,  C.  D.  1910,  151  O.  G. 
451. 


195.  Claims  for  a  process  of  introducing  a 
modifying  element  into  a  cast  body  during 
pouring.  Held,  unpatentable  in  view  of  the 
prior  art.  *In  re  Wright,  C.  D.  1910,  151  O. 
G.  1015. 

196.  A  claim  for  a  decaffeinized  coffee,  the 
caffein  having  been  removed  after  the  coffee 
was  roasted,  Held,  anticipated  by  a  patent  for 
decaffeinized  coffee  from  which  the  caffein 
had  been  removed  before  roasting.  *In  re 
Roselius,  C.  D.  1911,  162  O.  G.  272. 

197.  Claims  for  a  method  of  preparing  bev- 
erages which  include  the  three  steps  of  pre- 
paring, storing  and  dispensing  the  beverage, 
Held,  to  cover  mere  aggregations,  since  each 
of  these  steps  is  complete  in  itself,  and  inde- 
pendent of  the  others.  Ex  parte  Harris,  C. 
D.  1011.  168  O.  G.  1033. 

198.  Claims  for  a  method  of  preparing  bev- 
erages which  include  the  three  steps  of  pre- 
paring, storing  and  dispensing  the  beverage. 
Held,  to  be  an  aggregation  of  unrelated  func- 
tions performed  by  appellant's  apparatus.  *Id. 

199.  "That  the  entire  process  of  the  appli- 
cant is  not  anticipated  in  any  single  reference 
is  unimportant.  It  is  sufficient  if  his  several 
steps  be  found  in  different  patents.  (In  re 
Mond's  Appeal,  16  App.  D.  C.  351-354;  In  re 
Droop.  30  App.  D.  C.  334;  In  re  Faber,  31 
App.  D.  C.  531.)"  *In  re  Harris,  C.  D.  1911, 
170  O.  G.  484. 

(j)  Substitution  or  Use  of  Profter  Material 
or  Parts. 

200.  It  being  old  to  secure  together  two 
shells  or  cups  of  a  porcelain  insulator  by  ce- 
ment, Held,  that  there  is  no  patentable  novelty 
in  securing  them  together  by  fusing.  *In  re 
Locke,  C.  D.  1901,  94  O.  G.  432. 

201.  A  claim  covering  an  ozonizer  in  com- 
bination with  a  particular  apparatus  for  pro- 
ducing currents  of  high  frequency.  Held,  lack- 
ing in  patentable  novelty  in  view  of  two  prior 
patents,  one  showing  an  ozonizer  in  combina- 
tion with  one  form  of  high-frequency  appa- 
ratus and  the  other  showing  the  particular 
high-frequency  apparatus  claimed  in  com- 
bination with  different  translating  devices.  Ex 
parte  Verley,  C.  D.  1902,  99  O.  G.  1621. 

202.  An  apparatus  for  producing  ozone  by 
the  use  of  electrical  currents  of  high  fre- 
quency. Held,  not  patentable  in  view  of  cer- 
tain patents  to  Tesla  cited.  (Decision  of  the 
Commissioner,   ante,   172,  99   O.   G.   1621,   af- 


PATENTABILITY  AND  INVENTION,   VII,    (j). 


487 


firmed.)     *In  re  Verley,  C.  D.  1902,  99  O.  G. 
2323. 

203.  Where  the  claim  covers  an  ozone  ap- 
paratus in  combination  with  particular  means 
for  producing  currents  of  high  frequency. 
Held  anticipated  by  two  patents,  one  disclosing 
the  high-frequency  apparatus  used  with  elec- 
tric lights  and  the  other  disclosing  an  ozone 
apparatus  supplied  by  a  different  form  of 
high-frequency  apparatus.     *Id. 

204.  Held,  that  the  substitution  of  one  old 
form  of  high-frequency  apparatus  for  an- 
other in  the  production  of  ozone  involves 
mere  double  use  and  not  invention.  Ex  parte 
Verley.  C.  D.  1902,  99  O.  G.  1621. 

205.  Held,  that  there  was  no  invention  in 
using  a  Herzian  exciter  in  an  ozone  apparatus 
when  it  had  been  used  in  other  devices  to  ob- 
tain electric  currents  of  high  frequency  and 
an  ozone  patent  has  described  the  use  of 
devices  of  that  class  with  an  ozcnizer.  *In 
re  Verley,  C.  D.  1902,  99  O.  G.  2S23. 

206.  .\  claim  for  a  seam  consisting  of 
threads  crossed  on  the  face  of  the  fabric  and 
forming  loops  through  the  fabric  locked  on 
the  under  surface  by  a  single  locking-thread, 
Held,  unpatentable  in  view  of  two  patents, 
one  showing  the  crossed  threads  held  by  two 
parallel  locking-threads  and  the  other  show- 
ing two  straight  threads  on  the  face  of  the 
fabric,  the  loops  beneath  being  locked  by  a 
single  locking-thread.  Ex  parte  Klemm,  C.  D. 
1903,  102  O.  G.  1553. 

207.  The  substitution  of  one  old  means  for 
locking  the  loops  of  the  old  cross-stitch  seam 
for  another  old  means  with  no  change  in  the 
result  is  not  invention.     Id. 

208.  .\  seam  for  sewed  articles  consisting 
of  two  crossed  threads  on  the  upper  surface 
of  the  fabric  and  a  single  locking-thread 
crossing  the  seam  below  the  fabric.  Held,  not 
patentable  in  view  of  two  patents,  one  show- 
ing two  crossed  threads  above  and  two 
straight  locking-threads  '.)elow  and  the  other 
showing  two  straight  threads  above  and  a 
single  crossed  locking-thread  below.  *In  re 
Klemm,  C.  D.  1903,  103  O.  G.  1682. 

209.  The  substitution  for  the  two  locking- 
threads  used  in  the  old  cross-thread  seam  of 
the  single  locking-thread  before  used  in  the 
parallel-stitch  seam.  Held,  not  invention,  but 
double  use.     *Id. 

210.  Held,  that  a  claim  for  a  leather  boot 
or  shoe  provided  with  a  rubber  outer  sole 
secured  by  vulcanization  directly  to  the  under 
surface  of  the  inner  sole  and  welt  does  not 


involve  invention  over  an  English  patent  which 
shows  that  it  is  old  to  secure  a  rubber  sole 
by  vulcanization  to  the  inner  sole  of  a  shoe 
which  has  no  welt,  as  welts  are  old  and  well 
known  in  this  art.  Ex  parte  Butterfield,  C. 
D.  1904,  108  O.  G.  795. 

211.  It  being  old,  as  shown  in  an  English 
patent,  to  secure  a  rubber  sole  by  vulcaniza- 
tion to  an  inner  sole  of  a  shoe,  and  the  par- 
ticular way  adopted  by  the  appellant  of  se- 
curing rubber  to  leather  being  old,  as  shown 
in  United  States  patents,  it  is  not  invention 
to  secure  the  rubber  sole  to  the  leather  sole 
of  the  English  patent  by  the  old  way  of  se- 
curing rubber  to  leather  disclosed  by  the 
United  States  patents.     Id. 

212.  Where  it  was  old  to  vulcanize  a  rubber 
sole  to  the  outer  leather  sole  of  a  shoe  and 
was  old  to  vulcanize  a  rubber  sole  to  the  inner 
sole,  Held,  that  there  was  no  invention  to 
vulcanize  a  rubber  sole  directly  to  an  inner 
sole  of  a  particular  kind  provided  with  a  welt. 
*In  re  Butterfield,  C.  D.  1904,  108  O.  G.  1589. 

213.  Quaere,  whether  a  statement  of  the 
mode  of  construction  of  a  shoe  having  a  rub- 
ber sole  vulcanized  to  it  can  be  considered  a 
process  at  all.     ♦Id. 

214.  A  claim  covering  the  use  of  a  ther- 
mostat to  cut  off  the  supply  to  a  gas-engn'ne 
to  prevent  overheating.  Held,  not  patentable 
in  view  of  the  common  use  of  thermostats  to 
cut  off  the  supply  of  heating  medium  to  va- 
rious devices  when  the  temperature  reaches  a 
predetermined  point.  *In  re  Adams,  C.  D. 
1905,  114  O.  G.  2043. 

215.  A  thermostat  when  used  to  cut  off  the 
supply  to  a  gas  engine  performs  no  unusual 
function  and  does  not  produce  a  new  and  use- 
ful result  that  rises  to  the  dignity  of  inven- 
tion.    *Id. 

216.  Where  the  complainants  ask  for  a 
patent  upon  a  Bourdon  tube  for  a  steam-gage 
having  a  thin,  flattened  middle  portion  and 
thickened  ends  provided  with  tapering  screw- 
threads  and  it  appears  that  before  their  al- 
leged invention  it  was  common  in  hydraulic 
gages  to  have  tubes  with  thin,  flattened  mid- 
dle portions  and  thickened  screw-threaded 
ends,  and  it  appears,  further,  that  it  was 
common  to  use  tapered  screw-threads  to  make 
a  steam-tight  joint,  Held,  that  the  complain- 
ants are  not  entitled  to  a  patent  a  Millet, 
Reed,  and  the  Crosby  Steam  Gage  &  Valve 
Company  v.  Allen.  Commissioner  of  Patents, 
C.  D.  1905.  115  O.  G.  1586. 


488 


PATENTABILITY  AND  INVENTION,  VII,  (j). 


817.  Since  it  was  common  to  use  a  tapered 
screw-threaded  joint  to  make  a  steam-tight 
joint  without  solder,  the  substitution  of  this 
joint  for  the  old  soldered  joint  in  a  steam- 
gage  when  it  was  found  desirable  to  make 
such  gage  without  the  use  of  solder  was  an 
obvious  mechanical  expedient  involving  no 
exercise  of  the   inventive   faculty,     a  Id. 

218.  The  use  of  a  tapered  screw-threaded 
joint  on  the  Bourbon  tube  of  a  steam-gauge 
is  not  a  patentable  invention  in  view  of  a  prior 
patent  showing  a  union-joint  on  such  tubes, 
since  the  two  joints  are  recognized  mechanical 
equivalents  in  the  art.    a  Id. 

219.  The  substitution  for  one  element  of 
an  old  combination  of  another  element  which 
has  been  used  for  the  same  purpose  in  sub- 
stantially the  same  general  relation  in  which 
it  appears  in  combination  claimed.  Held,  not 
to  amount  to  invention.  Ex  parte  Thomson, 
C.  D.  1905,  118  O.  G.  206. 

220.  It  being  old  to  employ  "depending" 
means  for  supporting  the  load  in  computing 
scales,  there  was  no  invention  in  substitu- 
ting such  means  in  an  old  combination.  ♦Com- 
puting Scale  Company  of  America  v.  The 
Automatic  Scale  Company,  C.  D.  1905,  119  O. 
G.  1586. 

221.  Held,  that  the  provision  of  a  water- 
proof casing  upon  an  electromagnet  which  is 
to  be  used  under  water  does  not  involve  in- 
vention. Ex  parte  Hayes,  C.  D.  1906,  320  O. 
G.  901. 

222.  Held,  that  the  use  of  non-magnetic  ma- 
terial for  the  casing  of  an  electromagnet  by 
one  who  does  not  claim  to  be  the  discoverer 
of  the  fact  that  magnetic  material  would  in- 
terfere with  the  proper  operation  of  the  de- 
vice cannot  be  regarded  as  patentable.    Id. 

223.  An  electromagnet  having  a  waterproof 
casing  of  non-magnetic  metal,  Held,  to  be 
without  patentable  novelty,  in  view  of  a  pat- 
ent disclosing  an  electromagnet  with  a  mois- 
ture proof  casing  of  non-magnetic  material. 
Id. 

224.  Where  the  general  arrangement  of  the 
flues  in  a  stove  as  defined  in  the  claims  is 
shown  in  one  patent  and  the  specific  form  and 
location  of  horizontal  flues  are  shown  in  other 
patents.  Held,  that  the  claims  are  without  in- 
vention. Ex  parte  Clunies,  C.  D.  1906,  122  O. 
G.  2389. 

225.  Where  a  patented  device  shows  a  fluid- 
cooler  having  its  tubes  separated  by  spacing- 
wires  and  it  is  old  in  the  art  to  separate  tubes 
by   flanging   the   ends,   Held,  that   claims   in- 


cluding the  flanged  ends  for  separating  the 
tubes  of  a  fluid-cooler  are  not  patentable,  es- 
pecially where  the  patentee  states  in  his  de- 
scription that  the  flanged  ends  may  be  used 
in  place  of  his  spacing  wires.  Ex  parte 
Welch,  C.   D.   1906,   123  O.  G.  995. 

226.  It  amounts  only  to  mechanical  skill  to 
provide  an  old  electromagnet  with  an  old 
non-magnetic  metal  covering  for  the  pur- 
pose of  rendering  the  electromagnet  operative 
under  water.  Any  one  having  ordinary  skill 
in  the  art  should  know  that  such  a  covering 
should  be  made  of  non-magnetic  material  to 
avoid  interfering  with  the  electrical  action  of 
the  magnet.  *In  re  Hayes,  C.  D.  1906,  123  O. 
G.  1000. 

227.  Where  it  appears  that  a  tapered  screw- 
joint  had  been  used  in  steam-fittings  of  dif- 
ferent kinds  and  that  such  a  joint  had  been 
used  in  juxtaposition  to  a  steam-gauge  com- 
prising a  Bourdon  tube  having  a  soldered 
joint,  it  did  not  involve  invention  to  substi- 
tute for  such  soldered  joint  the  old  tapered 
screw-joint.  *Millet  et  al.  v.  Allen.  Commis- 
sioner of  Patents,  C.  D.  1906,  124  O.  G.  1524. 

228.  Where  in  a  rock-crusher  a  mantle  re- 
movably secured  upon  a  conical  core  is  con- 
cededly  unpatentable.  Held,  that  the  provi- 
sion of  old  pin-and-slot  fastening  devices  for 
retaining  the  mantle  tightly  upon  the  conical 
core  is  mere  double  use  and,  in  view  of  cer- 
tain references,  an  obvious  substitution  of 
equivalents.  *In  re  Thurston,  C.  D.  1906,  120 
O.  G.  1166. 

229.  A  claim  for  a  steam-gage  comprising  a 
"Bourdon  tube  and  the  part  to  which  it  is 
secured,  the  joint  between  the  two  being  un- 
soldered and  held  by  frictional  contact"  is 
not  patentable  over  a  steam-gauge  having  a 
Bourdon  tube  attached  to  its  socket  by  means 
of  a  flange  on  the  tube  and  which  is  held  in 
place  by  a  jam-nut,  making  a  steam-tight 
union-joint  without  the  use  of  solder.  *Millett 
et  al.  V.  Allen,  Commissioner  of  Patents,  C.  D. 
1906,  124  O.  G.  1.J24. 

230.  Where  it  is  old  to  heat  exhaust  air  as 
it  passes  from  the  high-pressure  to  the  low- 
pressure  cylinder  of  a  compound  air  engine 
by  means  of  a  liquid  substance,  and  it  is  also 
old  to  use  atmospheric  air  to  impart  heat  to 
air  within  a  receptacle,  it  does  not  amount 
to  invention  to  substitute  the  latter  heating 
medium  for  the  former.  *In  re  Hodges,  C. 
D.  1907,  128  O.  G.  887. 

231.  Where  a  claim  covers  a  lathe  struc- 
ture comprising  a  pair  of  uprights  a"d  a  bed 


PATENTABILITY  AND  INVENTION,  VII,  (k)-(m). 


489 


consisting  of  two  sections  of  shafting  ar- 
ranged one  above  the  other,  said  sections  hav- 
ing their  ends  cast  or  embedded  in  the  up- 
rights. Held,  that  there  is  nothing  patentable 
in  the  idea  of  casting  the  ends  of  the  cross- 
bars into  the  uprights.  *In  re  Sheldon,  C.  D. 
1908,  135  O.  G.  1585. 

232.  The  substitution  of  a  rubber-covered 
roller  for  a  metal-covered  roller  in  a  machine 
for  winding  wire  or  thread  on  to  a  spool, 
Held,  to  involve  merely  by  the  substitution  of 
one  well-known  material  for  another.  Ex 
parte  Loveridge,  C.  D.  1908,  137  O.  G.  978. 

233.  The  substitution  of  commercially  roll- 
ed channels  for  the  cast-iron  end  frames  of 
a  wagon-scale,  Held,  not  to  involve  patentable 
invention.  *In  re  Orcutt,  C.  D.  1909,  141  O. 
G.  567. 

234.  Where  the  art  shows  it  is  old  to  drive 
a  lathe-spindle  through  gearing  by  an  electric 
motor  mounted  on  the  headstock  and  also  that 
it  is  old  to  mount  motor  armatures  directly 
on  the  spindles  of  machine  tools.  Held,  un- 
patentable to  use  the  armature  shaft  as  the 
headstock  spindle  of  a  lathe.  Ex  parte  White 
and  Medford,  C.  D.  1909,  147  O.  G.  771. 

235.  Where  it  was  old  to  utilize  a  telephone 
for  the  display  of  advertisements  and  also 
old  to  control  a  movable-band  advertising  de- 
vice by  a  lever  operated  by  removing  a  weight 
from  or  restoring  it  to  a  hook  support,  Held, 
that  it  did  not  amount  to  invention  to  attach 
a  movable-band  advertising  device  to  a  tele- 
phone box,  so  that  it  would  be  operated  when 
the  receiver  is  removed  from  and  restored  to 
the  hook  thereon.  *In  re  Lyon,  C.  D.  1909, 
149  O.  G.  1122. 

236.  Applicant  connected  an  internal- 
combustion  engine  with  a  vacuum  cleaning 
machine  in  such  a  manner  that  the  air  sup- 
plied to  the  air  and  fuel  mixing  means  of  the 
engine  is  drawn  through  the  cleaning  device. 
Held,  that  this  substitution  of  the  pump  of 
the  engine  for  the  separate  air  pump  of  the 
cleaning  device  is  ingenious,  but  is  not  inven- 
tion.    *In  re  Noyes,  C.  D.  1910,  154  O.  G.  837. 

237.  The  adaptation  of  the  old  double  hop- 
per-bottom to  the  changed  construction  due 
to  the  use  of  pressed  steel  as  the  car  material, 
without  any  change  in  the  function  of  the 
parts  or  the  production  of  any  new  result,  is 
not  patentable,  d  .American  Car  &  Foundry 
Co.  V.  Morton  Trust  Co.  et  al.,  C.  D.  1910, 
155  O.  G.  1044. 

238.  The  use  in  a  patented  device  of  a  screw 
to    fasten   together   two   parts   instead    of    a 


rivet  used  in  prior  devices  for  the  purpose  of 
making  them  more  readily  detachable,  is  but 
the  substitution  of  a  well-known  mechanical 
equivalent  and  does  not  amount  to  invention. 
rfBoss  Mfg.  Co.  v.  Thomas,  C.  D.  1911,  162 
O.  G.  1183. 

239.  Claims  for  a  sheet-metal  can  covered 
with  a  flexible  lacquer  or  enamel.  Held,  prop- 
erly rejected  to  view  of  a  prior  patent  show- 
ing a  sheet-metal  can  coated  on  the  inside 
with  an  aluminum  lining.  *In  re  Russell,  C. 
D.  1911,  165  O.  G.  474. 

240.  Where  a  prior  patent  shows  a  tin  can 
coated  on  the  inside  with  aluminum  and  it  is 
stated  in  such  patent  that  the  tin  coating  on 
the  inside  may  be  omitted.  Held,  that  "there 
is  no  invention  in  substituting  appellant's  en- 
ameled coating  for  the  tin  coating  on  the  out- 
side of  the  can.    *Id. 

241.  The  substitution,  in  a  loose-leaf  binder, 
for  the  lock  previously  used  therein  of  a 
lock  that  previously  existed  in  box-fastenings, 
Held,  not  to  amount  to  inventions.  "In  the 
new  binder,  there  is  an  old  combination  con- 
siderably improved  and  a  better  result;  but  an 
old  operation  by  old  means."  Sieber  &  Trus- 
sell  Mfg.  Co.  V.  Chicago  Binder  &  Fils  Co., 
C.  D.  1911,  167  O.  G.  763. 

(k)   Making   Integral   or  Sef'arate, 

242.  Held,  that  ordinarily  there  is  no  in- 
vention involved  in  making  in  two  pieces  and 
separable  things  which  have  before  been  made 
in  one  piece  of  parts  inseparably  connected. 
Ex  parte  Thurston,  C.  D.  1905,  117  O.  G. 
2361. 

(1)  Defect  Apparent — Remedy  Obvious. 

243.  A  process  of  rolling  pills  which  dif- 
fers from  the  old  process  merely  in  cutting 
the  pill  mass  into  sections  of  the  proper  size 
before  feeding  it  to  the  rolling-machine.  Held, 
lacking  in  patentable  novelty.  *In  re  Colton, 
C.  D.  1903,  104  O.  G.  577. 

244.  Where  under  the  old  process  the  pills 
were  unequal  in  quantity  and  not  regularly 
rounded  because  of  overfeeding  and  irregular 
division  of  the  pill  mass,  Held,  that  the  obvi- 
ous remedy  was  to  reduce  the  supply  and  that 
no  invention  was  involved  in  so  doing.     *Id. 

(m)  Design   Merely. 

245.  Design  Letters  Patent  No.  21,416,  is- 
sued March  22,  1892,  to  Albert  Schmid  for  a 


490 


PATENTABILITY  AND  INVENTION,  VII,  (n),  (o),  (p). 


frame  for  electric  machines,  the  only  original- 
ity claimed  for  which  is  the  curvature  of  the 
bases  of  the  pillars  for  supporting  the  shaft 
and  of  the  supports  to  the  cylinder-frame  for 
the  field.  Held,  not  to  disclose  patentable  in- 
vention and  to  be  void,  d  Westinghouse  Elec- 
tric and  Manufacturing  Company  v.  Triumph 
Electric  Company,  C.  D.  1900,  90  O.  G.  603. 

(n)  Slight    Change    in    Structure — No    New 
Result. 

246.  Where  the  claims  are  distinguishable 
over  the  prior  art  by  mere  arbitrary  variations, 
which  amount  only  to  changes  in  mechanical 
design  and  which  accomplish  no  new  result. 
Held,  that  such  claims  are  unpatentable.  Ex 
parte  Hill,  C.  D.  1905,  117  O.  G.  2365. 

247.  A  shelf-bracket  having  a  brace  pivotal- 
ly  secured  to  the  bracket  at  one  end,  so  that 
it  can  be  swung  aside  while  securing  the 
bracket  to  the  wall  and  shelf.  Held,  lacking 
in  patentable  invention  in  view  of  a  prior  pat- 
ent disclosing  a  bracket  having  a  brace  ar- 
ranged to  be  attached  to  the  bracket  after  the 
latter  is  secured  in  position.  *In  re  Berger, 
C.  D.  1909,  140  O.  G.  1004. 

(o)   Method   of  Doing   Business. 

248.  Held,  that  a  mere  method  of  procedure 
in  transacting  business  relates  neither  to 
science  nor  the  useful  arts  and  is  not  patent- 
able. Ex  parte  Moeser,  C.  D.  1905,  118  O.  G. 
590. 

(p)   Carrying  Forward  Old  Idea. 

249.  A  mere  carrying  forward  of  an  original 
conception  patented,  a  new  and  more  extended 
application  of  it  involving  change  only  of 
form,  proportions,  or  degree,  the  substitution 
of  equivalents  doing  the  same  thing  as  the 
original  invention  by  substantially  the  same 
means  with  better  effects,  is  not  such  inven- 
tion as  will  sustain  a  patent.  It  is  only  the 
invention  of  what  is  new  and  of  practical 
utility,  and  not  the  arrival  at  comparative  su- 
periority or  greater  excellence  in  that  which 
was  already  known,  which  the  law  protects 
as  exclusive  property  and  which  it  secures  by 
patent.  *Marshutz  v.  Commissioner  or  Pat- 
ents, C.  D.  1898,  85  O.  G.  778. 

250.  A  mere  carrying  forward  of  an  orig- 
inal patented  conception  involving  only  change 
of  form,  proportions,  or  degree,  or  the  substi- 


tution of  equivalents  doing  the  same  thing 
as  the  original  invention  by  substantially  the 
same  means  is  not  such  an  invention  as  will 
sustain  a  patent,  even  though  the  changes  may 
produce  oetter  results  than  prior  inventions. 
It  is  not  by  any  means  every  improvement 
on  former  inventions  that  is  patentable.  *In 
re  Iwan,  C.  D.  1901,  9.-)  O.  G.  441. 

251.  No  patent  should  issue  nor  will  it  be 
valid  if  issued  for  an  improvement  which  is 
merely  a  new  application  of  knowledge  al- 
ready possessed  by  those  skilled  in  the  art — 
a  mere  modification,  variation,  or  carrying 
forward  of  the  principle  involved  in  a  previous 
invention  or  discovery.  *In  re  Klemm,  C.  D. 
1903,  103  O.  G.  1682. 

252.  Where  the  appellant  urges  that  he  has 
a  permanent  closure,  whereas  the  references 
show  detachable  closures,  but  it  appears  that 
the  claim  is  for  a  combination  of  two  closures 
and  not  for  the  substitution  of  a  permanent 
for  a  movable  attachment.  Held,  that  the  al- 
leged difference  does  not  make  the  claim  pat- 
entable. *In  re  Seabury,  C.  D.  1904,  110  O. 
G.  2238. 

253.  It  does  not  involve  invention  to  make 
that  permanent  which  in  its  inception  was 
only  temporary,  since  that  is  the  work  of  the 
skilled  mechanic.    *Id. 

254.  Where  the  prior  art  showed  that  it  was 
old  to  warm  the  cars  of  a  train  by  circulating 
through  radiators  of  each  car  a  heat-distribu- 
ting liquid  heated  either  by  a  stove  within  the 
car  or  steam  from  the  locomotive,  that  it  was 
old  to  heat  a  heat-distributing  liquid  by  elec- 
trical energy  from  a  convenient  source,  and 
that  it  was  old  to  heat  a  heat-distributing 
liquid  through  the  agency  of  any  or  all  the 
energies  from  convenient  sources,  it  did  not 
amount  to  invention  to  heat  a  car  or  cars  by 
means  of  a  circulating  liquid  heated  by  divers 
kinds  of  energy  situated  remote  from  the  car. 
The  change  involved  merely  the  carrying  for- 
ward of  an  old  idea.  Ex  parte  Dixon,  C.  D. 
1906,  123  O.  G.  653. 

255.  Where  the  prior  art  disclosed  a  train 
of  gearing  positively  connecting  the  hour, 
minute,  and  second  hands  of  a  time  mechan- 
ism, whereby  the  rotation  of  one  would  cause 
the  proper  relative  movement  of  the  others, 
and  it  also  disclosed  a  winding  and  setting 
mechanism  controlling  the  proper  relative  ro- 
tation of  the  minute  and  hour  hands,  it  did 
not  amount  to  invention  to  insert  an  addi- 
tional gear  and  pinion  in  the  latter  mechan- 


PATENTABILITY  AND  INVENTION,  VII,    (q)-(t). 


491 


ism  to  secure  the  proper  position  of  the  sec- 
ond-hand with  relation  to  the  minute  and 
hour  hands  upon  operation  of  the  setting 
mechanism.  *In  re  Volkmann  and  Traux, 
C.  D.  1907,  126  O.  G.  2.-.93. 

25G.  Where  it  was  old  to  provide  spots  in 
a  bowling-alley  to  insure  the  accurate  setting 
of  the  pins,  claims  covering  two  series  of 
spots,  one  within  the  other,  thereby  to  insure 
the  correct  setting  of  different  kinds  of  pins 
having  different-sized  bases,  not  limited  to 
any  mechanical  construction,  set  forth  noth- 
ing which  involves  the  exercise  of  the  inven- 
tive faculty.  *In  re  Milans,  C.  D.  1908,  1.35 
O.  G.  1122. 

(q)  Reversal  of  Parts. 

257.  Claims  which  comprise  merely  a  re- 
versal of  parts  disclosed  in  a  prior  machine 
are  not  patentable.  *In  re  McNiel  v.  Sturte- 
vant,  C.  D.  1907,  126  O.  G.  3425. 

(r)  Not  Statutory   Subject. 

258.  A  "system"  which  consists  in  the  adop- 
tion of  a  certain  scale  for  the  height  of  let- 
ters and  then  determining  in  terms  of  this 
scale  the  proper  width  of  the  letters  and  the 
spaces  between  consecutive  letters.  Held,  to 
be  neither  an  art.  machine,  manufacture,  or 
fomposition  of  matter,  and  therefore  not  pat- 
entable, although  the  system  as  such  is  ap- 
parently new  and  useful.  Ex  parte  Mein- 
hardt,  C.  D.  1907,  129  O.  G.  3503. 

259.  While  it  is  conceivable  that  some  per- 
son after  long  and  arduous  study  might  dis- 
cover a  new  method  for  solving  certain  math- 
ematical problems  which  was  much  simpler 
and  shorter  than  any  known  method,  such 
method  v/ould  not  be  a  proper  subject  for 
patent.  So,  in  the  present  case,  applicant's 
plan  for  spacing  free-hand  letters,  no  matter 
what  its  merits,  does  not  come  within  the 
classes  for  which  protection  can  be  secured 
under  the  patent  laws.    Id. 

(s)  Many  Applications  for  Same  Invention. 

260.  In  every  new  manufacture  many  im- 
provements are  naturally  suggested  and  made 
from  time  to  time  as  a  matter  of  course.  The 
patent  law  is  not  intended  to  secure  a  monop- 
oly of  all  the  natural  developments  of  a  gen- 
eral principle  to  the  one  who  happens  to  make 
some  special  construction  embodying  it  a  few 
weeks  in  advance  of  others  when  it  appears 


that  such  improvements  were  certain  to  be 
made  in  a  short  time,  c  North  British  Rub- 
ber Company  v.  Jandorf  et  al.,  C.  D.  1S98,  82 
O.  G.  403. 

261.  When  many  applications  covering  the 
same  general  principles  are  in  the  patent  of- 
fice at  the  same  time,  it  furnishes  persuasive 
evidence  that  in  the  then  state  of  the  art  the 
discovery  that  tires  might  be  so  fastened 
would  not  be  of  such  a  character  that  one  who 
has  formulated  it  a  few  days  or  weeks  in  ad- 
vance of  others  should  be  allowed  to  levy 
tribute  for  seventeen  years  upon  the  millions 
using  tires  of  this  kind.     cU. 

262.  Where  similar  improvements  are  made 
by  many  inventors  at  the  same  time,  the  in- 
ferences are  that  the  desirability  for  improve- 
ment has  become  known  and  that  no  great 
exercise  of  inventive  talent  was  called  into 
play.  *Computing  Scale  Co.  of  America  v. 
The  Automatic  Scale  Co.  C.  D.  1905,  119  O. 
a  1586. 

(t)  Printed  Matter. 

263.  Where  claims  are  made  for  a  paper 
embodying  blank  forms  for  contracts,  drafts, 
releases  of  patents,  etc..  Held,  that  the  pat- 
entability of  the  claims  must  rest  upon  the 
physical  structure  of  the  instrument  and  not 
upon  the  character  of  the  provisions  which 
are  to  be  evidenced  by  that  physical  structure. 
Ex  parte  Moeser,  C.  D.  1905,  lis  O.  G.  590. 

264.  Held,  that  it  is  not  patentable  to  print 
upon  a  single  piece  of  paper  various  forms 
relating  to  the  same  subject  or  transaction,  in 
view  of  the  fact  that  it  is  old  to  do  so,  as  il- 
lustrated in  the  well-known  forms  of  insur- 
ance policies  and  in  the  registry  notice  used 
by  the  post-office  department.     Id. 

265.  Where  the  alleged  invention  is  nothing 
more  than  a  form  of  proposed  contract  to  be 
entered  into  with  individuals  desiring  the 
benefit  of  burial  insurance  or  guaranty,  with 
blanks  attached  and  readily  separable  there- 
from, which  in  addition  to  the  ordinary  draft 
for  payment  show  the  several  certificates  re- 
quired in  order  to  provide,  as  far  as  practi- 
cable, against  the  perpetration  of  frauds  upon 
the  insurer  or  guarantor.  Held,  not  an  art, 
machine,  manufacture,  or  composition  of  mat- 
ter within  the  meaning  of  the  patent  laws  of 
the  United  States.  *In  re  Moeser,  C.  D.  1906, 
123  O.  G.  6,55. 

266.  Where  each  form  of  proposal  is  one 
for  entry  into  and  performance  of  a  distinct 


492 


PATENTABILITY  AND  INVENTION,  VII,   (u). 


contract  and  there  is  no  physical  construction 
or  combination  that  can  convert  it  from  a 
mere  contract  into  a  tangible  device  or  manu- 
facture. Held,  not  patentable.    *Id. 

267.  The  form  of  contracts  or  proposals 
for  contracts  devised  or  adopted  as  a  method 
of  transacting  a  particular  class  of  indemnity 
or  insurance  business,  Held,  not  patentable 
as  an  art    *Id. 

268.  A  claim  for  a  guaranty  credit  book 
having  certain  designated  columns  for  certain 
entries.  Held,  to  involve  no  invention  over  the 
prior  art  w^hich  disclosed  the  general  scheme, 
the  only  difference  being  the  addition  of  cer- 
tain columns  for  the  purpose  of  keeping  an 
account  of  liquidated  damages.  *In  re  Tay- 
lor, C.  D.  1908,  136  O.  G.  1767. 

(u)  Particular  Cases. 

269.  The  process  for  the  manufacture  of 
zinc,  which  consists  in  lixiviating  roasted  zinc 
ores  by  a  solution  of  caustic  soda  or  potash, 
electrolyzing  the  solution  of  zinc  oxid  thus 
obtained  with  an  anode  of  sodium  or  potas- 
sium amalgam,  and  causing  deposit  of  zinc  on 
a  metallic  cathode,  Held,  to  be  not  patentably 
new.  *Mond  v.  Duell,  Commissioner  of  Pat- 
ents, C.  D.  1900,  91  O.  G.  1437. 

270.  Design  Letters  Patent  No.  28,142, 
granted  to  Spencer  C.  Gary  on  January  11, 
1898,  for  a  box-fastener,  consisting  of  a  metal 
strap,  which  differs  in  construction  from  the 
one  described  in  a  prior  mechanical  patent  to 
the  same  patentee  only  in  omitting  a  corru- 
gation along  the  edges,  making  the  strap  plain, 
does  not  disclose  invention,  and  is  void,  d  Gary 
Manufacturing  Gompany  v.  Neal  et  al.,  C.  D. 
1900,  90  O.  G.  1950. 

271.  Claims  1  and  2  of  Letters  Patent  No. 
368,898,  granted  August  23,  1887,  to  Clayton 
and  Albert  Potts  for  an  improvement  in  clay- 
disintegrators,  such  as  shown  in  Letters  Pat- 
ent No.  322,393,  the  improvement  consisting  of 
the  substitution  of  a  smooth  roller  for  the 
vibratory  plate  shown  in  the  patented  device 
improved  upon.  Held,  not  to  disclose  patent- 
able invention  and  to  be  void,  d  G.  &  A.  Potts 
&  Go.  V.  Greager,  G.  D.  1900,  90  O.  G.  2134. 

272.  A  novelty  involving  a  state  of  art  so 
universal  and  common  as  the  making  and  ad- 
justment of  clothing  must  be  of  a  radical 
character  to  overcome  the  presumption  against 
its  patentability.  (Dalby  v.  Lynes,  G.  D.  1895, 
381,  71  O.  G.  1317;  Way  v.  McClarin,  96  Fed. 


Rep.  416,  cited.)    *Fay  v.  Duell,  Commissioner 
of  Patents,  G.  D.  1900,  90  O.  G.  1157. 

273.  A  hay-knife  composed  of  several  cut- 
ting-sections with  serrated  edge  and  set  in  a 
flanged  back,  the  back  tapering  gradually  from 
base  to  point  and  the  cutting-sections  secured 
to  said  back  and  abutting  against  the  flange 
thereof.  Held,  in  view  of  the  state  of  the  art 
to  be  lacking  in  patentable  novelty  and  the 
decision  of  the  commissioner  of  patents  af- 
firmed.   *In  re  Iwan,  G.  D.  1901,  95  O.  G.  441. 

274.  A  vertical  cross-brace  and  a  lower 
cross-brace  being  common  adjuncts  of  sewing- 
machines,  and  it  being  also  customary  to  sup- 
port the  lower  cross-brace  in  the  web  of  the 
legs  of  sewing-machines  and  to  utilize  the  legs 
as  bearings,  and  it  being  old  in  machinery  to 
employ  solid  castings  as  bearings  for  oscil- 
lating shafts  where  a  fixed  alignment  was 
essential,  Held,  that  the  mere  conception  that 
a  double  brace  was  capable  of  being  advan- 
tageously utilized  as  bearings  for  sewing-ma- 
chine treadles  and  devising  means  for  so  util- 
izing such  a  brace  did  not  involve  such  exer- 
cise of  the  inventive  faculty  as  entitled 
Cramer  to  claim  broadly  the  use  of  such  dou- 
ble brace.  **Singer  Mfg.  Go.  v.  Cramer,  G.  D. 
1904,  108  O.  G.   1864. 

275.  A  claim  for  a  removable  box-liner  con- 
sisting of  a  sheet  of  paper  cut  in  the  shape 
of  a  cross,  creased  at  the  junction  of  the 
arms,  and  having  lacework  ornamentation  at- 
tached to  the  arms  is  lacking  in  patentable 
novelty  in  view  of  the  prior  art,  which  dis- 
closes the  use  of  one-piece  removable  liners 
and  the  use  of  non-removable  liners  bordered' 
with  lacework.  *In  re  Warren,  C.  D.  1908, 
134  O.  G.  258. 

276.  A  claim  for  a  wall-tie  having  equilat- 
eral quadrangular  bonding-heads  so  disposed 
that  the  diagonals  thereof  are  in  line  with  the 
straight  portion  of  the  rod.  Held,  not  patent- 
able in  view  of  the  prior  art.  which  disclosed 
a  tie  consisting  of  a  straight  portion  with  a 
circular  loop  at  one  end  so  disposed  that  the 
diameter  of  the  loop  is  in  line  with  the  straight 
portion  of  the  rod.  Ex  parte  rieinz.  G.  D. 
1910,  151  O.  G.  193. 

277.  Claims  for  a  wall-tie  Held,  not  patent- 
able in  view  of  the  prior  art.  *ln  re  Heinz, 
G.  D.  1910,  151  O.  G.  1014. 

278.  The  combination  of  a  high  non-induc- 
tive resistance,  a  magnetic  interrupting  trem- 
bler-bell, and  a  circuit-closer  in  series  across 
a  high  power  circuit.  Held,  so  elementary  in- 


PATENTS.  I,  II,  (a). 


493 


character  as  to  be  a  matter  of  common  knowl- 
edge and  on  its  face  unpatentable,  and  also 
unpatentable  over  a  reference  showing  sub- 
stantially the  same  arrangement  with  an  ad- 
ditional adjustable  resistance  in  shunt  to  the 
bell.  Ex  parte  McElroy,  C.  D.  1910,  161  O. 
G.  753. 

279.  Claims  for  a  metal  locker,  Held,  un- 
patentable in  view  of  the  prior  art.  Ex  parte 
Merritt.  Black  and  Morris,  C.  D.  1910,  161 
O.  G.  1043. 

280.  Claims  for  a  system  in  which  the  sig- 
nal-bells on  a  trolley  car  are  actuated  by  cur- 
rent taken  from  the  direct-current  mains  of 
the  trolley-circuit,  Held,  unpatentable  in  view 
of  the  prior  art.  (For  commissioner's  deci- 
sion see  161  O.  G.  753.)  *In  re  McElroy,  C. 
D.  1911,  163  O.  G.  491. 

281.  Claims  for  "system  of  storing  power" 
consisting  of  storage-tanks  so  located  as  to 
have  a  "high  gravity  potential  difference"  with 
means  for  employing  natural  forces  to  pump 
water  from  the  lower  to  the  upper  reservoir 
and  means  to  generate  electrical  power  by  re- 
admitting the  water  to  the  lower  reservoir. 
Held,  to  state  nothing  requiring  invention  in 
view  of  the  prior  art.  *In  re  Fessenden,  C. 
D.  1911,  164  O.  G.  740. 


PATENTS. 
(See  Claims.) 

I.  In  General. 
II.  Owners. 

(a)  Rights  of. 

(b)  Joint. 

III.  Pioneer  Patents. 

I.  In  General. 

1.  In  granting  patents  the  interests  of  the 
public  are  the  primary  consideration,  and  to 
these  the  privileges  granted  to  inventors  are 
secondary  and  subordinate.  *Warner  v. 
Smith,  C.  D.  1898,  84  O.  G.  311. 

II.  Owners. 
(a)  Rights  of. 

2.  Even  if  a  party  who  buys  a  patented 
article  without  restriction  in  a  foreign  country 
from  the  owner  of  the  United  States  patent 
has  the  right  to  use  and  vend  it  in  this  country 


he  has  no  such  right  if  he  bought  it  with  the 
express  condition  that  it  be  not  imported  into 
the  United  States,  d  Dickerson  v.  Tingling, 
C.  D.  1898,  83  O.  G.  1663. 

3.  The  patentee  has  the  same  right  and 
power  to  sell  the  patented  article  upon  con- 
ditions or  with  restrictions  that  he  has  to  sell 
it  at  all.    d  Id. 

4.  A  patent  is  a  monopoly  recognized  by  the 
constitution,  and  an  owner  of  a  patent  has 
the  right  to  sell  it  or  to  keep  it,  to  manufac- 
ture the  article  himself  or  to  license  others  to 
manufacture  it,  to  sell  such  article  himself  or 
to  authorize  others  to  sell  it,  and  he  is  not 
hound  to  use  his  discovery  himself  nor  to 
permit  others  to  use  it.  **E.  Bement  &  Sons 
v.  National  Harrow  Company,  C.  D.  1902,  101 
O.  G.  887. 

5.  The  owner  of  a  patent  may  assign  it  or 
sell  the  right  to  manufacture  and  sell  the  ar- 
ticle patented  upon  the  condition  that  the 
assignee  shall  charge  a  certain  amount  for 
such  article.    **Id. 

6.  The  general  rule  is  absolute  freedom  in 
the  use  or  sale  of  rights  under  the  patent  laws. 
The  very  object  of  these  laws  is  monopoly, 
and  with  few  exceptions  any  conditions  im- 
posed by  the  patentee  and  agreed  to  by  the 
licensee  as  to  use  or  sale  of  the  article  will 
be  upheld  by  the  court.  The  fact  that  the 
conditions  in  the  contract  keep  up  the  monop- 
oly or  fix  prices  does  not  render  them  illegal. 
**Id. 

7-  The  statute  prohibiting  contracts  in  re- 
straint of  trade  clearly  does  not  refer  to  that 
kind  of  a  restraint  of  interstate  commerce 
which  may  arise  from  reasonable  and  legal 
conditions  imposed  upon  the  licensee  of  a 
patent  by  the  owner  thereof  restricting  the 
terms  upon  which  the  article  may  be  used  and 
the  price  to  be  demanded  therefor.    **Id. 

8.  In  certain  circumstances  the  sale  of  pat- 
ented articles  may  be  controlled  within  the 
several  states  by  a  legitimate  exercise  of  their 
powers  over  their  purely  domestic  affairs, 
whether  of  internal  commerce  or  police  reg- 
ulation, and  this  is  not  an  interference  with 
the  right  conferred  by  the  patent.    **Id. 

9.  Where  a  patentee  licenses  a  public  tele- 
phone company  to  use  his  invention  a  condi- 
tion in  the  contract  that  the  company  shall 
not  serve  certain  parties  therewith  is  of  no 
effect,  since  the  company  is  a  public  corpora- 
tion and  common  carrier  required  to  serve  all 
alike,  and  no  restraint  can  be  imposed  upon  it 


494 


PATENTS,  II,  (b).  III. 


to  disable  it  to  discharge  the  duties  imposed 
by  law.    **Id. 

10.  By  the  grant  of  a  patent  a  patentee  is 
merely  put  in  a  position  to  assert  his  prima 
facie  right  against  infringers  who  may  in 
their  defense  raise  the  question  of  the  val- 
idity of  the  patent  and  have  the  same  finally 
adjudicated  in  the  light  of  a  full  presentation 
and  consideration  of  all  the  evidence  attain- 
able in  respect  of  anticipation,  prior  knowl- 
edge, use,  and  the  like.  *In  re  Thomson,  C. 
D.  1906,  120  O.  G.  2756. 

(b)  Joint. 

11.  The  exercise  of  the  entire  monopoly 
conferred  by  a  patent  can  be  effected  only 
by  the  joint  or  concurrent  action  of  all  own- 
ers; but  the  use  of  the  invention  by  one  of 
co-owners  or  by  his  licensees  is  not  an  exer- 
cise of  such  entire  monopoly  and  is  not  an 
appropriation  of  anything  which  belongs  to 
another.  The  separate  rights  of  the  other 
owners  remain  unaffected.  *Blackledge  v. 
Weir  &  Craig  Manufacturing  Company,  C.  D. 
1901,   95   O.   G.   1853. 

12.  There  can  be  no  accountability  on  the 
part  of  a  part  owner  of  an  invention  to  other 
owners  for  profits  made  by  the  exercise  of 
his  individual  right,  whether  it  be  by  engag- 
ing in  the  manufacture  and  sale  or  by  grant- 
ing to  others  licenses  or  by  assigning  inter- 
ests in  the  patent.     *Id. 

III.  Pioneer  Patents. 

13.  Claim  1  of  Letters  Patent  No.  407,963, 
granted  July  30,  1889,  to  Frederick  L.  Rawson 
and  William  S.  Rawson,  for  the  production 
of  incandescent  mantles,  consisting  in  coat- 
ing the  complete  mantle  with  paraffin  or  other 
suitable  material,  construed,  Held,  to  be  for 
a  pioneer  invention  and  infringed  by  a  pro- 
cess consisting  in  coating  with  a  solution  of 
collodion,  c  Welsbach  Light  Company  v.  The 
Sunlight  Incandescent  Gas  Lamp  Company, 
C.  D.  1898,  83  O.  G.  595. 

14.  If  the  patent  for  a  machine  be  a  pi- 
oneer, the  alleged  infringer  must  have  done 
something  more  than  reach  the  same  result. 
He  must  have  reached  it  by  substantially  the 
same  or  similar  means  or  the  rule  that  the 
function  of  a  machine  cannot  be  patented  is 
of  no  particular  value.  To  say  that  the  pat- 
entee of  a  pioneer  invention  for  a  new  mech- 
anism is  entitled  to  every  mechanical  device 


which  produces  the  same  result  is  to  hold 
that  he  is  entitled  to  patent  his  function. 
Mere  variations  of  form  may  be  disregarded, 
but  the  substance  of  the  invention  must  be 
there.  **Boyden  Power  Brake  Co.  et  al.  v. 
Westinghouse  et  al.,  and  vice  versa,  C.  D. 
1898,  83  O.  G.  1067. 

15.  The  word  "pioneer"  is  commonly  under- 
stood to  denote  a  patent  covering  a  function 
never  before  performed,  a  wholly  novel  de- 
vice, or  one  of  such  novelty  and  importance 
as  to  mark  a  distinct  step  in  the  progress  of 
the  art,  as  distinguished  from  a  mere  improve- 
ment or  perfection  of  what  had  gone  before. 
**Id. 

16.  Letters  Patent  No.  356,322,  granted  to 
Kitselman  on  January  18,  1887,  for  wire-fab- 
ric machines,  Held,  not  to  cover  a  pioneer  in- 
vention, and  therefore  not  entitled  to  a  lib- 
eral construction  upon  the  question  of  equiva- 
lents. **Id.  Kokomo  Fence  Machine  Co.  v. 
Kitselman,  103  O.  G.  1417. 

17.  Claims  1  and  2  of  Letters  Patent  grant- 
ed to  Philip  Levi  on  February  18,  1902,  for  a 
furniture  polish.  Held,  not  infringed  by  a 
composition  including  all  of  the  elements  of 
the  claims  except  coal  oil.  *Lane  v.  Levi,  C. 
D.  1903,  104  O.  G.  1898. 

18.  A  greater  degree  of  liberality  and  a 
wider  range  of  equivalents  are  permitted 
where  the  patent  is  of  a  pioneer  character  than 
when  the  invention  is  simply  an  improvement, 
may  be  the  last  and  successful  step  in  the  art 
theretofore  partially  developed  by  other  in- 
ventors in  the  same  field.  *Cimiotti  Unhair- 
ing  Company  et  al.  v.  American  Fur  Refining 
Company  et  al.,  C.  D.  1905,  116  O.  G.  1452. 

19.  In  determining  the  construction  to  be 
given  to  a  claim  it  is  necessary  to  have  in 
mind  the  nature  of  the  patent,  its  character 
as  a  pioneer  invention  or  otherwise,  and  the 
state  of  the  art  at  the  time  when  the  inven- 
tion was  made.    *Id. 

20.  Held,  that  the  patent  to  Sutton  in  suit 
discloses  an  invention  of  merit  entitled  to 
some  range  of  equivalents  in  determining  the 
question  of  infringement;  but  it  is  not  one  of 
those  broad  initiative  inventions  where  orig- 
inal thought  has  been  embodied  in  a  practical 
mechanism  which  the  courts  have  been  ever 
zealous  to  protect  and  to  which  a  wide  range 
of  equivalents  has  been  accorded.  ♦*Cimiott: 
Unhairing  Company  et  al.  v.  American  Fur 
Refining  Company  et  al.,  C.  D.  1905,  116  O.  G. 
1452. 


PATENT  OFFICE  RECORDS-PERJURY. 


493 


PATENT  OFFICE  RECORDS. 

I.  Expunging  Matter. 
II.  As  Evidence. 

I.  Expunging  Matter. 

1.  An  appeal  from  the  action  of  the  com- 
missioner of  patents  refusing  to  strike  an 
assignment  from  the  records  of  his  office  on 
the  ground  that  it  is  a  forgery  dismissed  for 
lack  of  jurisdiction,  fin  re  Casey,  C.  D.  1902, 
101  O.  G.  2567. 

2.  The  Secretary  of  the  Interior  has  neither 
appellate  nor  supervisory  jurisdiction  over  the 
actions  of  the  commissioner  of  patents  in  mat- 
ters requiring  the  exercise  of  judicial  func- 
tions,   fid. 

3.  A  petition  to  expunge  from  the  record 
a  statement  by  the  examiner  intimating  that 
some  of  the  claims  are  not  patentable  in  view 
of  a  prior  patent  to  the  same  party  must  be 
denied.  The  objection  relates  to  a  pertinent 
subject,  although  not  in  proper  form.  Ex 
parte  Langerfeld,  C.  D.  1903,  104  O.  G.  1655. 

4.  It  is  not  permissible  for  an  examiner  to 
throw  a  cloud  upon  an  applicant's  claims  by 
a  suggested  doubt  as  to  their  validity  without 
rejecting  any  claim,  since  this  gives  the  appli- 
cant no  opportunity  to  meet  the  objection  and 
is  not  fair  to  him.     Id. 

5.  Held,  that  a  general  statement  that  claims 
are  "manifestly"  unpatentable  in  view  of  the 
prior  art,  where  the  examiner  subsequently 
cited  a  reference  and  rejected  the  claims,  does 
not  cast  a  cloud  upon  or  express  a  doubt  as 
to  the  validity  of  the  allowed  claims  and 
should  not  be  canceled  from  the  record.  Ex 
parte  Holzer,  C.  D.  1906,  121  O.  G.  1011. 

II.  As  Evidence. 

6.  Where  the  office  records  are  regular  and 
indicate  that  an  application  was  allowed  and 
the  notice  was  sent,  but  the  attorneys  make 
affidavit  that  to  the  best  of  their  knowledge 
and  belief  they  did  not  receive  the  notice, 
Held,  that  the  office  records  must  be  accepted 
as  correct  in  the  absence  of  more  conclusive 
evidence  that  the  notice  was  sent  out  Ex 
parte  Haeseler  and  Taylor,  C.  D.  1902,  101  O. 
G.  2826. 

7.  The  fact  that  a  notice  of  allowance  was 
not  entered  in  the  attorneys'  office  is  not  con- 
clusive evidence  that  it  was  not  received,  for 
the  reason  that  it  might  have  been  lost  after 
being  received  and  before  entry.    Id. 


8.  While  it  is  proper  in  some  cases  to  take 
cognizance  of  the  records  of  this  office  which 
have  not  been  placed  in  evidence  in  order 
that  justice  may  be  done  (Cain  v.  Park,  C. 
D.  1899,  278,  86  O.  G.  797,  C.  A.  D.  C),  it  is 
not  thought  that  they  should  ordinarily  be 
examined  when  not  placed  in  evidence  for 
the  sole  purpose  of  discrediting  a  witness.  If 
they  had  been  placed  in  evidence,  the  opposing 
party  would  have  had  an  opportunity  to  ex- 
plain them.  This  was  not  done,  and  it  would 
be  manifestly  unfair  to  consider  them  without 
opportunity  for  such  explanations  as  might 
be  made.  Bouditch  v.  Todd,  C.  D.  1904,  112 
O.  G.  1477. 

9.  The  office  records  indicating  that  notice 
was  sent  must  be  accepted  as  correct,  notwith- 
standing an  affidavit  by  the  attorney  that  to 
the  best  of  his  knowledge  it  was  not  received 
at  his  office,  since  it  may  have  been  lost  in 
the  mails  or  in  the  attorney's  office.  Ex  parte 
Piper,  C.  D.  1905,  115  O.  G.  1063. 

10.  The  allegation  that  the  applicant's  rec- 
ords do  not  show  a  letter  written  him  three 
years  before  in  the  case  cannot  be  taken  as 
proof  either  that  the  letter  was  not  mailed  or 
that  it  was  not  actually  received.  Ex  parte 
Hunter,  C.  D.  1905,  116  O.  G.  1731. 

11.  An  application  filed  in  February,  1902, 
cannot  warrant  a  finding  that  what  is  therein 
disclosed  was  in  the  possession  of  the  appli- 
cant in  the  preceding  September.  *Robinson 
v.  Seelinger,  C.  D.  1905,  116  O.  G.  1735. 

12.  Where  no  profert  is  made  of  an  appli- 
cation filed  by  one  of  the  parties  to  an  inter- 
ference and  no  copy  of  the  same  is  produced 
in  evidence.  Held,  that  no  consideration  can 
be  given  to  that  application,  as  it  is  not  a 
record  open  to  the  public  and  is  in  no  form 
before  the  court  for  consideration.    *Id. 

13.  The  case  of  Cain  v.  Park  (C.  D.  1899, 
278,  86  O.  G.  797,  14  App.  D.  C  42),  where  an 
application  was  in  evidence  and  notice  taken 
of  certain  office  records  regarding  that  ap- 
plication, is  to  be  distinguished  from  a  case 
where  no  profert  is  made  of  an  application 
and  no  copy  is  produced.    *Id. 


PERJURY. 

!■  The  offense  of  perjury  as  defined  by  sec- 
tion 5392,  Revised  Statutes  of  the  United 
States,  may  be  predicated  upon  the  oath,  dec- 
laration, or  affidavit  subscribed  in  support  of 
an  application  for  letters  patent  if  the  party 


496 


PRACTICE  IN  PATENT  OFFICE— PROSECUTION,  I. 


making  the  oath  or  making  the  declaration  or 
affidavit  swore  falsely  with  relation  thereto 
or  if  at  the  time  of  making  said  oath  he  did 
not  believe  the  matter  or  facts  set  forth 
therein  to  be  true,  b  United  States  of  Amer- 
ica V.  Patterson,  C.  D.  1909,  144  O.  G.  563. 

2.  The  use  of  the  word  "sole"  in  the  affi- 
davit as  subscribed,  in  connection  with  the 
words  "original"  and  "first,"  has  a  significant 
and  material  bearing  in  the  inquiry  which 
was  then  being  prosecuted  before  the  commis- 
sioner of  patents,  and  a  false  oath  with  ref- 
erence thereto  renders  the  affiant  guilty  of 
perjury,  b  United  States  of  America  v.  Pat- 
terson, C.  D.  1909,  146  O.  G.  258. 


PRACTICE  IN  PATENT  OFFICE. 

1-  A  petition  that  the  examiner  be  Instructed 
as  to  the  meaning  to  be  given  to  a  certain 
word  used  in  the  claims  dismissed,  since  it 
involves  the  merits  of  the  claims.  Ex  parte 
Beucher,  C.  D.  1903,  104  O.  G.  310. 

2.  A  patent  when  issued  is  prima  facie  a 
valid  grant,  and  no  statement  should  be  made 
in  the  record  that  the  validity  of  the  claims 
is  doubtful.  Ex  parte  Overstrom,  C.  D.  1903, 
105  O.  G.  1531. 

3.  The  office  will  not  knowingly  permit  a 
patent  to  contain  a  false  suggestion  of  fact 
which  may  mislead  the  public,  to  its  prejudice. 
Ex  parte  Lewis  and  Unger,  C.  D.  1903,  106  O. 
G.  543. 

4.  It  is  well  settled  that  alterations  in  pro- 
cedure and  practice  are  restrospective  in  ef- 
fect unless  there  is  some  good  reason  against 
it.  Wheeler  v.  Seeberger,  C.  D.  1906,  125  O. 
G.  2363. 


PETITION  IN  APPLICATION. 

!•  The  petition  should  contain  a  reference 
to  the  specification  for  a  full  disclosure  of 
the  invention,  as  is  specifically  required  in 
Rule  33.  It  does  not  itself  disclose  the  in- 
vention, and  is  therefore  incomplete  unless  it 
refers  to  some  paper  which  does  disclose  it. 
Ex  parte  Buddington,  C.  D.  1898,  84  O.  G. 
1728. 


PROSECUTION  OF  APPLICATION. 

I.  In  General. 
II.  Explanation  of  Action. 
III.  Responsiveness  or  Propriety  of  Action. 


I.  In  General. 

1.  A  mere  request  for  reconsideration  with- 
out distinctly  and  specifically  pointing  out  the 
supposed  errors  in  the  examiner's  action  is 
not  sufficient  to  entitle  the  applicant  to  such 
reconsideration.  Ex  parte  Hahn,  C.  D.  1091, 
96  O.  G.  1429. 

2.  The  requirement  that  the  applicant  point 
out  the  supposed  errors  in  the  examiner's  ac- 
tion before  the  case  is  placed  in  condition  for 
appeal  is  reasonable  and  just  and  is  necessary 
to  a  proper  disposition  of  the  work  of  the  of- 
fice.   Id. 

3.  The  prosecution  of  a  case  before  the  pri- 
mary examiner  is  not  a  mere  matter  of  form, 
but  is  intended  to  finally  dispose  of  the  case 
upon  its  merits,  and  therefore  the  efforts  of 
both  the  applicant  and  the  examiner  should 
be  directed  to  a  thorough  understanding  of 
each  other's  positions.     Id. 

4.  Where  the  claim  of  an  application  has 
been  rejected  by  the  examiner  and  a  request 
is  made  that  the  claim  be  reconsidered  as  a 
"matter  of  form,"  Held,  that  such  a  request 
is  not  a  proper  compliance  with  the  provi- 
sions of  Rule  69.  Ex  parte  Broderick,  C.  D. 
1901,  96  O.  G.  1430. 

5.  It  is  necessary  that  a  request  for  a  re- 
consideration be  accompanied  with  a  state- 
ment distinctly  and  specifically  pointing  out 
the  supposed  error  in  the  examiner's  action ; 
otherwise  the  re-examination  would  necessa- 
rily be  merely  a  repetition  of  the  first  action 
on  the  claim.    Id. 

6.  A  reconsideration  of  his  action  by  the 
examiner  is  not  a  mere  matter  of  form  to  be 
asked  for  as  a  prerequisite  for  an  appeal,  but 
is  a  re-examination  of  the  merits,  and  in 
order  that  the  action  may  be  taken  intelligent- 
ly it  is  necessary  that  the  applicant  should 
fully  and  clearly  explain  his  position  in  re- 
gard to  the  merits.  Ex  parte  McKnight,  C. 
D.  1901,  97  O.  G.  2742. 

7.  An  applicant  cannot  ignore  an  action  by 
the  examiner  because  he  assumes  it  to  be  ir- 
regular or  improper,  since  it  is  incumbent  upon 
him  to  make  proper  response  to  an  erroneous 
action  as  well  as  a  valid  action  within  the 
period  of  time  fixed  by  statute.  Ex  parte 
Hunter,  C.  D.  1905,  116  O.  G.  1731. 

8.  Rule  69,  which  provides  that  an  appli- 
cant in  order  to  be  entitled  to  reconsidera- 
tion of  his  claims  after  they  have  been  re- 
jected must  distinctly  point  out  the  supposed 
errors    of   the    examiner's   action,   is   not   in- 


PROSECUTION  OF  APPLICATION,  II,  III. 


497 


consistent  with  section  4903  of  the  Revised 
Statutes,  which  provides  for  a  re-examination 
of  an  application.  Ex  parte  Russ,  C.  D.  1908, 
137  O.  G.  1712. 

II.  Explanation  of  Action. 

9-  Where  an  applicant  merely  requests  a 
reconsideration  and  final  action  and  fails  to 
distinctly  and  specifically  point  out  the  sup- 
posed errors  in  the  examiner's  action,  as  re- 
quired by  Rule  69,  Held,  that  the  action  made 
by  the  applicant  was  not  such  an  action  as 
the  condition  of  the  case  required.  Ex  parte 
Linde,  C.  D.  1905,  115  O.  G.  1329. 

10.  Rule  69,  providing  that  the  applicant 
must  distinctly  and  specifically  point  out  the 
supposed  errors  in  an  examiner's  action  in 
order  to  entitle  him  to  a  re-examination.  Held, 
not  to  be  inconsistent  with  section  4903,  Re- 
vised Statutes,  which  provides  for  re-exam- 
ination of  an  application.     Id. 

11.  The  re-examination  provided  for  by  the 
statute  is  for  the  purpose  of  enabling  an  ap- 
plicant to  traverse  a  rejection  by  the  office  and 
to  show  by  argument  that  the  rejection  is  er- 
roneous, if  such  be  the  caise.    Id. 

12.  A  re-examination  would  become  a  mere 
formal  and  useless  proceeding  if  it  were 
given  for  the  mere  purpose  of  entering  a  sec- 
ond rejection  so  that  the  case  will  be  in  con- 
dition for  appeal.    Id. 

13.  In  presenting  cases  without  amendment 
for  reconsideration  applicants  should  contem- 
plate the  possibility  of  an  adverse  decision 
by  the  examiner  and  be  prepared  thereupon  to 
appeal  to  the  examiners-in-chief  or  to  aban- 
don prosecution  of  the  application  except  as 
may  be  necessary  to  put  the  case  in  condition 
for  issue  upon  claims  previously  found  by  the 
examiner  to  be  allowable.  Ex  parte  Almy,  C. 
D.  1905,  115  O.  G.  1584. 

14.  The  provisions  of  Rule  68,  requiring  ap- 
plicants in  amending  to  point  out  all  patent- 
able novelty  and  to  show  how  amendments 
avoid  the  references  and  objections,  apply  as 
well  to  amendments  presenting  new  claims  or 
omitting  limitations  from  previous  claims  as 
to  amendments  presenting  additional  limita- 
tions. Ex  parte  Richards,  C.  D.  1906,  124  O. 
G.  2534. 

15.  Rule  68,  requiring  a  statement  of  the  ap- 
plicant's position  in  presenting  amended 
claims  is  not  satisfied  by  a  statement  filed  in 
connection    with    a    prior    action    unless    the 

32 


amendment   in  question  is  accompanied  by  a 
specific  reference  to  the  prior  statement     Id. 

III.  Responsiveness  or  Propriety  of  Action. 

16.  A  mere  request  for  second  considera- 
tion without  explanation  or  argument  and 
without  "distinctly  and  specifically  pointing 
out  the  supposed  errors  in  the  examiner's  ac- 
tion" (Rule  69)  is  not  sufficient  to  entitle  an 
applicant  to  reconsideration.  Ex  parte  Appel, 
C.  D.   1898,  84  O.  G.  1145. 

17.  Proper  practice  requires  that  an  appli- 
cant should  present  fully  before  the  examiner 
the  reasons  why  objections  made  should  be 
withdrawn,  and  only  after  the  position  taken 
by  the  applicant  is  clear  to  the  examiner 
should  petition  be  taken.  It  is  not  the  duty 
of  the  commissioner  to  act  upon  questions 
which  could  be  and  should  be  settled  before 
the  examiner.    Id. 

18.  Language  which  is  even  seemingly  dis- 
courteous or  in  the  nature  of  reflection  upon 
an  examiner  has  no  place  in  any  paper  which 
becomes  a  part  of  the  record  of  an  applica- 
tion and  is  always  to  be  condemned.  (Ex 
parte  Chambers,  C.  D.  1873,  56,  3  O.  G.  320.) 
Ex  parte  Russell,  C.  D.  1898,  84  O.  G.  1871. 

19.  Where  the  language  used  by  applicant 
in  an  argument  filed  during  the  prosecution  of 
his  application  was  not  courteous.  Held,  that 
the  paper  containing  such  language  should  be 
returned  to  applicant,  as  it  had  not  been  en- 
tered in  the  case.  Ex  parte  McQueen,  C.  D. 
1898,  85  O.  G.  609. 

20.  Where  the  examiner's  letter  explains 
his  position  in  regard  to  the  references  on 
points  which  do  not  appear  to  be  obvious  to 
one  of  ordinary  skill,  he  has  complied  with 
the  rules  and  done  all  that  can  be  expected  of 
him,  and  a  mere  request  for  further  explana- 
tion is  not  sufficient;  but  the  applicant  should, 
by  his  argument  on  the  facts  of  th»^ase,  make 
it  appear  that  the  examiner's  position  is  not 
fully  understood  and  on  what  points  a  further 
explanation  is  necessary.  Ex  parte  Hender- 
son, C.  D.  1900,  91  O.  G.  228. 

21.  The  examiner  cannot  be  expected  to 
treat  a  case  from  all  possible  aspects  and 
meet  in  advance  all  possible  arguments  which 
may  be  brought  forward ;  but  in  explaining 
his  position  he  is  necessarily  guided,  to  a 
great  extent,  by  the  arguments  submitted  by 
the  applicant.  It  is  therefore  as  necessary 
that  the  applicant  explain  fully  his  position  as 


498 


PROTEST   AGAINST    ISSUANCE— PUBLIC    USE. 


it  is  that  the  examiner  make  clear  his  position 
in  order  that  the  prosecution  of  a  case  be 
brought  to  a  speedy  and  proper  conclusion. 
Id. 

22.  It  is  the  purpose  of  Rules  65  and  66 
to  lay  down  a  course  of  procedure  which  will 
facilitate  the  speedy  prosecution  of  applica- 
tions and  not  to  permit  applicants  to  delay 
such  prosecution  by  insisting  upon  a  compli- 
ance with  the  rules  on  the  part  of  the  office 
without  a  like  compliance  on  their  own  part. 
Ex  parte  Sandman,  C.  D.  1901,  97  O.  G.  2532. 

23.  A  mere  request  for  reconsideration  with- 
out pointing  out  the  supposed  errors  in  the 
examiner's  action  is  not  such  action  as  the 
condition  of  the  case  requires,  and  does  not 
entitle  the  applicant  to  reconsideration.  Ex 
parte  Alton,  C.  D.  1904,  113  O.  G.  1968. 

24.  The  rule  that  an  applicant  is  not  enti- 
tled to  reconsideration  upon  mere  request, 
but  only  upon  a  statement  of  supposed  errors 
in  the  examiner's  action,  does  not  deprive 
him  of  the  right  to  a  re-examination  given 
him  by  statute,  and  is  therefore  not  invalid 
on  the  ground  of  conflict  with  the  statute.    Id. 

25.  The  provision  in  the  statute  for  a  re- 
examination of  applications  is  to  permit  the 
applicant  to  answer  the  examiner's  objections 
and  obtain  a  re-examination  in  the  light  of 
that  answer.  No  other  reasonable  explana- 
tion for  the  re-examination  seems  possible. 
Id. 

26.  The  requirement  for  a  statement  of  rea- 
sons in  connection  with  a  request  for  recon- 
sideration is  in  the  interest  of  the  applicant 
as  well  as  the  office,  since  it  enables  the  ex- 
aminer and  the  applicant  to  understand  each 
other's  position.     Id. 

27.  Where  the  pertinency  of  the  references 
has  been  pointed  out  by  the  examiner  or  where 
their  pertinency  is  obvious,  an  action  which 
does  not  point  out  wherein  the  claims  are  sup- 
posed to  avoid  these  references  is  not  com- 
pletely responsive.  Ex  parte  Inman,  C.  D. 
1910,  160  O.  G.  1038. 


PROTEST  AGAINST  ISSUANCE  OF  PATENT. 

!•  A  party  to  an  interference  has  no  more 
right  to  raise  the  question  of  patentability  of 
his  opponent's  claims  than  third  parties,  ex- 
cept as  provided  in  Rule  122.  After  the  time 
set  in  that  rule  the  commissioner  will  not 
give  him  a  hearing  in  support  of  a  protest 
filed   as   a   matter   of    right,    since   to    do    so 


would  be  to  nullify  Rules  122  and  124.  Carey 
V.  New  Home  Sewing  Machine  Company,  C. 
D.  1901,  97  O.  G.  1171. 

2.  A  party  properly  obtaining  a  knowledge 
of  an  application  pending  in  this  office  may 
file  a  protest  against  the  issue  of  a  patent 
upon  it  and  may  therein  call  attention  to  any 
facts  within  his  knowledge  which,  in  his  opin- 
ion, would  make  the  grant  of  a  patent  im- 
proper; but  he  does  not  thereby  obtain  the 
right  to  argue  the  question  before  the  tribunals 
of  this  office.  (Fowler  v.  Benton,  C.  D.  1880, 
39,  17  O.  G.  266,  modified.)     Id. 

3.  The  question  of  patentability  is  ex  parte 
in  character  and  is  one  between  the  applicant 
and  the  office  on  behalf  of  the  public,  and  no 
one  member  of  the  public  can  be  recognized 
as  having  such  an  interest  in  the  grant  of  a 
patent  as  to  entitle  him  to  contest  the  matter 
any  further  than  to  call  attention  to  matters 
which  he  considers  bars.     Id. 

4.  Although  the  issuance  of  a  patent  upon 
an  invention  which  a  party  is  manufacturing 
and  which  he  says  is  not  patentable  might 
cast  a  cloud  upon  his  right  to  manufacture 
it  and  expose  him  to  litigation,  Held,  that  it 
does  not  injure  him  legally,  since  if  he  is 
sued  for  infringement  of  the  patent  he  may 
set  up  its  illegality  as  a  complete  defense. 
That  is  all  of  the  remedy  needed,  a  United 
States  of  America  ex  rel.  National  Phono- 
graph Company  v.  Commissioner  of  Patents, 
C.  D.  1902,  101  O.  G.  1133. 

5.  The  commissioner  will  not  at  the  request 
of  a  party  consider  in  advance  the  propriety 
of  a  proposed  action  by  a  lower  tribunal  of 
the  office,  and  particularly  where  that  action 
involves  the  rights  of  other  parties  who  have 
been  given  no  hearing  in  the  matter.  In  re 
Sarfert,  C.  D.  1903,  102  O.  G.  1049. 


PUBLIC  USE   OR  SALE. 

1.  Where  a  party  made  and  sold  a  complete 
and  perfected  turbine  water-wheel  embodying 
his  invention  more  than  two  years  before  his 
application  and  it  was  then  put  into  use,  Held, 
such  public  use  and  sale  as  to  invalidate  the 
patent,  d  Swain  v.  Holyoke  Machine  Co.,  C. 
D.   1901,  97  O.  G.  399. 

2.  Where  to  overcome  the  bar  of  two  years' 
public  use  and  sale  a  party  alleges  that  the 
device  sold  was  incomplete  and  it  appears  that 
the  incompleteness  consisted  in  the  fact  that 
the   supply  and  discharge  pipes   used  with  it 


PUBLIC  USE  PROCEEDINGS. 


499 


were  too  small  to  get  the  best  results,  Held, 
that  the  use  was  such  as  to  constitute  a  bar. 
rfld. 

3.  Where  the  inventor  put  his  invention  into 
use  in  its  finished  form,  he  cannot  relieve 
himself  from  the  consequences  which  follow 
by  showing  that  it  was  knowingly  installed  by 
him  with  imperfect  connections,     d  Id. 

4.  As  a  general  rule  a  single  unrestricted 
sale  of  a  device  embodying  the  completed 
invention  is  a  public  use  or  sale  within  the 
meaning  of  the  law ;  but  this  general  rule  is 
not  applied  in  all  cases  where  the  purpose  is 
to  test  the  utility  and  efficiency  of  the  device. 
d  Id. 

5.  Where  it  appears  that  there  has  been  a 
public  use  or  sale  more  than  two  years  before 
the  application,  the  burden  is  thrown  upon  the 
patentee  to  establish  by  full,  clear,  and  con- 
vincing proofs  that  such  use  or  sale  was  prin- 
cipally and  primarily  for  experimental  pur- 
poses and  that  such  purposes  were  not  merely 
incidental  or  subsidiary,     d  Id. 

6.  Where  in  making  the  sale  the  patentee 
told  the  purchaser  it  was  for  the  purpose  of 
experiment,  but  fails  to  show  any  facts  in- 
dicating that  he  tested  its  efficiency  or  con- 
ducted any  experiments  after  it  was  put  in 
use.  Held,  that  the  sale  is  not  shown  to  have 
been  for  experimental  purposes,     d  Id. 

7.  Where  the  applicant  whose  application 
was  filed  April  23,  1901,  secured  an  order  for 
a  machine  embodying  his  invention  in  Decem- 
ber, 1898,  and  the  machine  was  made  and  de- 
livered by  his  company  before  April  23,  1899, 
but  was  not  put  in  use  until  afterward,  and 
where  a  catalogue  illustrating  the  invention 
was  published  by  the  inventor's  company  in 
March,  1899,  Held,  not  to  constitute  placing 
the  invention  on  sale  within  the  meaning  of 
the  statute,  in  view  of  evidence  that  the  sale 
was  for  purposes  of  experiment.  *In  re  Mills, 
C.  D,  1905,  117  O.  G.  904. 

8.  Where  the  inventor  was  employed  by  a 
company  engaged  in  building  machines,  but 
not  using  them,  and  he  was  unable  to  make 
and  test  the  machine  under  working  condi- 
tions at  his  own  expense.  Held,  that  he  was 
justified  in  selling  a  machine  for  purposes  of 
tests  and  is  not  to  be  regarded  as  having  for- 
feited his  right  to  a  patent  because  the  sale 
was  more  than  two  years  before  his  filing 
date.    *Id. 

9.  Where  an  inventor  secures  an  order  for 
and  induces  the  company  by  which  he  is  em- 
ployed to  build  a  machine  embodying  his  in- 


vention without  any  royalty  or  profit  to  him- 
self, and  it  is  understood  that  the  purchaser 
was  at  liberty  to  return  the  machine  if  unsat- 
isfactory, Held,  that  the  inventor  has  not 
placed  his  invention  "on  sale"  within  the 
meaning  of  the  statute.     *Id. 

10.  A  single  unrestricted  sale  by  the  inven- 
tor of  his  invention  is  a  public  sale  or  puts  it 
"on  sale"  within  the  meaning  and  intent  of 
section  4886  of  the  Revised  Statutes.    ♦Id. 

11.  A  single  sale  of  the  invention  by  the 
inventor  for  experimental  purposes  where  he 
is  unable  otherwise  to  make  proper  tests  does 
not  put  the  invention  "on  sale"  within  the 
meaning  of  the  statute.     *Id. 

12.  Where  a  clear  case  of  "on  sale"  is  es- 
tablished, the  burden  is  on  the  inventor  to 
prove  that  the  sale  was  for  the  purpose  of 
having  proper  tests  made,  and  that  the  sale 
was  at  least  to  that  extent  a  restricted  sale. 
*Id. 

13.  Where  the  party  appearing  from  the 
records  of  this  office  to  be  the  assignee  of  the 
entire  interest  files  a  statement  that  the  in- 
vention was  on  sale  and  in  use  more  than  two 
years  before  the  application  was  filed.  Held, 
that  the  case  will  be  withheld  from  issue  and 
an  order  made  to  show  cause  why  the  claims 
should  not  be  rejected.  Ex  parte  Cummins, 
C.   D.  190.'),  114  O.  G.  2090. 

14.  The  fact  that  a  license  was  taken  out 
to  make  cigars  on  the  premises  where  a  cigar- 
making  machine  was  being  tested  and  that 
some  of  the  cigars  made  were  actually  sold, 
Held,  not  to  establish  a  public  use  of  the  ma- 
chine where  it  appeared  that  the  place  where 
such  tests  were  made  was  a  machine-shop  and 
not  a  cigar  factory,  the  license  being  taken 
out  in  order  to  be  able  to  make  actual  tests 
with  tobacco,  and  that  the  machine  was  oper- 
ated primarily  for  the  purpose  of  developing 
imperfections  in  the  machine  and  that  many 
minor  changes  were  made  therein.  Lacroix 
v.  Tyberg,  C.  D.  1909,  148  O.  G.  831. 


PUBLIC  USE  PROCEEDINGS. 

1.  The  practice  to  be  followed  in  the  of- 
fice in  public-use  proceedings  indicated.  Ex 
parte  Van  Ausdal,  C.  D.  1900,  91  O.  G.  1617. 

2.  The  office  will  not  institute  proceedings 
in  the  case  of  trade-marks  analogous  to  pub- 
lic-use proceedings  in  the  case  of  patents, 
since  public  use  does  not  raise  any  question 


500 


REHEARING. 


as  to  the  right  of  the  pubhc,  but  merely  the 
right  of  some  other  alleged  user.  In  re  Dietz, 
C.  D.  1903,  104  O.  G.  852. 

3.  Where  the  single  affidavit  upon  which 
the  protest  rests  sets  forth  the  conclusions 
of  the  affiant  that  the  machine  alleged  to  have 
been  in  public  use  corresponded  to  a  certain 
claim  of  the  application  instead  of  giving  a 
description  of  the  machine  itself,  Held,  that 
the  showing  made  is  entirely  insufficient  to 
justify  the  institution  of  a  public  use  proceed- 
ing. In  re  Booth  Brothers,  C.  D.  1907,  128 
O.  G.  1291. 

4.  In  a  public  use  protest  the  facts  should 
be  set  forth  as  fully  as  possible,  so  that 
the  office  may  pass  upon  the  identity  of 
the  machine  used  with  that  claimed  by 
the  applicant  and  upon  the  success  of 
its  operation  in  determining  whether  pro- 
ceedings shall  be  instituted.  Corroborating 
affidavits  should  also  be  filed  if  other  witnesses 
are  to  be  relied  upon.  Altogether,  the  pro- 
testants  should  present  their  prima  facie  case 
as  well  as  may  be  done  by  affidavits,  so  as  to 
give  the  applicant  opportunity  to  intelligently 
oppose  the  institution  of  the  proceeding  and 
the  consequent  delay  in  the  prosecution  of 
his  application.    Id. 

5.  The  fact  that  the  commissioner  holds 
certain  ex  parte  affidavits  filed  in  support  of  a 
petition  for  the  institution  of  public-use  pro- 
ceedings to  be  sufficient  to  make  out  a  prima 
facie  case  of  public  use  such  as  to  warrant 
the  taking  of  testimony  does  not  preclude 
the  primary  examiner  from  ruling  that  the 
evidence  taken  in  such  proceedings  is  not  suf- 
ficient to  warrant  the  rejection  of  the  claims. 
Ex  parte  Hartley,  C.  D.  1908,  136  O.  G.  1767. 

6-  The  action  of  the  examiner  holding  that 
testimony  in  public-use  proceedings  is  insuffi- 
cient to  warrant  the  rejection  of  the  appli- 
cant's claims  will  be  reviewed  only  where  such 
obvious  error  appears  as  will  warrant  the  su- 
pervisory action  of  the  commissioner.     Id. 

7.  In  public-use  proceedings  after  the  filing 
of  protestant's  testimony  it  is  customary  mere- 
ly to  set  a  time  within  which  the  parties,  the 
protestant  as  well  the  applicant,  may  file  briefs 
with  the  primary  examiner,  and  it  is  not  the 
practice  to  set  a  case  down  for  oral  hearing. 
In  re  Henry,  Jr.,  C.  D.  1909,  140  O.  G.  508. 

8.  The  protestant  will  not  be  permitted  to 
appear  before  the  primary  examiner  and  argue 
orally  the  pertinency  of  the  evidence  taken  in 
the  public-use  proceedings,  even  though  the 
protestant  had   knowledge  of  the   application 


by  reason  of  the  fact  that  he  had  been  in- 
volved in  an  interference  proceeding  with 
such  application.    Id. 


EEHEAEING. 

(See  Interference,  Rehearing.) 

!•  A  decision  was  rendered  by  the  commis- 
sioner on  February  28,  1891,  rejecting  the 
claims.  There  were  no  other  or  further  steps 
taken  in  the  case  until  October  23,  1896,  when 
appellant  moved  for  a  rehearing  and  for  leave 
to  amend  by  canceling  certain  claims  embraced 
by  the  original  patent  and  to  insert  in  lieu 
thereof  modified  claims  filed  with  the  motion 
for  rehearing.  This  motion  was  on  March  13, 
1897,  denied  by  the  commissioner.  On  appeal 
to  the  court  of  appeals  from  this  ruling  of 
the  commissioner  refusing  to  rehear  the  case. 
Held,  that  the  appeal  cannot  be  maintained,  as 
an  appeal  will  not  lie  from  a  ruling  refusing 
a  rehearing  or  an  application  for  leave  to 
amend  the  original  claims.  *Messinger  v.  The 
Commissioner  of  Patents,  C.  D.  1898,  83  O.  G. 
199.3. 

2.  A  decision  by  two  of  the  examiners-in- 
chief  is  a  decision  of  the  examiners-in-chief. 
Ex  parte  Helbig,  C.  D.  1907,  131  O.  G.  1687. 

3.  A  rehearing  of  an  appeal  to  the  exam- 
iners-in-chief is  not  necessary  merely  because 
one  of  the  examiners-in-chief  was  not  pres- 
ent. If  the  two  members  are  present,  the  de- 
cision is  valid.  If  they  disagree,  the  case  may 
be  set  for  rehearing,  as  provided  in  Order 
No.  1664   (121  O.  G.  198.3.)     Id. 

4.  Cases  are  considered  to  be  "pending  be- 
fore" the  examiners-in-chief  for  the  purpose 
of  entertaining  a  motion  for  rehearing  (Rule 
142)  until  the  expiration  of  the  statutory  pe- 
riod or  specified  limit  of  appeal  or  until  such 
appeal  shall  have  been  taken.  Ex  parte  Floyd, 
C.  D.  1907,  129  O.  G.  482. 

5.  A  rehearing  of  a  decision  upon  the  pat- 
entability of  the  claims  of  an  invention  will 
not  be  granted  on  the  bare  statement  that  in- 
formation which  it  is  sought  to  present  upon 
rehearing  "could  not  have  been  obtained  at 
an  earlier  date"  where  there  was  a  delay  of 
eleven  months  after  the  decision  before  the 
petition  for  rehearing  was  filed  and  there  is 
no  excuse  for  this  delay  nor  any  showing  that 
if  proper  diligence  had  been  exercised  the  in- 
formation referred  to  could  not  have  been  ob- 
tained at  an  earlier  date.  Ex  parte  Bartholo- 
mew, C.  D.  190S,  137  O.  G.  1940. 


REISSUE,  I. 


501 


EEISSTTE. 

I.  In  General. 
II.  Delay  in  Applying  For. 

III.  Identity. 

IV.  Enlargement  Valid. 
V.  Enlargement  Invalid. 

VI.  New  Matter. 
VII.  Inadvertence  or  Mistake. 
VIII.  To  Correct  Error  of  Patent  Office. 
IX.  Abstract  of  Title. 
X.  Assignees. 
XI.  Intervening  Rights. 
XII.  Inoperativeness. 
XIII.  Right  to  Inspect,  Etc. 

I.  In  General. 

1.  Upon  application  being  made  for  a  re- 
issue the  patent  office  is  authorized  to  deal 
with  all  its  claims,  the  originals  as  well  as 
those  inserted  first  in  the  application,  and 
might  declare  them  to  be  invalid ;  but  such 
action  would  not  alTect  the  claims  of  the  orig- 
inal patent,  which  remained  in  full  force,  if 
the  application  for  a  reissue  be  rejected  or 
abandoned.  **The  McCormick  Harvesting 
Machine  Company  v.  C.  Aultman  &  Company 
et  al.  The  McCormick  Harvesting  Machine 
Company  v.  The  Aultman-Miller  Company, 
C.  D.  1898,  82  O.  G.  1988. 

2.  When  a  patent  has  received  the  signature 
of  the  Secretary  of  the  Interior,  countersigned 
by  the  commissioner  of  patents,  and  has  had 
affixed  to  it  the  seal  of  the  patent  office,  it 
has  passed  beyond  the  control  and  jurisdic- 
tion of  that  office,  and  is  not  subject  to  be 
revoked  or  canceled  by  the  President  or  any 
other  officer  of  the  government.  (United 
States  v.  Schurz,  102  U.  S.  378 ;  United  States 
V.  Am.  Bell  Telephone  Co.,  C.  D.  1888,  558, 
45  O.  G.  1311,  128  U.  S.  315,  363.)  It  has  be- 
come the  property  of  the  patentee,  and  as 
such  is  entitled  to  the  same  legal  protection  as 
other  property.  (Seymour  v.  Osborne,  11 
Wall.  516;  Cammeyer  v.  Newton,  C.  D.  1877, 
183,  11  O.  G.  287,  94  U.  S.  225 ;  United  States 
v.  Palmer,  128  U.  S.  262,  271,  citing  James  v. 
Campbell,  C.  D.  1882,  67,  24  O.  G.  337,  104  U. 
S.  356.)     **Id. 

3.  If  the  patentee  abandoned  his  application 
for  a  reissue,  he  is  entitled  to  a  return  of  his 
original  patent  precisely  as  it  stood  when  such 
application  was  made,  and  the  patent  office 
has  no  greater  authority  to  mutilate  it  by  re- 
jecting any  of  its  claims  than  it  has  to  cancel 
the  entire  patent.    **Id. 


4.  Upon  the  issue  of  the  original  patent  the 
patent  office  had  no  power  to  revoke,  cancel, 
or  annul  it.  It  had  lost  jurisdiction  over  it, 
and  did  not  regain  such  jurisdiction  by  the 
application  for  a  reissue.    **Id. 

5.  The  object  of  a  patentee  applying  for  a 
reissue  is  not  to  reopen  the  question  of  the 
validity  of  the  original  patent,  but  to  rectify 
any  error  which  may  have  been  found  to  have 
arisen  from  his  inadvertence  or  mistake.  But 
until  the  amended  patent  shall  have  been  is- 
sued the  original  stands  precisely  as  if  a  re- 
issue had  never  been  applied  for  (Allen  v. 
Gulp,  C.  D.  1897,  472,  79  O.  G.  1523,  166  U. 
S.  501,  505),  and  must  be  returned  to  the 
owner  upon  demand.    **Id. 

6.  The  fact  that  the  rules  of  the  patent  of- 
fice require  that  the  original  patent  should 
be  placed  in  its  custody  for  the  purpose  of 
surrendering  it  upon  the  issue  of  an  amended 
patent  gives  that  department  no  right  to  the 
possession  of  it  upon  the  rejection  of  the  ap- 
plication for  a  reissue.    **Id. 

7.  When  a  patent  has  issued,  the  specifica- 
tion and  claims  are  no  longer  open,  as  a  matter 
of  course,  to  the  same  amendments  which 
could  have  been  made  before  issue,  since  the 
applicant  for  reissue  must  show  not  only  that 
the  amendment  is  necessary  to  the  protection 
of  his  rights,  but  also  satisfactory  reasons  why 
it  was  not  made  before  the  issuance  of  the  pat- 
ent.   Ex  parte  HoUis,  C.  D.  1899,  86  O.  G.  489. 

8.  Where  a  petition  for  reissue  was  received 
in  this  office  on  April  5,  1898,  unaccompanied 
by  a  certified  copy  of  the  abstract  of  title  and 
the  written  assent  of  the  assignee,  as  called  for 
by  the  rule,  and  the  abstract  of  title  was  not 
furnished  until  April  13,  1898,  and  the  writ- 
ten assent  not  until  May  18,  1898,  which  lat- 
ter was  the  date  given  to  the  application,  upon 
a  petition  to  change  the  date  of  the  applica- 
tion, to  April  5,  1898,  Held,  that  the  applica- 
tion could  not  be  given  a  date  earlier  than 
May  18,  1898,  when  all  the  papers  required  by 
the  rule  were  received  in  the  office.  Ex  parte 
Griffin,  C.  D.  1900,  91  O.  G.  2001. 

9.  It  is  believed  that  the  public  should  be 
informed  at  the  earliest  possible  date  if  a 
patent  is  to  be  altered  by  reissue,  and  there- 
fore any  and  all  doubts  as  to  what  is  intended 
by  the  statutes  should  be  resolved  in  favor 
of  prompt  and  vigorous  prosecution  of  the  ap- 
plication. Ex  parte  Loughlin  and  Reuleaux, 
C.  D.  1900,  92  O.  G.  2002. 

10.  The  cancelation  of  claims  in  a  reissue 
application  which  correspond  to  the  claims  of 


502 


REISSUE,  II. 


the  patent  which  it  is  sought  to  reissue  has 
no  effect  upon  the  claims  in  the  patent  while 
the  reissue  application  is  still  pending  in  the 
patent  office.  (The  McCormick  Harvesting 
Machine  Co.  v.  Aultman  &  Co.,  C.  D.  1898, 
398,  83  O.  G.  1988.)  Read  v.  Scott,  C.  D.  1902, 
100  O.  G.  449. 

11.  To  renew  a  forfeited  application  it  is 
necessary  to  file  a  petition  for  renewal  as 
well  as  pay  the  fee,  and  therefore  it  is  not 
sufficient  to  merely  pay  the  fee  and  receive  a 
certificate  of  deposit  within  the  statutory  pe- 
riod. Ex  parte  Ryan,  C.  D.  1905,  117  O.  G. 
599. 

12.  Upon  reissue  of  a  patent  the  original 
patent  is  surrendered,  extinguished,  and  can- 
celed, the  reissue  takes  its  place  as  a  new 
grant  for  its  unexpired  term,  no  rights  can 
be  predicated  upon  the  original  patent,  all 
pending  suits  brought  thereon  fail,  and  no 
judgment  of  any  nature  can  thereafter  be 
based  upon  it.  *Lattig  and  Goodrum  v.  Dean, 
C.  D.  190.5,  117  O.  G.  1798. 

13.  Held,  that  a  patent  upon  an  apparatus 
cannot  be  reissued  for  the  purpose  of  incor- 
porating claims  to  a  process.  Ex  parte  Her- 
cult,  C.  D.  1906,  124  O.  G.  1843. 

II.  Delay  in  Applying  For. 

14.  The  original  patent  was  issued  on  Sep- 
tember 15,  18S5,  and  an  application  for  re- 
issue was  not  filed  in  the  patent  office  until 
November  6,  1888.  Held,  that  the  applica- 
tion for  reissue  of  the  patent  was  not  made 
within  a  reasonable  time  and  that  there  was 
no  sufficient  evidence  of  inadvertence,  acci- 
dent, or  mistake  to  entitle  appellant  to  a  re- 
issue of  the  patent  under  the  statute,  accord- 
ing to  the  rule  laid  down  in  the  case  of  Top- 
liff  v.  Topliff  (C.  D.  1892,  402,  59  O.  G.  1257, 
145  U.  S.  156.)  *Messinger  v.  The  Commis- 
sioner of  Patents,  C.  D.  1898,  83  O.  G.  1995. 

15.  From  the  well-settled  principles  of  the 
law  of  reissues,  as  expressed  by  the  supreme 
court,  not  only  must  the  application  for  re- 
issue be  founded  upon  the  same  invention  as 
that  covered  by  the  original  patent  and  as 
shown  by  the  original  specification  and  claims, 
but  there  must  be  due  diligence  shown  in  dis- 
covering the  mistake  or  inadvertence  and  in 
the  application  for  reissue  and  in  the  prosecu- 
tion of  such  application.     *Id. 

16.  Delay  in  applying  for  a  reissue  is  ob- 
noxious, because,  as  a  rule,  individuals  and 
the  public  have   acquired  during  such   delay 


adverse  equities,  which  would  be  destroyed 
by  reconstruction  of  a  void  claim;  but  where 
a  patent  was  obtained  June  6,  1882,  held  void 
by  the  circuit  court  June  14,  1884,  and  by  the 
circuit  court  of  appeals  October  22,  1894,  and 
a  reissue  was  granted  March  12,  1895,  Held, 
that  the  reissue  is  not  void  by  reason  of  the 
lapse  of  time  after  the  original  patent  was 
issued,  d  Maitland  v.  B.  Goetz  Manufactur- 
ing Company,  C.  D.  1898,  85  O.  G.  776. 

17.  In  considering  the  question  of  delay  in 
discovering  the  defect  in  the  original  patent 
and  in  making  application  for  reissue  some  al- 
lowance may  well  be  made  for  a  mere  in- 
ventor unskilled  in  the  art  of  interpretation 
who  could  not  upon  a  mere  reading  of  his 
patent  determine  what  his  claims  covered. 
d  Crown  Cork  &  Seal  Co.  of  Balto.  v.  Alumi- 
num Stopper  Co.  of  Balto.  City  et  al.,  C.  D. 
1901,  96  O.  G.  2573. 

18.  Where  six  years  after  the  grant  of  a 
patent  application  for  reissue  is  made  with 
broader  claims.  Held,  that  the  claims  were 
properly  rejected  on  the  ground  of  laches. 
*In  re  Starkey,  C.  D.  1903,  104  O.  G.  2150. 

19.  After  the  lapse  of  two  years  after  the 
issue  of  a  patent  a  reissue  which  seeks  to  en- 
large the  claims  of  the  original  patent  will 
not  be  granted  or  if  granted  will  be  held  in- 
valid unless  special  circumstances  are  shown 
to  excuse  the  delay.     *Id. 

20.  Where  in  excuse  for  delay  in  applying 
for  a  reissue  it  is  alleged  by  the  applicant  that 
he  did  not  know  that  his  claims  were  nar- 
row until  a  decision  by  the  court.  Held,  that 
the  mistake,  if  any,  was  one  of  law,  not  of 
fact,  and  that  ignorance  of  the  law  is  no  ex- 
cuse.   *Id. 

21.  Where  there  was  a  mistake  as  to  the 
scope  of  the  original  claims.  Held,  that  there 
is  no  excuse  for  the  failure  to  discover  it  for 
a  period  of  six  years,  particularly  where  the 
patent  was  not  difficult  to  understand  and  was 
often  examined.    *Id. 

22.  Where  a  reissue  application  is  filed  for 
the  sole  purpose  of  broadening  the  claims  of 
the  patent  and  the  patentee  delays  filing  his 
reissue  application  for  a  period  of  nearly  six 
years  from  the  date  of  the  grant  of  his  pat- 
ent and  no  reasonable  excuse  is  offered.  Held, 
that  the  applicant  is  guilty  of  laches  in  mak- 
ing application  for  his  reissue  application, 
and  the  application  for  the  reissue  should  be 
rejected  for  that  reason.  Ex  parte  Starkey, 
C.  D.  1903,  105  O.  G.  1259. 


REISSUE,  II. 


503 


23.  Where  it  is  apparent  upon  inspection 
that  the  claims  of  the  original  patent  are  nar- 
row and  based  upon  the  exact  structure  illus- 
trated and  described  and  it  appears  that  the 
patent  has  been  under  constant  scrutiny  by 
parties  interested  since  the  date  of  its  issue 
and  it  does  not  appear  that  the  device  manu- 
factured under  the  patent  differed  in  any  re- 
spect from  the  device  illustrated,  described, 
and  claimed,  Held,  that  a  delay  of  six  years 
in  applying  for  a  reissue  of  the  patent  to 
broaden  the  claims  is  unreasonable.     Id. 

24.  Where  the  purpose  of  the  reissue  is  to 
eliminate  from  the  claims  of  the  original  pat- 
ent an  element  which  had  been  specifically 
claimed  therein  without  the  substitution  there- 
for of  an  equivalent  and  the  effect  of  this  is 
to  expand  the  original  patent.  Held,  that  the 
failure  to  claim  the  particular  combination 
not  claimed  in  the  original  patent,  but  claimed 
in  the  reissue,  was  not  due  to  any  such  inad- 
vertence or  mistake  as  would  authorize  claim- 
ing it  in  a  reissue  and  that  the  reissue  was 
not  for  the  same  invention  as  the  original 
patent.     Id. 

25.  Where  the  examiner  rejects  the  claims 
of  a  reissue  application  on  the  ground  that 
the  application  for  reissue  was  not  filed  with- 
in two  years  after  the  grant  of  the  patent. 
Held,  that  the  remedy  is  by  appeal  to  the  ex- 
aminers-in-chief and  not  by  petition.  Ex 
parte  Powers,  C.  D.  1904,  108  O.  G.  1053. 

26.  Where  an  inventor  upon  the  issue  of 
a  patent  for  his  invention  immediately  called 
his  attorney's  attention  to  the  fact  that  the 
claims  thereof  were  not  as  broad  as  his  in- 
vention and  the  attorney  advised  him  that  the 
claims  were  as  broad  as  they  could  hope  to 
obtain  in  view  of  the  prior  art  and  the  ob- 
jections of  the  patent  office  and  the  inventor 
was  ignorant  of  the  remedy  of  reissue  and 
was  not  advised  thereof  by  the  attorney.  Held, 
that  these  circumstances  do  not  constitute  a 
sufficient  excuse  for  a  delay  of  more  than 
five  years  in  applying  for  a  reissue  seeking 
broader  claims.  Ex  parte  Ams,  C.  D.  1906, 
125  O.  G.  347. 

27.  An  affidavit  setting  forth  the  inventor's 
inability  to  procure  an  attorney  and  unfamil- 
iarity  with  the  English  language  is  insufficient 
to  account  for  a  delay  of  nearly  three  and 
one-half  years  in  applying  for  a  reissue,  espe- 
cially where  the  prosecution  of  the  original 
application  and  the  character  of  the  claims 
obtained  in  the  patent  show  that  the  inventor 


was  sufficiently  familiar  with  the  language  and 
with  the  law  to  read  the  patent  and  determine 
that  the  combination  of  parts  to  which  the 
new  claims  of  the  reissue  application  are 
drawn  was  not  claimed  in  the  patent  Felbel 
V.  Agintar,  C.  D.  1906,  121  O.  G.  1012. 

28.  Where  the  inventor  and  his  attorney  re- 
sided abroad  and  were  unfamiliar  with  the 
English  language  and  with  the  requirements 
of  our  patent  law  and  the  application  for  re- 
issue was  filed  seven  months  and  four  days 
after  the  grant  of  the  patent.  Held,  that  there 
was  no  undue  delay  in  making  application  for 
reissue.  *In  re  Briede,  C.  D.  1906,  123  O.  G. 
322. 

29.  H.  filed  an  application  on  September  16, 
1896,  upon  which  a  patent  was  granted  on 
April  20,  1897.  In  1898  H.  instructed  his  at- 
torneys to  prepare  a  reissue  application,  but 
before  such  application  was  filed  F.  obtained 
a  patent  dated  July  4,  1899,  on  an  application 
filed  May  31,  1898,  covering  mechanism  of  the 
character  covered  by  H.'s  patent.  In  looking 
over  the  record  of  the  F.  patent  H.  found  an 
affidavit  filed  to  overcome  the  rejection  of 
his  claims,  the  oath  stating  that  the  invention 
had  been  made  "many  months  prior  to  Sep- 
tember 16,  1896,"  the  filing  date  of  H.'s  ap- 
plication. In  view  of  this  affidavit  H.  con- 
sidered it  useless  to  apply  for  a  reissue.  In 
a  suit  brought  in  1904  by  the  assignee  of  the 
F.  patent  against  the  assignee  of  the  H.  pat- 
ent it  was  brought  out  that  the  machine  to 
which  the  affidavit  referred  as  having  been 
made  "many  months"  before  H.  filed  his  ap- 
plication had,  in  fact,  been  made  in  1889  or 
1890,  and  the  court  held  that  said  machine 
was  either  inoperative  and  impracticable  or 
abandoned  by  laches.  Held,  that  under  the 
circumstances  a  reissue  applied  for  promptly 
after  the  decision  of  the  court  should  not  be 
refused  on  the  ground  of  delay  in  applying 
therefor.  Ex  parte  Hiett,  C.  D.  1907,  126 
O.  G.  1067. 

30.  Delay  of  two  years  in  filing  an  applica- 
tion for  a  reissue  of  a  patent  with  broader 
claims  will  usually  be  treated  as  an  abandon- 
ment to  the  public  of  everything  not  claimed 
in  the  original.  This  rule  is  based  upon  the 
analogy  between  a  reissue  application  and  the 
case  of  an  inventor  who  fails  to  apply  for  a 
patent  of  his  invention  within  two  years  from 
the  date  of  its  public  use  or  sale,  which  the 
statute  ordains  is  conclusive  evidence  of  its 
abandonment.  (See  in  re  Starkey.  C,  D.  1903, 
607,  104  O.  G.  2150,  21  App.  D.  C  519,  and 


504 


REISSUE,  III,  IV. 


cases  cited  therein.)     *In  re  Ams,  C.  D.  1907, 
127  O.  G.  3644. 

31.  Where  the  invention  covered  by  a  patent 
is  simple  and  the  patent  clearly  and  definitely 
describes  it,  and  the  patentee  immediately 
upon  the  issue  thereof  discovers  that  the  sin- 
gle claim  allowed  is  too  narrow  and  does 
not  properly  cover  his  invention,  and  upon 
calling  his  attorneys'  attention  to  this  fact 
they  advised  him  that  the  claim  was  as  broad 
as  could  be  obtained,  and  it  does  not  appear 
that  they  acted  in  bad  faith,  Held,  that  a  delay 
of  five  years  in  seeking  a  reissue  cannot  be 
excused  upon  the  plea  that  the  original  at- 
torneys did  not  understand  the  invention, 
since  under  the  circumstances  it  was  the  duty 
of  the  patentee  to  consult  other  counsel  with- 
out delay.    *Id. 

III.  Identity. 

32.  In  the  consideration  of  the  right  to 
make  claims  in  a  reissue  it  is  not  to  be  con- 
cluded that  what  was  suggested  or  indicated 
in  the  original  specification,  drawing,  or  pat- 
ent office  model  is  to  be  considered  as  a  part 
of  the  invention  intended  to  have  been  cov- 
ered by  the  original  patent  unless  it  can  be 
seen  from  a  comparison  of  the  original  pat- 
ent and  the  reissue  that  the  invention 
which  the  original  patent  was  intended 
to  cover  fairly  expresses  the  things 
suggested  or  indicated  in  the  original 
specification,  drawings,  or  patent  office 
model  and  unless  the  original  specification  in- 
dicated that  those  things  are  embraced  in  the 
invention  intended  to  have  been  secured  by 
the  original  patent.  ♦Nelson  v.  Felsing  and 
Felsing  v.  Nelson,  C.  D.  1909,  143  O.  G.  289. 

33.  Where  the  original  specification  is  silent 
as  to  matters  sought  to  be  covered  by  a  reissue 
application,  although  the  drawings  might  be 
construed  to  disclose  the  same,  there  is  no 
sufficient  indication  of  intention  in  the  orig- 
inal patent  to  claim  such  an  invention ;  but 
where  the  patent  shows  and  describes  a  con- 
struction and  claims  it  in  general  terms  the 
reissue  applicant  is  not  barred  from  making  a 
claim  in  specific  language  to  such  construc- 
tion because  he  failed  to  designate  such  con- 
struction by  that  specific  language  or  because 
he  attributes  to  it  a  function  additional  to 
that  which  was  originally  attributed  thereto. 
(In  re  Briede,  C.  D.  1906,  677,  123  O.  G.  322, 
27  App.  D.  C.  298,  distinguished.)     *Id. 

34.  Authority  to  grant  reissue  patents  is  de- 
rived exclusively  from  Revised   Statutes,  sec- 


tion 4916  (U.  S.  Comp.  St.,  1901,  p.  3393), 
and  the  commissioner  goes  beyond  his  juris- 
diction if  he  grants  a  reissue  for  an  inven- 
tion other  than  the  one  disclosed  and  de- 
scribed in  the  original  patent,  which  by  rea- 
son of  inadvertence,  accident,  or  mistake  is 
inoperative  to  secure  the  monopoly  it  shows 
on  its  face  was  intended  to  be  secured. 
d  Moneyweight  Scale  Co.  v.  Toledo  Compu- 
ting Scale  Co.,  C.  D.  1011,  170  O.  G.  928. 

IV.  Enlargement  Valid. 

35.  A  reissue  is  authorized  by  the  plain 
terms  of  the  statute  and  by  a  long  line  of 
decisions  of  the  supreme  court  where  the 
patent  had  failed  to  clearly  and  adequately  se- 
cure the  invention  upon  which  the  original 
was  founded  and  where  the  unquestionable 
object  and  effect  of  the  reissue  were  to  cover 
an  invention  not  covered  by  the  original 
claims,  d  Crown  Cork  &  Seal  Co.  of  Balti- 
more V.  Aluminum  Stopper  Co.  of  Baltimore 
City  et  al.,  C.  D.  1901,  96  O.  G.  2573. 

36.  Held,  that  claim  5  of  the  reissue  was 
warranted  by  the  statement  of  invention  in 
the  original  patent  and  that  it  does  not  exhibit 
any  change  in  the  nature  of  the  invention  de- 
scribed, but  simply  gives  a  more  adequate  de- 
scription of  such  invention,  which  enlarges 
the  claim  without  enlarging  the  invention. 
did. 

37.  Where  the  reissue  claim  is  for  the  same 
invention  as  appears  from  the  specification 
and  claim  of  the  original  patent  to  have  been 
the  invention  thereof  and  the  applicant  has 
exercised  due  diligence  in  discovering  his  mis- 
take and  returning  to  the  patent  office  and 
there  are  no  intervening  rights  and  the  error 
has  arisen  through  inadvertence,  accident,  or 
mistake  and  there  is  no  fraud  shown,  a  re- 
issue with  a  broadened  claim  is  permissible. 
*In  re  Briede,  C.  D.  1906,  123  O.  G.  322. 

38.  Where  the  original  claims  were  directed 
to  the  holding  and  adjusting  means  alone 
and  it  is  now  sought  to  insert  by  reissue  claims 
covering  broadly  the  combination  of  the  gage 
with  the  holding  and  adjusting  means  and  the 
only  question  to  be  considered  is  whether  they 
cover  the  "same  invention"  as  that  sought  to 
be  secured  by  the  original  patent,  Held,  that 
since  the  original  specification  indicated  an 
intention  to  cover  such  mechanism  and  in 
view  of  the  decision  of  the  court  of  appeals 
of  the  District  of  Columbia  in  the  case  of 
Briede   (ante,  677,  123  O.  G.  322),  the  claims 


REISSUE,  V,  vr. 


505 


should  be  allowed.     Ex  parte  Hansen,  C.  D. 
1906,  125  O.  G.  2050. 

39.  Where  an  application  clearly  discloses 
a  process  and  an  apparatus  and  through  inad- 
vertance,  accident,  or  mistake  the  applicant 
accepts  a  patent  with  a  limited  claim  to  the 
apparatus,  although  the  process  is  the  domi- 
nant part  of  his  invention,  Held,  that  the  pat- 
ent may  be  reissued  to  include  the  process  in 
the  absence  of  intervening  rights.  *In  re 
Heroult,  C.  D.  1907,  127  O.  G.  3217. 

V.  Enlargement  Invalid. 

40.  Where  the  claim  sought  by  reissue  was 
not  as  broad  as  the  claim  made  in  the  orig- 
inal application  and  canceled.  Held,  that  this 
is  of  no  consequence  where  the  reissue  claim 
was  included  in  the  original  claim.  It  is  well- 
settled  law  that  a  reissue  cannot  be  allowed 
in  the  restoration  of  claims  once  rejected  and 
withdrawn.  *Denton  v.  Commissioner  of  Pat- 
ents, C.  D.  1898,  83  O.  G.  1347. 

41.  Where  an  applicant  for  a  reissue  had 
amended  and  limited  an  original  claim  to  a 
greater  extent  than  was  necessary.  Held,  that 
such  limitation  may  have  been  a  mistake  of 
judgment,  but  it  was  certainly  an  abandon- 
ment of  all  that  was  contained  in  the  orig- 
inal claim  and  which  was  not  contained  in  the 
subsequent  amendment.  There  can  be  no  mid- 
dle ground  or  retrogression  to  take  back  part 
of  what  has  been  abandoned  any  more  than 
to  take  back  the  whole.    *Id. 

42.  Where  it  appears  that  there  was  no  at- 
tempt to  claim  the  subject-matter  in  the  orig- 
inal application  which  is  embraced  by  a  claim 
submitted  in  the  reissue  and  there  is  no  inti- 
mation in  the  original  application  that  the  in- 
vention covered  by  the  claim  submitted  in  the 
reissue  was  the  invention  of  the  applicant, 
Held,  that  the  invention  covered  by  the  re- 
issue claim  must  be  regarded  as  abandoned 
or  waived.  Ex  parte  Briede,  C.  D.  1905,  117 
O.  G.  2085. 

43.  A  valid  reissue  patent  with  an  enlarged 
claim  cannot  be  obtained  upon  an  application 
filed  nearly  three  and  one-half  years  after  the 
issue  of  the  original  patent  when,  so  far  as 
has  been  shown,  such  application  might  have 
been  made  as  soon  as  the  original  patent  could 
have  been  received  and  read  or  at  any  time 
thereafter  during  the  two  years  in  which  the 
courts  have  held  that  reissues  with  enlarged 
claims  should  ordinarily  be  applied  for.  Fel- 
bel  V.  Aguilar,  C.  D.  1906,  121  O.  G.  1012. 


44.  The  .deliberate  cancelation  of  claims 
from  an  application  in  response  to  an  official 
objection  precludes  the  assertion  of  such 
claims  in  an  application  for  the  reissue  of  a 
patent  granted  thereon  notwithstanding  the 
fact  that  applicant  had  another  application 
pending  in  which  such  claims  could  have  been 
made  which  had  not  matured  into  a  patent 
when  the  application  for  reissue  was  filed.  *In 
re  Lacroix,  C.  D.  1908,  133  O.  G.  2181. 

45.  The  law  does  not  permit  a  patent  to 
be  reissued  for  the  mere  purpose  of  enlarg- 
ing a  claim  unless  there  has  been  a  clear 
mistake,  inadvertently  committed,  in  the 
wording  of  a  claim.  If  the  description  in  the 
reissue  application  finds  no  real  support  in  the 
original  application  a  case  of  reissue  is  not 
made.  *Otis  v.  Ingoldsby  and  Bowling,  C.  D. 
1910,  154  O.  G.  1108. 

46.  A  disclaimer  having  been  made  for  the 
purpose  of  avoiding  references  and  securing 
the  grant  of  a  patent  and  such  disclaimer  hav- 
ing been  acted  upon  by  the  public  a  reissue 
whereby  the  effect  of  such  disclaimer  is  avoid- 
ed and  the  patent  broadened  is  void,  d  Casein 
Co.  of  America  v.  A.  M.  Collins  Mfg.  Co., 
C.  D.  1910,  155  O.  G.  554. 

47.  The  commissioner  of  patents  is  without 
jurisdiction  to  grant  a  reissue  in  lieu  of  an 
original  patent,  unaltered  save  by  the  addition 
of  enlarging  claims,  and  where  the  original 
described  and  illustrated  by  its  drawings  an 
operative  machine  which  was  fully  covered 
and  protected  by  its  claims,  d  McDowell  v. 
Ideal  Concrete  Mach.  Co.,  C.  D.  1911,  171  O. 
G.  1002. 

48.  The  Borst  and  Groscop  Reissue  Patent 
No.  12,598  (original  No.  735.938),  for  a  ma- 
chine for  manufacturing  hollow  concrete 
blocks,  is  void  for  lack  of  jurisdiction  in  the 
commissioner  to  grant  the  reissue,  the  orig- 
inal not  being  inoperative  or  invalid,    d  Id. 

VI.  New  Matter. 

49.  A  reissue  can  be  granted  only  for  an  in- 
vention clearly  disclosed  and  intended  to  be 
claimed  in  the  original  patent,  and  therefore 
if  a  party  is  entitled  to  a  claim  by  reissue  it 
follows  that  the  original  application  clearly 
disclosed  the  matter  covered  by  it.  Walsh  v. 
Hallbauer,  C.  D.  1899,  88  O.  G.  2409. 

50.  Where  it  appears  that  the  subject-matter 
of  a  claim  presented  in  a'  reissue  application 
was  not  disclosed  in  the  original  application 


506 


REISSUE,  VI. 


and  the  claim  if  presented  in  the  original  ap- 
plication during  the  prosecution  thereof  would 
have  been  rejected  on  the  ground  of  new 
matter,  Held,  that  the  claim  cannot  be  granted 
in  a  reissue.  Ex  parte  Briede,  C.  D.  1905,  117 
O.  G.  2085. 

51.  An  ex  parte  decision  on  the  question  of 
new  matter  in  a  reissue  application  is  not  ab- 
solutely binding  on  the  primary  e.xaminer 
when  the  question  is  raised  inter  partes  on  a 
motion  to  dissolve;  but  it  should  be  persua- 
sive. If  the  inter  partes  consideration  of  the 
case  does  not  bring  out  new  reasons  or  new 
phases  of  the  old  reasons  or  such  new  light 
as  would  reasonably  tend  to  change  the  de- 
cision by  the  appellate  tribunal,  then  such  de- 
cision should  be  followed.  Felsing  v.  Nelson, 
C.  D.  1906,  120  O.  G.  2445. 

52.  The  "same  invention"  as  that  phrase  is 
used  in  the  reissue  statute  "refers  to  whatever 
invention  was  described  in  the  original  letters 
patent  and  appears  to  have  been  intended  to 
be  secured  thereby."  (Walker,  sec.  233; 
Parker  and  Whipple  Co.  v.  Vale  Clock  Co., 
C.  D.  1887,  584,  41  O.  G.  811,  123  U.  S.  87.) 
*In  re  Briede,  C.  D.  1906,  123  O.  G.  322. 

53.  The  ruling  in  each  case  where  claims 
have  been  held  invalid  for  the  reason  that 
they  were  not  for  the  same  invention  as  that 
originally  disclosed  has  been  based  upon  the 
ground  that  the  specification  has  been  ex- 
panded by  the  introduction  of  new  matter 
upon  which  the  new  claims  were  built,  or  the 
claims  were  for  parts  of  the  invention  other 
than  the  parts  for  which  claims  were  orig- 
inally made,  or  machine  claims  were  changed 
to  method  claims,  or  the  reverse,  or  the  ques- 
tion of  the  "same  invention"  was  affected  by 
intervening  rights,  or  laches,  or  fraud,  or  in 
reissue  cases  by  an  absence  of  the  necessary 
in  advertence,  accident,  or  mistake.     *Id. 

54.  Where  the  reissue  claim  omitted  a  fea- 
ture of  the  original  claim  and  embodied  an 
element  not  included  in  the  original  claim  and 
recited  a  specific  operation  of  the  device.  Held, 
that  the  operation  recited  was  an  obvious  one 
and  that  the  claim  of  the  reissue  was  not  for 
a  different  invention  from  that  of  the  patent. 
*Id. 

55.  In  determining  whether  a  claim  present- 
ed in  a  reissue  application  is  for  the  same  in- 
vention as  that  of  the  patent  the  same  rules 
apply  as  would  be  involved  if  the  claim  was 
presented  by  an  amendment  to  the  applica- 
tion as  originally  filed.    *Id. 


56.  Where  a  patent  describes  certain  parts 
of  a  device  as  having  a  specified  function,  a 
claim  in  an  application  for  the  reissue  of  such 
patent  which  refers  to  such  parts  as  "means" 
for  performing  a  different  function,  requir- 
ing a  relative  location  of  the  parts  which  was 
not  originally  disclosed,  relates  to  new  mat- 
ter. The  facts  that  the  reissue  application  was 
not  filed  for  about  two  years  after  the  grant 
of  the  patent  and  that  the  claim  was  not  made 
for  about  nine  months  after  the  filing  of  such 
application  strongly  indicate  that  the  claim 
was  not  suggested  by  the  original  disclo- 
sure. *In  re  Hoey,  C.  D.  1907,  127  O.  G. 
2817. 

57.  In  an  application  for  the  reissue  of  a 
patent  for  a  cigar-bunch-shaping  machine  dis- 
closing no  means  for  transporting  the  bunch 
after  it  is  formed  except  the  hand  of  the  op- 
erator claims  cannot  properly  be  allowed 
which  include  as  an  element  means  for  "trans- 
ferring" or  "transporting"  the  bunches.  *In 
re  Lacroix,  C.  D.  1908,  133  O.  G.  2181. 

58.  Claims  will  not  be  allowed  in  a  reissue 
application  which  are  not  clearly  readable 
upon  the  disclosure  of  the  patent,  and  the 
contention  that  they  cover  an  "adaptation  of 
means"  involving  "immaterial  changes"  is  of 
no  avail  where  the  patent  does  not  disclose 
the  nature  of  the  changes  or  how  the  adapta- 
tion can  be  accomplished.     *Id. 

59.  The  phrase  "same  invention"  in  section 
4916,  Revised  Statutes,  relating  to  reissues 
of  patents,  has  been  repeatedly  defined  by  the 
courts  to  mean  whatever  invention  was  de- 
scribed in  the  original  letters  patent  and  ap- 
pears therein  to  have  been  intended  to  be  se- 
cured thereby.  (Walker  on  Patents,  sec.  233.) 
By  "new  matter"  is  meant  "new  substantive 
matter,"  such  as  would  have  the  effect  of 
changing  the  invention  or  of  introducing  what 
might  be  the  subject  of  another  application 
for  a  patent.     (Powder  Co.  v.  Powder  Works, 

C.  D.  1879,  356,  15  O.  G.  289,  98  U.  S.  126; 
Parker  &  Whipple  Co.  v.  Yale  Clock  Co.,  C. 

D.  1887,  584,  41  O.  G.  811,  123  U.  S.  87;  Cor- 
bin  Cabinet  Lock  Co.  v.  Eagle  Lock  Co.,  C. 
D.  1893,  612,  65  O.  G.  1066,  150  U.  S.  38.) 
*Nelson  v.  Felsing  and  Felsing  v.  Nelson,  C. 
D.  1909,  142  O.  G.  289. 

60.  Certaiij  claims  of  G.'s  reissue  applica- 
tion, Held,  not  patentable,  for  the  reason  that 
the  invention  covered  thereby  was  not  dis- 
closed in  his  original  patent  *In  re  Gold,  C. 
D.  1910,  150  O.  G.  573. 


REISSUE.  VII,  VIII,  IX. 


507 


VII.  Inadvertance  or  Mistake. 

61.  If  by  reason  of  inadvertence  or  mistake 
in  the  drawings  or  specification  a  patent  is 
rendered  in  part  inoperative  and  the  patentee 
promptly  applies  for  a  reissue  and  no  sub- 
stantial rights  are  affected  or  fraudulent  in- 
tent charged,  the  commissioner  has  the  right, 
under  section  4916  of  the  Revised  Statutes, 
to  cause  a  new  patent  to  issue,  and  under 
such  circumstances  his  decision  is  conclusive. 
d  Beach  v.  Hobbs  et  al.,  C.  D.  1899,  87  O.  G. 
1960. 

62.  Where  a  reissue  is  refused  on  the 
ground  that  there  was  no  inadvertence,  acci- 
dent, or  mistake  in  framing  the  original 
claims,  Held,  that  the  matter  is  appealable  to 
the  examiners-in-chief  and  is  not  reviewable 
by  the  commissioner  on  petition.  Ex  parte 
McCombs,  C.   D.  190.3,  10.5  O.  G.  2057. 

63.  Where  in  preparing  a  reissue  applica- 
tion the  original  claims  of  the  patent  were 
not  included  through  inadvertence,  Held,  they 
may,  upon  a  satisfactory  showing,  be  inserted 
after  decision  by  the  examiners-in-chief  if  no 
new  examination  is  rendered  necessary.  Ex 
parte  Gilmer,  C.  D.  1904.  109  O.  G.  1337. 

64.  Failure  to  obtain  a  sufficient  claim 
through  the  failure  of  the  attorney  and  the 
inventor  to  understand  the  formulation  of 
claims  is  such  inadvertence,  accident,  or  mis- 
take as  will  sustain  reissue.  *In  re  Briede, 
C.  D.  1906,  123  O.  G.  322. 

65.  Where  a  patentee  clearly  discloses  a  pro- 
cess and  an  apparatus  for  carrying  out  the 
process  and  claims  only  the  apparatus,  the 
failure  to  claim  the  process  was  either  inten- 
tional or  the  result  of  inadvertence,  accident 
or  mistake,  for  which  section  4916,  Revised 
Statutes,  furnishes  a  remedy.  *In  re  Heroult, 
C.  D.  1907,  127  O.  G.  3217. 

66.  Applicants  usually  act  through  solicitors 
or  attorneys,  and  their  inadvertence,  accidents, 
and  mistakes,  if  such  in  fact,  are  remediable 
under  the  statute  permitting  reissue  when  it  is 
clear  that  there  is  no  fraudulent  or  deceptive 
intent  or  attempt  to  destroy  an  intervening 
right.  (In  re  Briede,  C.  D.  1906,  677,  123  O. 
G.  322,  27  App.  D.  C.  298,  301.)     *Id. 

67.  Where  a  patent  for  a  process  was  ad- 
judged invalid  for  lack  of  patentable  inven- 
tion in  that  the  process  was  not  new,  but  the 
claim  was  merely  for  the  function  of  a  ma- 
chine to  do  what  had  previously  been  done 
by  hand,  the  case  was  not  one  of  insufficiency, 
overstating,    inadvertence,    accident,    or    mis- 


take, which  would  entitle  the  patentee,  under 
the  provisions  of  section  4916,  Revised  Stat- 
utes, to  a  reissue,  with  a  claim  to  the  ma- 
chine, d  Penn  Electrical  &  Mfg.  Co.  v.  Con- 
roy,  C.   D.  1911,  167  O.  G.  243. 

68.  The  inadvertence  of  the  solicitors  of  an 
applicant  for  a  patent  is  his  inadvertence,  and, 
on  the  other  hand,  their  erroneous  judgment 
in  submitting  to  the  rejection  of  claims  is 
his  erroneous  judgment,  and  he  is  estopped 
from  presenting  any  of  such  rejected  claims  in 
an  application  for  a  reissue,  d  Moneyweight 
Scale  Co.  y.  Toledo  Computing  Scale  Co.,  C. 
D.  1911,  170  O.  G.  928. 

69.  Where  none  of  the  original  claims  pre- 
sented by  an  applicant  for  a  patent  was  ade- 
quate to  cover  the  invention  disclosed  by  the 
specification  and  drawings,  acquiescence  in 
the  rejection  of  such  claims  is  not  an  abandon- 
ment of  the  invention  as  an  entirety,  and  the 
failure  of  his  solicitors  to  submit  adequate 
claims  is  an  inadvertence  which  may  entitle 
the  applicant  to  a  reissue,    d  Id. 

VIII.  To  Correct  Error  of  Patent  Office. 

70.  The  fact  that  an  applicant  by  mistake 
directs  the  cancellation  of  certain  allowed 
claims,  and  in  consequence  a  patent  with  fewer 
claims  than  his  invention  warranted  was 
granted  him,  does  not  warrant  the  presump- 
tion that  the  mistake  was  due  to  the  fault  of 
the  office,  and  a  reissue  will  not  be  granted  on 
the  ground  that  the  mistake  was  due  to  such 
fault.  Ex  parte  Fernandez,  C.  D.  1898,  82  O. 
G.  186. 

71.  Where  through  a  mistake  by  the  office 
the  applicant's  name  is  misspelled  in  the  speci- 
fication of  the  patent  and  in  the  grant.  Held, 
that  a  reissue  to  correct  the  mistake  should  be 
granted  at  the  expense  of  the  office  and  that  a 
certificate  of  correction  indorsed  on  the  patent 
is  not  sufficient.  Ex  parte  Verge,  C  D.  1901, 
97  O.  G.  2305. 

IX.  Abstract  of  Title. 

72.  Where  an  application  for  reissue  is  not 
accompanied  by  the  abstract  of  title  required 
by  the  rule  and  that  abstract  is  subsequently 
filed.  Held,  that  the  application  will  be  given 
the  date  upon  which  the  abstract  was  filed. 
Ex  parte  Blackmore,  C.  D.  1903,  102  O.  G. 
622. 

73.  Where  all  the  parts  of  a  reissue  applica- 
tion  were   filed   in   this  office  except  the   ab- 


508 


REISSUE,  X,  XI,  XII,  XIII. 


sfract  of  title  required  by  Rule  86,  Held,  that 
the  application  cannot  be  given  a  date  of  filing 
earlier  than  the  date  on  which  the  abstract  of 
title  is  filed.  Ex  parte  Griffin,  C.  D.  1900,  83, 
91  O.  G.  2001;  Ex  parte  Powers,  C.  D.  1903, 
107  O.  G.  2531. 

74.  A  reissue  application  cannot  be  entered 
as  a  complete  application  until  the  certified 
abstract  of  title  called  for  in  Rule  86  is  fur- 
nished. Ex  parte  Powers,  C.  D.  1904,  108 
O.  G.  1053. 

X.  Assignees. 

75.  Where  an  application  for  reissue  is 
accompanied  by  the  consent  of  an  alleged  as- 
signee and  the  office  records  fail  to  show  an 
assignment.  Held,  that  this  disagreement  fur- 
nishes no  reason  for  refusing  to  accept  the  re- 
issue application.  Ex  parte  Gold,  C.  D.  1903, 
106  O.  G.  998. 

76.  Where  a  reissue  application  is  accom- 
panied by  the  consent  of  all  assignees  ap- 
pearing of  record,  Held,  that  it  is  immaterial 
that  it  includes  the  consent  of  other  alleged 
assignees,  since  there  is  no  rule  or  law  re- 
quiring all  assignments  to  be  recorded  before 
a  reissue  will  be  granted.    Id. 

77.  An  alleged  assignee  who  consents  to  a 
reissue  application  will  not  be  permitted  to 
receive  the  patent  or  take  action  in  the  case 
until  the  assignment  is  recorded  in  this  of- 
fice.    Id. 

78.  Where  an  application  for  reissue  of  a 
patent  which  has  been  assigned  was  not  ac- 
companied by  the  written  assent  of  the  assig- 
nee, but  subsequent  to  the  filing  of  the  appli- 
cation the  assignee  reassigned  to  the  inventor. 
Held,  that  the  date  of  filing  of  the  complete 
application  as  entered  upon  the  file-wrapper 
should  be  changed  from  the  date  upon  which 
the  first  papers  were  received  to  the  date  upon 
which  the  abstract  of  title  was  filed  showing 
retransfer  to  the  inventor.  Ex  parte  Pinder, 
C.  D.  1906,  123  O.  G.  2975. 

XI.  Intervening  Rights. 

79.  Where  during  contests  in  the  patent  of- 
fice a  party  discovers  defects  in  his  applica- 
tion it  is  perfectly  competent  for  him  to  cor- 
rect them  and  restate  his  claims  and  specifica- 
tions, provided  his  patent  was  not  essentially 
broadened  to  cover  intervening  devices.  Hobbs 
et  al.  V.  Beach,  C.  D.  1901,  94  O.  G.  2357. 

80.  Where  as  a  defense  the  defendant  al- 
lege rights  gained  by  manufacture  of  the  in- 


vention after  the  issue  of  the  patent  and 
during  the  delay  in  making  application  for 
reissue,  but  it  appears  that  they  were  notified 
two  weeks  after  the  issue  of  the  patent  that 
they  were  infringers  and  there  was  no  unrea- 
sonable delay  in  applying  for  reissue,  Held, 
that  there  is  no  estoppel  against  the  complain- 
ants and  that  the  defendants  must  have  known 
of  their  right  to  a  reissue,  rf  Crown  Cork  & 
Seal  Co.  of  Balto.  v.  Aluminum  Stopper  Co. 
of  Balto.  City  et  al.,  C.  D.  1901,  96  O.  G.  2573. 

81.  "It  is  well-settled  law  that  to  warrant 
the  valid  reissue  of  a  patent  there  must  not 
only  have  been  a  mistake  by  the  patentee, 
with  no  want  of  reasonable  diligence  in  its 
discovery,  but  also  that  no  third  person  has  in 
the  meantime  acquired  the  right  to  manufac- 
ture and  sell  what  the  patentee  had  failed  to 
claim.  (Coon  v.  Wilson,  113  U.  S.  268,  277; 
Farmers'  Friend  Co.  v.  Challenge  Co.,  128 
U.  S.  506,  510;  Topliff  v.  Topliff,  145  U.  S. 
156,  171.)"  *Skinner  v.  Carpenter,  C.  D.  1911, 
166  O.  G.  1281. 

82.  Testimony  considered  and  Held,  to  es- 
tablish that  between  the  grant  of  the  patent  to 
C,  the  appellee,  and  the  filing  of  his  applica- 
tion for  reissue  of  that  patent  S.,  the  appel- 
lant, had  manufactured  and  sold  devices  which 
were  not  an  infringement  of  the  patent,  but 
which  are  dominated  by  the  claims  of  the  re- 
issue application,  and  the  decision  of  the 
commissioner  of  patents  in  favor  of  C.  re- 
versed.   *Id. 

XII.  Inoperativeness. 

83.  To  justify  a  reissue  it  is  not  necessary 
that  the  patent  should  be  wholly  inoperative 
or  invalid,  and  where  there  was  an  obvious 
error  in  the  drawings  which  possibly  would 
not  have  impaired  the  patentee's  rights  under 
his  original  patent,  Held,  that  a  reissue  was 
properly  granted.  *Hobbs  et  al.  v.  Beach, 
C.  D.  1901,  94  O.  G.  2357. 

84.  Insufficiency  of  claim  is  such  inopera- 
tiveness as  will  sustain  reissue.  *In  re  Briede, 
C.  D.  1906,  123  O.  G.  322. 

XIII.  Right  to  Inspect,  Etc. 

85.  The  reasons  for  preserving  original  ap- 
plications and  caveats  in  secrecy  do  not  exist 
in  reissue  application,  as  the  reissue  applicant 
has  no  secret  invention  to  be  concealed  from 
the  public,  and  therefore  the  same  character 
of   showing  is  not   required  to  warrant   fur- 


RENEWAL  OF  FORFEITED  APPLICATIONS,  I. 


509 


nishing  copies.  In  re  New  York  Woven  Wire 
Mattress  Company,  C.  D.  1906,  121  O.  G.  688. 
86.  Where  suit  has  been  brought  against 
a  party  and  the  record  of  the  patent  in  suit 
contains  a  reference  to  a  reissue  application 
which  makes  it  necessary  to  see  the  application 
in  order  to  understand  the  views  of  the  pat- 
entee and  the  office  in  the  patent  case,  Held, 
that  the  party  is  entitled  to  obtain  copies  of 
the  file  and  contents  of  the  reissue  application. 
Id. 


RENEWAL  OF  FOEFEITED   APPLICATIONS. 

I.  In  General. 
II.  Second  Application  for  Renewal. 

I.  In  General. 

1.  The  petition  for  the  renewal  of  a  for- 
feited application  cannot  properly  be  signed 
by  the  attorney  for  the  applicant,  but  only  by 
the  inventor,  discoverer,  or  assignee.  Ex 
parte  Thomas,  C.  D.  1900.  92  O.  G.  1035. 

2.  Although  it  is  claimed  that  the  practice 
of  the  office  for  many  years  has  been  to  re- 
ceive as  sufficient  petitions  for  renewals  sign- 
ed by  the  attorneys  who  presented  the  original 
application,  Held,  that  there  is  no  authority 
of  law  for  the  practice.  Antiquity  of  prac- 
tice cannot  justify  an  illegal  act.     Id. 

3.  The  law  designates  other  officials  than 
the  commissioner  of  patents  who  are  author- 
ized to  receive  patent  fees.  A  certificate  of 
deposit  indicates  the  payment  of  the  fee,  but 
cannot  be  considered  as  a  petition.  Ex  parte 
Barri,  C.  D.  1901,  97  O.  G.  1176. 

4.  A  petition  for  the  renewal  of  an  allowed 
application  forfeited  through  failure  to  pay 
the  final  fee  within  si.x  months  from  the  date 
of  allowance  is  required  by  law  to  be  signed 
by  the  inventor,  or  if  the  inventor  be  dead  by 
the  administrator  or  executor,  or  if  the  in- 
ventor be  insane  by  the  guardian,  conservator, 
or  legal  representative,  and  it  must  be  depos- 
ited with  the  commissioner  of  patents.    Id. 

5.  Where  a  certificate  of  deposit  with  a 
petition  for  renewal  was  filed  in  the  patent 
office  more  than  two  years  after  the  notice 
of  allowance  was  mailed  and  the  date  of  the 
certificate  of  deposit  shows  that  the  fee  was 

deposited  in  a  government  depository,  as 
authorized  by  law,  before  the  expiration  of 
said  two  years,  Held,  that  the  petition  for  re- 


newal was  filed  too  late  and  that  it  must  be 
refused.    Id. 

6.  Where  an  alleged  assignee  asks  to  be 
allowed  to  renew  a  forfeited  application  and 
files  a  copy  of  the  alleged  assignment  saying 
that  the  original  is  lost  and  the  inventor  pro- 
tests saying  that  no  valid  assignment  has  been 
made,  Held,  that  the  request  must  be  denied. 
Ex  parte  Turner,  C.  D.  1902,  100  O.  G.  2603. 

7.  A  petition  for  the  renewal  of  a  forfeited 
application  need  not  be  signed  by  the  inventor 
or  assignee,  but  may  be  signed  by  the  attor- 
ney. Ex  parte  Thomas,  C.  D.  1900,  116,  92 
O.  G.  103.5,  and  Ex  parte  Barri,  C.  D.  1901, 
117,  97  O.  G.  1176,  overruled.  Ex  parte  Agee, 
C.  D.  1902,  101  O.  G.  1609. 

8.  Section  4897,  Revised  Statutes,  providing 
that  any  one  having  an  interest  in  the  inven- 
tion may  renew  a  forfeited  application  does 
not  state  that  the  petition  for  such  renewal 
must  be  signed  personally  by  the  party  ex- 
ercising the  right,  and  therefore  under  the 
general  rule  of  agency  he  may  delegate  the 
right  to  sign  the  petition  to  his  attorney.     Id. 

9.  An  allowed  application  cannot  be  renew- 
ed prior  to  the  expiration  of  the  six  months 
within  which  the  final  fee  must  be  paid.  Ex 
parte  Schultz,  C.  D.  1904,  111  O.  G.  2494. 

10.  The  waiver  of  right  to  pay  a  final  fee 
does  not  operate  to  forfeit  an  application 
so  as  to  warrant  the  renewal  of  the  same  be- 
fore the  expiration  of  the  statutory  period  of 
six  months  within  which  the  final  fee  must  be 
paid.    Id. 

11.  Under  section  4897,  Revised  Statutes, 
relating  to  the  renewal  of  forfeited  applica- 
tions, providing  that  "upon  the  hearing  of 
renewed  applications  preferred  under  this  sec- 
tion, abandonment  shall  be  considered  as  a 
question  of  fact."  the  question  of  abandon- 
ment is  one  to  be  determined  upon  proof  of 
the  facts  and  circumstances  and  will  not  be 
presumed  from  laches  in  filing  the  renewal 
application,  although  it  may  be  within  the 
power  of  the  commissioner,  whenever  he  en- 
tertains a  doubt  as  to  whether  there  has  been 
abandonment,  to  require  an  explanation  of  the 
delay.  *Cutler  v.  Leonard,  C.  D.  1908,  136  O. 
G.  438. 

12.  A  forfeited  application  may,  under  the 
provisions  of  section  4897,  be  renewed  at  any 
time  within  two  years  from  the  date  of  the 
notice  of  allowance ;  but  the  commissioner 
has  no  authority  to  extend  that  period.  Ex 
parte  Myers,  C.  D.  1911,  165  O.  G.  971. 


510 


REOPENING  CASES  IN  PATENT  OFFICE,  I,  II. 


II.  Second  Atplication   for   Re.newal. 

13.  The  practice  of  the  patent  office  in  re- 
fusing to  entertain  a  second  renewal  applica- 
tion is  founded  upon  opinions  of  the  Attor- 
ney-General and  will  not  be  departed  from 
until  such  opinions  are  withdrawn  by  the 
Attorney-General  or  overruled  by  the  courts. 
Ex  parte  Theodor  and  Carl  Weil,  C.  D.  1906, 
122  O.  G.  352. 

14.  The  provision  of  section  4897,  Revised 
Statutes,  relating  to  the  renewal  of  forfeited 
applications  that  "such  second  application 
must  be  made  within  two  years  after  the  al- 
lowance of  the  original  application"  construed 
and  Held,  not  to  prohibit  the  filing  of  a  sec- 
ond renewal  application  within  two  years  after 
the  allowance  of  the  original  application.  Ex 
parte  Lambert,  C.  D.  1908,  135  O.  G.  1.581. 

15.  The  practice  which  prevailed  prior  to 
1894  of  allowing  more  than  one  renewal  of  a 
forfeited  application,  providing  it  was  made 
within  two  years  following  the  date  of  allow- 
ance of  the  original  application,  is  restored, 
but  it  is  not  to  be  construed  as  in  any  way 
retroactive.     Id. 

16.  No  appeal  lies  to  the  Secretary  of  the 
Interior  from  a  refusal  of  the  commissioner 
of  patents  to  accept  a  second  renewal  appli- 
cation. The  question  raised  being  one  of  a 
judicial  or  quasi-judicial  character,  the  rem- 
edy, if  there  be  one,  lies  in  appeal  to  the 
courts.  (Butterworth,  Commissioner  of  Pat- 
ents v.  U.  S.  ex  rel.  Hoe  et  al.,  C.  D.  1884, 
429,  29  O.  G.  615,  112  U.  S.  501;  Poole  v. 
Avery,  C.  D.  1899,  255,  87  O.  G.  357,  14  Asst. 
Atty.  General's  Opinion,  501.)  tin  re  Lam- 
bert, C.  D.  1908,  135  O.  G.  1584. 

17.  An  opinion  of  an  assistant  attorney-gen- 
eral for  the  interior  department  relating  to 
the  right  to  file  a  second  renewal  application 
rendered  upon  request  of  the  commissioner 
of  patents.  Held,  to  be  merely  advisory  in 
nature,  and  the  commissioner  might  properly 
have  disregarded  the  same  had  he  desired, 
and  should  now  disregard  the  same  if  in  his 
opinion  it  was  in  error,    fid- 

18.  The  mere  filing  of  a  fee  with  an  assist- 
ant treasurer  of  the  United  States  does  not 
constitute  a  "second  application"  within  the 
meaning  of  section  4897,  Revised  Statutes, 
and  the  office  has  no  authority  to  accept  such 
a  fee  where  the  petition  was  not  filed  within 
the  statutory  period.  Ex  parte  Hardinge,  C 
D.  1910,  159  O.  G.  241. 


EEOPENING   CASES  IN  PATENT   OFFICE. 

(See   Interference,    Reinstatement  or   Re- 
opening. 

I.  In  General. 
11.  Reopened. 
III.  Not  Reopened. 

I.  In  General. 

1.  A  petition  to  reopen  a  case  considered 
and  disposed  of  on  appeal  will  not  be  set  down 
for  hearing,  but  will  be  decided  upon  the 
record.  Ex  parte  Borton  et  al.,  C.  D.  1903, 
104  O.  G.  851. 

2.  Cases  will  not  be  reopened  for  amend- 
ment after  appeal  except  under  unusual  cir- 
cumstances where  the  interests  of  justice 
plainly  demand  it.  Ex  parte  Lesler.  C.  D. 
1905,  117  O.  G.  2631. 

II.  Reopened. 

3.  Where  the  examiners-in-chief  refused  to 
consider  claims  rejected  by  the  primary  ex- 
aminer and  appealed  to  them  on  the  ground 
that  the  examiner  had  no  authority  to  reopen 
the  case  after  a  decision  by  the  commissioner 
on  the  merits,  and  therefore  that  the  exam- 
iners-in-chief are  without  jurisdiction  to  con- 
sider the  claims  rejected  by  the  examiner. 
Held,  that  the  record  shows  that  the  case  was 
reopened  by  the  assistant  commissioner  under 
Rule  142  and  when  so  reopened  it  was  re- 
opened for  all  purposes — for  the  presentation 
of  such  claims  as  the  applicant  saw  fit  to 
offer  and  for  consideration  and  re-examina- 
tion by  the  examiner  de  itoi'o,  just  as  was 
done.  The  examiner  did  not  exceed  his  au- 
thority, but  acted  within  the  practice  and 
clear  intent  of  the  assistant  commissioner's 
decision.  The  examiner  having  the  second 
time  rejected  certain  claims,  and  appeal  hav- 
ing been  taken  to  the  examiners-in-chief,  the 
case  was  within  their  jurisdiction  and  they 
should  have  considered  the  appealed  claims 
on  their  merits.  Ex  parte  Lynch  and  Hough, 
C.  D.  1898,  83  O.  G.  1209. 

4.  An  additional  reference  cited  after  final 
rejection  in  effect  reopens  a  case.  Ex  parte 
Horstick,  C.  D.  1898,  84  O.  G.  981. 

5.  Where  after  a  final  rejection  of  the 
claims  the  examiner  in  response  to  an  argu- 
ment calls  attention  to  new  references  as 
showing  features  referred  to  therein,  Held, 
that  the  citation  of  such  references  amounts 


REOPENING  CASES  IN  PATENT  OFFICE,  III. 


511 


to  a  reopening  of  the  case  and  that  the  appli- 
cant is  entitled  to  amend.  Ex  parte  Lawton, 
C.  D.  1901,  97  O.  G.  187. 

6.  Upon  petition  to  the  commissioner  the 
application  may  be  reopened  upon  a  satis- 
factory showing  after  decision  by  the  exam- 
iners-in-chief. Ex  parte  Gilmer,  C.  D.  1904, 
109  O.  G.  1337. 

7.  Where  the  examiners-in-chief  overruled 
all  grounds  of  rejection  given  by  the  exam- 
iner save  one  and  relied  upon  a  single  refer- 
ence, which  the  applicant  wishes  to  overcome 
by  an  affidavit  under  Rule  75,  Held,  that  the 
case  will  be  reopened  to  permit  the  filing  of 
the  affidavit.  Ex  parte  Parrish,  C.  D.  190.5, 
115  O.  G.  1327. 

8.  Where  the  examiner  rejects  claims  in 
accordance  with  the  recommendation  of  the 
examiners-in-chief,  the  case  is  reopened  to 
the  extent  that  applicant  is  entitled  to  amend 
these  claims  to  avoid,  if  possible,  the  ground 
of  rejection  or  to  present  a  claim  or  claims  in 
lieu  thereof  directed  to  the  same  subject  mat- 
ter. Ex  parte  Dietrich,  C.  D.  1909,  82,  142 
O.  G.  568,  Ex  parte  Shaw,  C.  D.  1910,  157 
O.  G.  1243. 

III.  Not  Reopened. 

9.  Where  the  invention  and  the  references 
are  simple  and  easily  understood  and  where 
the  examiner  has  made  his  position  with 
reference  to  the  claims  and  the  entire  inven- 
tion perfectly  clear  and  the  applicant  has 
had  ample  opportunity  for  amendment,  Held, 
that  to  reopen  the  case  for  further  considera- 
tion would  serve  no  useful  purpose.  Ex  parte 
Rider,  C.  D.  1898,  85  O.  G.  1078. 

10.  Where  the  claims  of  an  application  have 
been  finally  rejected  and  the  applicant  has 
taken  and  prosecuted  an  appeal  to  the  exam- 
iners-in-chief, it  is  too  late  to  raise  the  ques- 
tion whether  the  examiner  in  his  rejections 
fully  explained  the  pertinency  of  the  refer- 
ences. Ex  parte  Hardie,  C.  D.  1899,  86  O.  G. 
181. 

11.  While  the  office  is  disposed  to  assist  ap- 
plicants unfamiliar  with  the  practice  in  bring- 
ing out  the  patentable  novelty  in  their  cases, 
it  will  not  go  to  the  extent  of  reopening  cases 
after  decision  by  the  examiners-in-chief  mere- 
ly for  the  purpose  of  further  amendment.     Id. 

12.  Where  the  claims  in  a  case  were  prop- 
erly finally  rejected  and  the  applicant  there- 
after sought  to  amend  and  as  a  reason  for 
not    amending    earlier    alleged    that    prior    to 


final  rejection  he  did  not  appreciate  the  value 
and  importance  of  certain  features  of  the  in- 
vention. Held,  that  the  showing  does  not  war- 
rant reopening  the  case  for  further  prosecu- 
tion before  the  examiner.  Ex  parte  Beckwith, 
C.  D.  1901,  95  O.  G.  1451. 

13.  If  a  party  fails  to  appreciate  and  under- 
stand the  important  features  of  the  invention 
and  makes  a  supposed  error  in  judgment  as 
to  the  manner  in  which  it  should  be  claimed. 
Held,  that  he  should  bear  the  consequences 
and  that  this  office  should  not  be  forced  to 
bear  them  by  making  a  re-examination  of  the 
case.     Id. 

14.  Where  on  appeal  the  commissioner  has 
affirmed  the  decision  of  the  examiners-in-chief 
affirming  the  rejection  by  the  examiner  of 
the  claims  in  an  application  for  a  patent.  Held, 
that  the  application  will  not  be  reopened  for 
further  consideration  by  the  examiner  in  the 
absence  of  any  showing  to  excuse  the  delay 
in  bringing  the  petition  to  reopen,  and  where 
no  showing  is  made  of  great  hardship  or  ir- 
reparable injury  to  the  applicant  in  case  this 
application  is  not  reopened.  Ex  parte  Harri- 
son, C.  D.  1902,  100  O.  G.  3013. 

15.  A  case  will  not  be  reopened  after  final 
rejection  for  the  purpose  of  further  explana- 
tion of  the  references  where  there  was  noth- 
ing about  the  applicant's  prior  communica- 
tions to  indicate  that  such  explanation  was 
necessary.  Ex  parte  Sorenson,  C.  D.  1902, 
98  O.  G.  41.5. 

16.  Where  the  claims  in  a  case  were  prop- 
erly finally  rejected  and  the  applicant  there- 
after sought  to  amend  and  as  a  reason  for 
not  amending  earlier  alleged  that  prior  to 
final  rejection  he  had  been  intent  in  framing 
claims  upon  a  different  view  of  the  invention 
and  references  and  because  the  view  of  the 
invention  contained  in  the  amended  claims 
did  not  then  present  itself,  Held,  that  the 
showing  does  not  warrant  reopening  the  case 
for  further  prosecution  before  the  examiner. 
(Citing  Ex  parte  Beckwith,  C.  D.  1901,  43, 
95  O.  G.  1451.)  Ex  parte  Raymond,  C.  D. 
1902,  99  O.  G.  1386. 

17.Where  it  is  requested  that  a  design  case 
be  reopened  for  amendment  after  a  decision 
by  the  examiners-in-chief  because  of  the 
change  in  the  design  law.  Held,  that  since 
the  change  in  the  wording  of  the  law  did  not 
change  its  meaning  it  furnishes  no  good  rea- 
son for  reopening  the  case.  Ex  parte  Han* 
son,  C.  D.  1903,  103  O.  G.  1417. 


512 


REOPENING  CASES  IN  PATENT  OFFICE.  III. 


18.  There  must  be  an  end  to  the  prosecu- 
tion of  an  application  at  some  time,  and  after 
a  case  has  been  prosecuted  through  the  ap- 
pellate tribunals  the  applicant  cannot  demand 
that  it  be  reopened  for  further  amendment. 
Ex  parte  Borton  et  al.,  C.  D.  1903,  104  O.  G. 
851. 

19.  There  must  be  some  stability  to  deci- 
sions of  this  office,  and  a  case  will  not  be  re- 
opened for  the  purpose  of  appeal  after  the 
limit  for  appeal  has  expired  except  under 
very  unusual  circumstances.  Briggs  v.  Con- 
ley,  C.  D.  1903,  104  O.  G.  1119. 

20.  A  party  is  not  entitled  to  conduct  his 
case  experimentally  to  a  final  adverse  deci- 
sion and  then  have  it  reopened  for  prosecu- 
tion upon  a  new  line.  Ex  parte  Starkey,  C.  D. 
1903.  105  O.  G.  745. 

21.  Where  it  appears  that  an  applicant  has 
had  ample  opportunity  to  prosecute  an  appli- 
cation before  it  was  finally  rejected.  Held, 
that  the  application  will  not  be  reopened,  as 
it  is  not  just  to  the  applicants  whose  applica- 
tions are  awaiting  action  to  reopen  it  for 
consideration  of  amendments  which  should 
have  been  earlier  presented.  Ex  parte  Brown, 
C.  D.  1903,  107  O.  G.  269. 

22.  A  case  will  not  be  reopened  for  amend- 
ment after  decision  upon  appeal  merely  upon 
the  suggestion  by  the  applicant  that  the  pro- 
posed claims  are  patentable  when  no  tribunal 
of  the  office  has  recommended  that  such  claims 
be  allowed.  Ex  parte  Bourne,  C.  D.  1904, 
110  O.  G.  2510. 

23.  The  mere  cancelation  of  the  finally  re- 
jected claims  does  not  reopen  the  case  for  the 
prosecution  of  other  claims.  Ex  parte  Almy, 
C.  D.  1905,  115  O.  G.  1584. 

24.  The  final  rejection  of  claims  does  not 
merely  close  the  consideration  of  those  claims, 
but  closes  the  consideration  of  the  case  upon 
its  merits.  Ex  parte  Casselman,  C.  D.  1905, 
116  O.  G.  2012. 

25.  A  case  will  not  be  reopened  to  consider 
new  claims  after  appeal  because  of  the  con- 
tention that  the  examiners-in-chief  would 
have  considered  them  allowable  if  they  had 
been  before  them.  If  the  examiners-in-chief 
had  thought  an  amendment  of  the  claims  nec- 
essary, it  is  to  be  presumed  that  they  would 
have  so  recommended.  Ex  parte  East,  C.  D. 
1905,  116  O.  G.   1186. 

26.  After  appeal  to  the  examiners-in-chief 
an  application  will  not  be  reopened  for  the 
consideration  of  claims  which  require  a  re- 
examination merely  because  the  applicant  has 


concluded  that  he  wishes  to  present  such 
claims.  Ex  parte  Merrill,  C.  D.  1905,  116  O. 
G.  1186. 

27.  Where  the  applicant  cancels  finally  re- 
jected claims  and  the  examiner  thereafter  re- 
quires an  amendment  to  the  specification, 
Held,  that  the  case  is  not  reopened  for  action 
on  the  merits,  and  the  applicant  is  not  en- 
titled to  present  new  claims.  Ex  parte  Cassel- 
man, C.  D.  1905,  116  O.  G.  2012. 

28.  A  case  will  not  be  reopened  for  amend- 
ment and  reconsideration  merely  because  the 
applicant  has  concluded  that  amendment  is 
necessary  or  advisable.  Ex  parte  Marks,  C. 
D.   1905,  118   O.   G.   2253. 

29.  Where  applicants  contend  that  their  ap- 
plication should  be  reopened  for  the  reason 
that  in  the  answer  to  their  bill  in  equity  new 
references  were  cited.  Held,  that  any  right 
to  amend  which  may  have  arisen  in  the  appli- 
cations by  reason  of  the  citation  of  the  new 
references  has  been  lost  through  the  prosecu- 
tion of  the  suit  to  a  final  determination  with- 
out asserting  said  right.  Ex  parte  Millett  and 
Reed,  C.  D.  1906,  125  O.  G.  2764. 

30.  The  practice  of  requiring  any  amend- 
ment desired  in  view  of  newly-cited  refer- 
ences to  be  brought  upon  the  citation  of  these 
references  and  before  further  prosecution  of 
the  case  will  generally  result  in  a  speedier 
final  determination  of  the  case  and  is  in  the 
interest  of  the  public.    Id. 

31.  Where  antedating  affidavits  under  Rule 
75  to  overcome  one  of  several  references  are 
filed  after  final  rejection  and  in  refusing  con- 
sideration to  such  affidavits  the  examiner 
states  that  the  rejection  could  be  sustained 
on  the  references  other  than  the  one  attempt- 
ed to  be  overcome.  Held,  that  this  statement 
of  the  examiner  is  not  a  statement  of  new 
reasons  for  rejection  and  does  not  operate 
to  open  the  case.  Ex  parte  Berg,  C.  D.  1906, 
120  O.  G.  903. 

32.  Where  affidavits  are  presented  after 
final  rejection  of  the  claims  and  decision  by 
the  examiners-in-chief  on  appeal  purporting 
to  show  that  the  rejection  of  the  claims  was 
improper  and  it  is  alleged  that  the  affidavits 
are  based  upon  experiments  made  after  the 
decision  of  the  examiners-in-chief,  Held,  that 
the  experiments  should  have  been  made  and 
the  affidavits  filed  before  the  case  was  closed 
before  the  primary  examiner  and  that  the 
affidavits  would  not  be  admitted.  Ex  parte 
Richmond,  C.  D.  1906.  120  O.  G.  905. 


REPAIR  OF  PATENTED  MACHINES. 


513 


33.  Where  the  party  fails  to  make  his  dem- 
onstration and  to  submit  his  evidence  in  re- 
sponse to  the  original  rejection  before  prose- 
cuting his  case  to  final  rejection,  the  case 
will  not  thereafter  be  reopened  except  upon 
showing  of  good  and  sufficient  reasons  why 
the  evidence  whose  admission  is  sought  was 
not  earlier  presented.     Id. 

34.  After  an  appeal  to  the  court  of  appeals 
of  the  District  of  Columbia  refusing  the  al- 
lowance of  certain  claims,  a  case  will  not  be 
reopened  for  the  consideration  of  additional 
claims  except  under  unusual  circumstances, 
and  the  allegation  that  the  interpretation  put 
upon  a  certain  term  in  the  appealed  claims  by 
the  tribunals  of  the  patent  office  and  by  the 
court  was  not  contemplated  by  applicant  when 
the  claims  were  made,  is  not  such  an  unusual 
circumstance  as  is  contemplated  by  the  prac- 
tice. Ex  parte  Milans,  C.  D.  1908,  133  O.  G. 
1122. 

35.  Where  the  claims  in  an  application  are 
finally  rejected  after  a  full  prosecution  by  the 
applicant  and  a  clear  issue  has  been  reached 
between  the  applicant  and  the  primary  ex- 
aminer, the  case  will  not  be  reopened  for 
further  prosecution.  Ex  parte  Litchfield,  C. 
D.   1908.  137  O.  G.   1942. 

36.  An  inventor  is  presumed  to  know  the 
essence  of  his  invention  before  it  is  filed,  cer- 
tainly before  it  has  been  prosecuted  through 
an  appeal,  and  the  mere  statement  that  a  cer- 
tain feature  has  been  found  to  be  important 
is  not  a  showing  of  sufficient  cause  to  justify 
reopening  the  case  to  admit  new  claims.  Ex 
parte  Wagner,  C.  D.  1909,  149  O.  G.  831. 

37.  Where  one  petition  for  the  entry  of 
an  amendment  for  the  purposes  of  appeal  or 
for  reconsideration  of  the  merits,  at  the  dis- 
cretion of  the  examiner,  has  been  granted 
and  the  examiner  in  entering  the  amendment 
indicates  that  it  is  done  for  the  purpose  of 
appeal.  Held,  that  the  applicant  is  not  in  a 
position  to  urge  that  the  case  was  reopened 
for  the  consideration  of  new  claims  and  that 
a  further  amendment  containing  such  claims 
was  properly  refused  entry.  E.\  parte  Wright, 
C.  D.  1909,  14.5  O.  G.  513. 

38.  Where  the  claims  in  a  case  were  prop- 
erly finally  rejected  and  it  was  thereafter 
sought  to  amend  and  as  a  reason  for  not 
amending  earlier  it  was  alleged  that  the  ap- 
plicant, who  was  a  foreigner,  was  not  suffi- 
ciently familiar  with  the  patent  practice  of  the 
United  States  to  fully  appreciate  the  scope 
of   the   claims   originally   presented   and   that 

33 


the  attorney  was  not  informed  until  after  the 
final  rejection  that  the  subject-matter  of  the 
proposed  claims  was  an  important  part  of 
the  invention,  Held,  that  the  showing  does  not 
warrant  reopening  the  case  for  further  pros- 
ecution before  the  examiner.  Ex  parte  Seis- 
ser,  C.  D.  1909,  146  O.  G.  719. 


REPAIR  OF  PATENTED  MACHINES. 

1.  The  right  of  the  purchaser  of  a  patented 
machine  does  not  extend  to  its  rebuilding,  so 
as  to  make  a  practically  new  machine,  and 
such  rebuilding  constitutes  an  infringement. 
♦Pacific  Steam  Whaling  Company  et  al.  v. 
Alaska  Packers'  Association,  C.  D.  1900,  91 
O.  G.  1803. 


RES  ADJTTDICATA. 

1.  Claimant  filed  a  petition  in  the  court  of 
claims  for  royalty  upon  cartridges  and  primers 
alleged    to    have    been    manufactured    by    the 
United  States  under  his  patent.     The  petition 
was  dismissed.     A  motion  for  new  trial  was 
filed  by  claimant  and  was  also  dismissed.    Ap- 
plication for  appeal  was  filed ;  but  appeal  was 
not  allowed.    A  second  petition  was  filed  after 
the  first  petition  had  been  dismissed  and  was 
based   upon  the  same  patent   involved  in  the 
first    petition.      This    petition    was    also    dis- 
missed by  the  court  of  claims.     Appeal  from 
this  judgment  was  taken  to  the  supreme  court. 
The  defense  was  that  of  res  adjudicata.   Held, 
that   even  if  a  somewhat  different  theory  or 
state  of  facts  were  developed  upon  the  trial 
of   the   second   petition   the   judgment    in   the 
former  petition  would  not  operate  the  less  as 
an   estoppel,   since  the  patentee   cannot  bring 
suit  against  an  infringer  upon  a  certain  state 
of   facts  and  after  a  dismissal  of  his  action 
bring    another    suit    against    the    same    party 
upon  the  same  state  of  facts  and  recover  upon 
a  different  theory.     The  judgment  in  the  first 
action  is  a  complete  estoppel  in  favor  of  the 
successful  party  in  a  subsequent  action  upon 
the   same   state   of    facts.      (Walk,    on    Pats., 
sec.  468;  Duboise  v.  Railway  Co.,  5  Fish.  200; 
Bradley  Mfg.  Co.   v.  Eagle  Mfg.  Co.,  C.  D. 
1894,   121,   66   O.   G.   315,   57   Fed.    Rep.   989.) 
•Hubbell  v.  The   United    States,   C.   D.   1898, 
83  O.  G.  1661. 

2.  Where  an  applicant  appealed  to  the 
court  of  appeals  from  the  decision  of  the 
commissioner  of  patents,  holding  that  his  in- 


514 


RES  ADJUDICATA. 


vention  was  without  patentable  novelty,  and 
the  court  sustained  the  decision  of  the  com- 
missioner and  suggested  to  applicant  to  file  a 
bill  in  equity,  and  applicant  instead  of  follow- 
ing the  suggestion  filed  a  new  application  for 
the  same  matter  that  was  in  the  first  applica- 
tion, Held,  on  appeal  to  the  court  on  the  sec- 
ond application,  that  the  question  of  patent- 
able novelty  will  not  be  again  passed  upon, 
as  that  question  is  res  adjudicaia.  *Barratt 
V.  Duell,  Commissioner  of  Patents,  C.  D. 
1899,  87  O.  G.  1075. 

3.  When  an  application  for  patent  is  after 
due  examination  rejected  and  finally  deter- 
mined against  the  applicant  after  exhaustion 
of  the  right  of  appeal  allowed  to  him,  Held. 
that  it  is  not  incumbent  upon  the  patent  office 
as  a  duty  to  entertain  such  second  applica- 
tion, and  that  if  the  commissioner  refuses  to 
entertain  it  he  has  a  perfect  legal  right  to  do 
so.    *Id. 

4.  There  is  no  provision  of  law  for  a  sec- 
ond application  where  a  previous  application 
has  been  adjudicated  and  a  patent  denied. 
The  absence  of  such  a  provision  is  sufficient 
evidence  that  the  right  to  have  a  second  ap- 
plication considered  after  the  refusal  of  a 
patent  upon  a  previous  application  does  not 
exist.     *Id. 

5.  While  the  rules  that  govern  the  finality 
and  conclusiveness  of  adjudication  at  the 
common  law  do  not  apply  in  the  strict  sense 
to  administrative  or  quasi-judicial  actions  in 
the  executive  departments  of  the  government, 
yet  in  such  actions  as  well  as  in  judicial  pro- 
ceedings it  is  both  expedient  and  necessary 
that  there  should  be  an  end  to  controversy. 
*Id. 

6.  Where  in  a  court  of  law  there  has  been 
one  investigation  and  one  adjudication,  such 
action  becomes  final  and  can  only  be  re- 
viewed, if  at  all,  by  way  of  appeal.  Subse- 
quent suit  for  the  same  subject-matter  and 
between  the  same  parties  cannot  be  sustained, 
and  there  is  no  good  reason  why  the  course 
of  procedure  should  be  different  in  the  patent 
office.    *Id. 

7.  Where  an  application  for  patent  was  re- 
jected by  each  tribunal  of  the  patent  office  and 
the  applicant  filed  a  new  application  without 
substantial  change,  Held,  that  the  subordinate 
tribunals  were  right  in  declaring  the  question 
of  patentability  res  adjudicaia.  (Barratt  v. 
Duell,  Commissioner  of  Patents,  C.  D.  1899, 
320,   87   O.   G.   1075,   cited.)     *Fay   v.   Duell, 


Commissioner  of   Patents,   C.  D.   1900,  90  O. 
G.  1157. 

8.  While  a  liberal  right  of  filing  a  new  ap- 
plication in  place  of  one  rejected  has  been 
recognized  by  the  supreme  court  in  the  cases 
where  the  commissioner  of  patents  has  recon- 
sidered his  former  grounds  of  rejection  and 
issued  a  patent,  yet  it  does  not  follow  that  the 
doctrine  of  res  adjudicaia  may  not  be  applied 
to  such  new  application  in  the  discretion  of 
the  commissioner.  It  is  as  much  to  the  pub- 
lic interest  that  there  should  be  an  end  of 
litigation  in  the  tribunals  of  the  patent  office 
as  in  others.    *Id. 

9.  Where  it  is  contended  that  the  issue  of 
the  interference  is  substantially  the  same  as 
a  previous  issue  which  was  held  to  be  unpat- 
entable and  that  therefore  the  question  of 
patentability  is  res  adjudicaia,  but  it  appears 
that  the  issues  are  not  the  same  and  the  ex- 
aminer regards  the  differences  as  lending  pat- 
entability to  the  second  issue.  Held,  that  the 
matter  is  not  res  adjudicaia.  Kitsee  v.  Rob- 
ertson, C.  D.   1901,  97  O.  G.  2306. 

10.  Where  one  of  two  defendants  was  on 
its  own  application  dismissed  from  a  suit  be- 
cause of  a  want  of  jurisdiction  over  it,  the 
dismissal  being  made  without  prejudice.  Held, 
that  it  can  not  plead  the  judgment  rendered 
as  res  adjudicaia  on  the  ground  that  it  de- 
frayed the  costs  of  the  defense  without  show- 
ing clearly  that  this  fact  was  known  to  the 
plaintiff,  d  Singer  Manufacturing  Company 
V.  Cramer,  C.  D.  1901,  97  O.  G.  552. 

11.  Where  an  applicant  presents  claims 
which  the  examiner  holds  are  substantially  the 
same  as  claims  rejected  by  the  commissioner 
in  a  prior  application.  Held,  that  he  should 
reject  the  claims  on  the  ground  that  the  ques- 
tion as  to  their  patentability  is  res  adjudicaia. 
Ex  parte  Kenney,  C.  D.  1905,  118  O.  G.  2253. 

12.  The  doctrine  of  res  adjudicaia,  or  estop- 
pel by  former  judgment,  has  been  thus  de- 
clared by  the  Supreme  Court  of  the  United 
States:  "When  the  second  suit  is  upon  the 
same  cause  of  action  and  between  the  same 
parties  as  the  first,  the  judgment  in  the  form- 
er is  conclusive  in  the  latter  as  to  every  ques- 
tion which  was  or  might  have  been  presented 
and  determined  in  the  first  action ;  but  when 
the  second  suit  is  upon  a  different  cause  of 
action,  though  between  the  same  parties,  the 
judgment  in  the  former  action  operates  as  an 
estoppel  only  as  to  the  point  or  question  ac- 
tually litigated  and  determined,  and  not  as 
to  other  matters  which  might  have  been   liti- 


RULES  OF  PRACTICE— SIGNATURES. 


515 


gated  and  determined."  (Nesbic  v.  Riverside 
Independent  District,  144  U.  S.  610,  618;  New 
Orleans  v.  Citizen's  Bank,  167  U.  S.  371,  386; 
S.  P.  R.  R.  V.  U.  S.,  168  U.  S.  1,  48)  and  the 
doctrine  as  thus  laid  down  is  applicable  to 
adjudications  made  in  the  patent  office. 
♦Blackford  v.  Wilder,  C.  D.  1907,  127  O.  G. 
1255. 


Secretary  of  the  Interior.     *Mell  v.  Midgley, 
C.  D.  1908,  136  O.  G.  1534. 

7.  All  rules  of  the  patent  office  which  are 
authorized  by  law  have  the  force  of  law  and 
control  procedure  in  that  office.  *Broadwell 
V.  Long,  C.  D.  1911,  164  O.  G.  2.52. 


RULES  OF  PKACTICE—VALIDITT,  ETC. 

1.  It  is  a  well-settled  principle  that  enact- 
ments which  are  remedial  in  their  nature  and 
which  impair  no  vested  rights  or  the  obliga- 
tions of  a  contract  are  retroactive.  Ex  parte 
Farquhar  et  al.,  C.  D.  1899,  89  O.  G.  706. 

2.  The  Rules  of  Practice  are  authority  for 
applying  amended  Rule  41  to  applications  filed 
prior  to  its  promulgation.  Rule  42  provides 
that  it  is  within  the  discretion  of  the  primary 
examiner  to  require  division  at  any  time  be- 
fore final  action  on  the  case.  Under  this  rule 
it  matters  not  whether  the  claims  have  been 
considered  on  the  merits  before  requiring  di- 
vision.    Id. 

3.  A  practice  established  in  the  patent  office 
by  commissioners  who  were  able  and  experi- 
enced patent  lawyers  should  not  after  remain- 
ing in  force  for  many  years  be  disturbed  by 
the  court  except  upon  the  clearest  principle 
of  right  and  necessity.  *United  States,  ex 
rel.  Steinmetz  v.  Allen,  Commissioner  of  Pat- 
ents, C.  D.  1903,  104  O.  G.  853. 

4.  Rules  of  the  patent  office  which  are  not 
inconsistent  with  the  express  provisions  of  the 
statutes  are  valid  and  have  the  force  and  ef- 
fect of  law  in  all  matters  to  which  they  relate. 
They  are  not  to  be  declared  invalid  upon  con- 
sideration of  doubtful  construction,  but  only 
where  conflict  with  the  law  is  made  plainly 
to  appear.     *Id. 

5.  Rules  41,  42,  133,  134,  and  145  considered 
and  Held,  that  they  cannot  upon  any  fair  and 
reasonable  construction  be  regarded  as  incon- 
sistent with  the  statutes  relating  to  the  patent 
system.    *Id. 

6.  The  Rules  of  Practice  in  the  patent  office 
when  not  in  conflict  with  law  have  the  full 
force  and  effect  of  statutes.  As  the  approval 
of  such  rules  by  the  Secretary  of  the  In- 
terior is  necessary  to  the  adoption  and  es- 
tablishment of  such  rules,  the  contrary  is  true 
that  where  a  rule  of  procedure  is  in  force 
it  can  only  be  repealed,  modified,  or  suspended 
by  the  commissioner  with  the  approval  of  the 


SIGNATURES. 

1.  When  the  signatures  appear  on  a  sheet 
of  drawings  in  the  wrong  place,  upon  filing  a 
blue-print  of  the  original  sheet  the  signatures 
may  be  erased  and  written  correctly  thereon 
by  the  identical  people,  if  the  same  can  be 
done  without  mutilating  the  sheet  or  remov- 
ing it  from  the  office.  Ex  parte  Zacharias, 
C.  D.  1902,  98  O.  G.  2171. 

2.  If  a  new  attorney  appears  in  the  case  or 
it  is  necessary  to  have  different  witnesses 
from  the  original  ones,  such  a  change  would 
be  a  departure  from  the  original  record  and 
cannot  be  permitted.  The  only  remedy  in 
such  a  case  is  to  file  a  new  sheet  of  drawings. 
(Order  480,  43  O.  G.  1119.)     Id. 

3.  Where  the  drawing  forming  part  of  an 
application  for  a  patent  is  signed  by  the  in- 
ventor personally  and  two  witnesses  and  the 
attorney  thereafter  writes  his  name  below 
that  of  the  inventor.  Held,  not  proper,  since 
the  attorney's  signature  is  not  only  unneces- 
sary, but  conveys  a  false  impression  as  to  the 
witnesses.  Ex  parte  McDonald,  C.  D.  1902, 
101  O.  G.  1829. 

4.  A  trade-mark  application  should  be  ac- 
cepted and  considered  upon  its  merits  although 
it  contains  no  witnesses  to  the  applicant's  sig- 
nature. The  statute  and  the  rules  do  not  re- 
quire witnesses.  In  re  George  \.  Newman 
Company,  C.  D.  1903,  106  O.  G.  1508. 

5.  An  application  asking  that  a  patent  be 
issued  to  two  parties  as  joint  inventors  must 
be  signed  and  the  oath  must  be  made  by  both 
parties.  An  application  signed  by  one  party 
will  not  be  accepted  as  complete  and  exam- 
ined upon  the  question  of  novelty.  In  re 
Crane,  C.  D.  1903,  106  O.  G.  999. 

6.  An  application  signed  by  only  one  of 
two  joint  inventors  cannot  be  accepted  even 
for  the  purpose  of  an  interference  with  a  sole 
application  filed  by  the  other  joint  inventor. 
Id. 

7.  Where  it  appears  that  the  application  was 
not  signed  by  the  inventor,  but  his  name  was 
signed  to  it  by  some  other  party.  Held,  that 
the  papers  should  not  be  entered  as  a  complete 


516 


SPECIFICATION,  I. 


application.     Ex  parte  Taylor,  C.  D.  1903,  107 
O.  G.  1098. 

8.  Where  the  application  papers  were  signed 
"Charles,  Prince  de  Loewenstein,"  Held,  that 
the  full  name  of  the  applicant  was  not  given, 
as  required  in  Rule  40.  In  re  Charles,  Prince 
de  Loewenstein,  C.  D.  1904,  108  O.  G.  562. 

9.  Honorable  titles  form  no  part  of  a  per- 
son's name,  however  well  they  serve  to  iden- 
tify the  individual,  and  therefore  they  cannot 
be  accepted  as  a  compliance  with  the  rule 
calling  for  the  applicant's  name.     Id. 

10.  It  is  not  sufficient  for  the  purposes  of 
this  office  that  the  name  of  the  applicant  be 
written  as  it  is  ordinarily  signed ;  but  the 
full  first  name  and  surname,  must  be  given. 
Held,  therefore,  that  an  application  signed 
"Marie,  Princess  of  Ysenburg'"  is  informal. 
In  re  Marie,  Princess  of  Ysenburg,  C.  D. 
1904,  108  O.  G.  214.5. 

11.  Where  an  application  is  actually  signed 
by  the  inventor,  it  is  not  to  be  regarded  as  in- 
complete merely  because  the  full  name  of  the 
applicant  is  not  given.  The  full  name  may  be 
supplied  subsequently,  and  therefore  the  ap- 
plication should  be  accepted  and  acted  upon. 
Id. 

12.  Where  the  applicant  wishes  to  correct 
his  signature  to  the  drawing,  he  should  file 
a  photographic  copy  of  the  drawing  before 
change.  Ex  parte  Hanson,  C.  D.  1905,  114  O. 
G.  2381. 

13.  The  signature  to  the  drawing  and  the 
statement  in  a  trade-mark  application  should 
correspond.  The  question  is  not  whether 
either  or  both  signature  are  legal,  but  there 
must  be  uniformity.  Ex  parte  Boston  Foun- 
tain Pen  Co.,  C.  D.  1905,  116  O.  G.  2531. 

14.  Amendments  to  an  application  should 
be  actually  signed  by  an  applicant  or  his  at- 
torney with  pen  and  ink  or  equivalent  writing 
material.  Amendments  signed  by  means  of  a 
rubber  stamp  will  not  be  accepted.  Ex  parte 
Minehan,  C.  D.  1908,  134  O.  G.  1298. 


SPECIFICATION. 

I.  Sufficiency  of  Description. 
II.  Unnecessary  or  Objectionable  Descrip- 
tion. 

I.  Sufficiency  of  Description. 

1.  The  patentees  have  made  an  ingenious 
and  meritorous  invention  of  such  utility  and 
novelty  as  to  support  a  broad  patent  and  have 


sufficiently  described  such  invention.  The 
fact  that  the  device  is  a  non-inverting  looper 
is  sufficiently  indicated  by  reference  to  one 
part  as  an  upper  jaw  and  another  as  a  lower 
jaw.  d  Wilcox  &  Gibbs  Sewing  Machine  Co. 
v.  The  Merrow  Machine  Co.,  C.  D.  1898,  85 
O.  G.  1078. 

2.  It  is  the  policy  of  the  office  to  permit  an 
applicant  in  describing  his  invention  to  select 
his  own  terms  of  reference  so  long  as  their 
use  does  not  lead  to  ambiguity.  Ex  parte 
Hollis,  C.  D.  1899,  86  O.  G.  489. 

3.  Where  the  invention  consists  of  a  rod- 
coupling  which  is  adapted  for  use  wherever 
it  is  desired  to  connect  two  sections  of  a  rod. 
Held,  that  it  is  not  necessary  for  the  specifica- 
tion to  state  the  use  to  which  the  rod  formed 
by  the  use  of  the  coupling  is  put.  Ex  parte 
Hinkle  and  Ashmore,  C.  D.  1899,  88  O.  G. 
2410. 

4.  The  specification  of  the  patent  is  not  ad- 
dressed to  lawyers  or  even  to  the  public  gen- 
erally, but  to  the  manufacturers  of  steel,  and 
any  description  which  is  sufficient  to  apprise 
them  in  the  language  of  the  art  of  the  definite 
feature  of  the  invention  and  to  serve  as  a 
warning  to  others  of  what  the  patent  claims 
as  a  monopoly  is  sufficiently  definite  to  sustain 
the  patent.  **Carnegie  Steel  Company,  Lim- 
ited V.  Cambria  Iron  Company,  C.  D.  1902, 
99  O.  G.  1866. 

5.  A  patentee  in  describing  his  invention 
may  assume  that  what  is  already  known  in  the 
art  is  understood  and  may  begin  at  the  point 
where  his  invention  begins  and  describe  what 
he  has  made  that  is  new  and  what  it  replaces 
of  the  old.     **Id. 

6.  Where  upon  petition  from  the  examiner's 
objection  to  the  specification  for  insufficient 
disclosure  it  appeared  that  the  objection 
should  not  be  overruled  and  that  in  view  of 
previous  prosecutions  further  amendment 
would  seem  to  be  useless,  Held,  that  the  ex- 
aminer should  reject  the  claims.  Ex  parte 
Stevens,  C.  D.  1905,  119  O.  G.  1258. 

7.  Where  the  meaning  of  a  phrase  used  by 
an  applicant  is  clear,  no  reason  exists  for 
delaying  the  prosecution  of  the  case  by  in- 
sisting upon  merely  formal  changes  in  the  lan- 
guage used.  Ex  parte  White,  C.  D.  1908,  134 
O.  G.  2027. 

8.  In  claiming  a  patent  for  the  discovery 
of  a  useful  result  in  any  art,  machine,  manu- 
facture, or  composition  of  matter  by  the  use 
of  certain  means  the  application  must  specify 
"the  means  he  uses  in  a  manner  so  full  and 


SPECIFICATION,  II. 


517 


exact,  that  any  one  skilled  in  the  science  to 
which  it  appertains,  can,  by  using  the  means 
he  specifies,  without  any  addition  to,  or  sub- 
traction from  them,  produce  precisely  the  re- 
sult he  describes."  (O'Reilly  v.  Morse,  1.5 
How.  62,  ll'J.)  *In  re  Blackmore,  C.  D.  1909, 
140  O.  G.  1209. 

9.  The  specification  of  the  Golding  patent. 
No.  527,242,  for  a  process  of  making  open 
metal-work.  Held,  sufficient  to  enable  one 
skilled  in  the  art  to  practice  the  invention. 
**The  Expanded  Metal  Company  et  al.  v. 
Bradford  et  al.,  and  The  General  Fire-proof- 
ing Company  v.  The  Expanded  Metal  Com- 
pany, C.  D.  1909,  143  O.  G.  863. 

10.  The  requirement  of  the  examiner  that 
a  description  of  the  operation  of  the  machine 
be  added  to  the  specification.  Held,  reasonable 
and  proper.  Ex  parte  Bradford  and  Chat- 
field,  C.  D.  1910,  152  O.  G.  731. 

II.  Unnecessary   or   Objectionable   Descrip- 
tion. 

11.  The  specification  contained  this  para- 
graph :  "While  the  drawings  illustrate  the 
cylindrical  body  of  the  grip  as  being  provided 
with  circular  rows  of  the  perforations  or 
holes  and  continuous  circular  ribs  or  beads 
alternating  with  the  rows  of  perforations  or 
holes,  it  will  be  understood  that  this  specific 
arrangement  may  be  modified  to  some  extent 
without  departing  from  the  spirit  or  princi- 
ple of  the  present  invention,  the  essential  fea- 
ture of  which  is  a  cylindrical  body  provided 
with  annular  rows  of  perforations,  and  exter- 
ior circumferential  ribs  arranged  between  the 
rows  of  such  exterior  perforations."  On  ap- 
peal from  the  requirement  of  the  examiner 
that  this  statement  be  canceled.  Held,  that  this 
statement  was  evidently  intended  to  make  the 
application  cover  some  other  form  or  modifi- 
cation of  design  than  that  shown  in  the  draw- 
ing; that  it  either  has  this  effect  or  is  un- 
necessary and  misleading  and  should  be  can- 
celed. Ex  parte  Eldon,  C.  D.  1898,  83  O.  G. 
748. 

12.  Held,  further,  that  such  statement  does 
not  and  cannot  have  the  effect  of  broadening 
the  claim  so  as  to  cover  other  modifications 
not  shown,  as  it  purports  to  do,  and  it  is 
therefore  misleading  and  should  be  canceled. 
Id. 

13.  Held,  further,  that  while  under  the  test 
laid  down  by  the  supreme  court  in  the  case 
of  Gorham  Co.  v.  White  (2  O.  G.  592,  14  Wall. 


511),  as  to  modifications,  the  modifications 
which  applicant  had  in  mind  in  introducing 
such  statement  may  be  held  infringements,  yet 
neither  the  applicant  nor  the  office  can  settle 
this  question  in  advance,  and  therefore  the 
statement  purporting  to  do  so  is  misleading 
and  should  be  canceled.     Id. 

14.  If  party  cannot  cover  two  modifications 
by  disclosing  them,  he  should  not  be  permitted 
to  do  so  by  a  bare  statement  that  his  applica- 
tion is  intended  to  cover  them,  although  they 
are  not  shown.    Id. 

15.  It  is  the  well-settled  practice  of  the 
office  to  require  unnecessary  description  and 
illustration  to  be  canceled.  Ex  parte  Wads- 
worth,  C.  D.   1900,  92  O.  G.  1798. 

16.  A  party  may  in  his  specification  dis- 
tinguish between  what  is  old  and  what  is  new, 
but  there  is  no  warrant  for  permitting  a  party 
to  recite  the  history  of  the  art  as  he  under- 
stands it,  together  with  statements  as  to  the 
disadvantages  of  the  several  old  forms  and 
the  advantages  of  his  invention  thereover,  or 
to  illustrate  in  his  drawings  the  old  devices 
which  he  regards  as  constituting  the  prior  art. 
Id. 

17.  Statements  in  the  specification  which 
are  merely  laudatory,  of  the  applicant's  in- 
vention should  be  canceled.  Ex  parte  Blake- 
man,  C.  D.  1902,  98  O.  G.  791. 

18.  A  statement  in  the  specification  that  no 
one  else  has  been  able  to  accomplish  a  certain 
result  is  not  necessary  to  a  disclosure  of  the 
applicant's  invention  and  should  be  canceled. 
Id. 

19.  Where  a  long  statement  is  made  at  the 
end  of  the  specification  giving  numerous  ex- 
amples which  it  is  alleged  come  within  the  in- 
vented process.  Held,  that  such  statement  is 
unnecessary,  renders  the  specification  prolix, 
and  should  be  canceled.     Id. 

20.  An  applicant  will  not  be  permitted  to 
include  in  the  specification  private  identifying- 
marks  which  have  no  meaning  to  any  one  else, 
such  as  "Case  No.  2332."  Ex  parte  Ball,  C 
D.  1902,  100  O.  G.  2602. 

21.  The  object  of  the  specification  is  to  de- 
scribe the  invention,  and  it  should  not  include 
matter  which  does  not  assist  in  accomplishing 
that  result  and  which,  if  considered  at  all,  may 
lead  to  confusion.     Id. 

22.  It  is  permissible  in  the  descriptive  part 
of  the  specification  to  distinguish  between 
what  is  old  and  what  is  regarded  as  new.  Such 
description  stands  upon   different    footing  from 


518 


SPECIFICATION,  II. 


merely   laudatory   statements.     Ex   parte   Ey- 
non,  C.  D.  1903,  105  O.  G.  499. 

23.  When  matter  of  an  advertising  nature 
is  incorporated  in  the  specification,  yet  the 
description  of  the  mechanical  structure  and 
manner  of  use  is  clear.  Held,  that  action  on 
the  merits  should  be  proceeded  with,  but  that 
the  matter  in  the  specification  which  is  of 
an  advertising  nature  should  be  required  to  be 
erased  before  the  patent  is  allowed.  Ex  parte 
Wellington,  C.  D.  1904,  113  O.  G.  2218. 

24.  A  specification  for  a  patent  should  be 
confined  to  a  description  of  the  structure  of 
the  device  and  the  manner  of  its  use,  and  a 
discussion  of  the  theoretical  result  to  be  at- 
tained by  the  use  of  the  invention,  which 
amounts  to  nothing  more  than  advertising 
matter,  should  be  excluded  therefrom.  Ex 
parte  Wellington,  C.  D.  1904,  113  O.  G.  2218. 

25.  Since  the  applicant's  ball-retaining  ring 
is  a  simple  invention,  there  is  no  warrant  for 
introducing  ambiguous  terms,  thereby  failing 
to  clearly  and  correctly  describe  it.  *In  re 
Dilg,   C.   D.   1905,   115  O.  G.  1067. 

26.  Where  the  word  "stretcher"  has  been 
applied  by  the  applicant  to  a  device  used  in 
pressing  and  stretching  trousers,  though  the 
stretching  is  effected  by  the  operator  rather 
than  by  the  device,  but  it  appears  that  the  in- 
vention can  be  readily  understood  from  the 
language  used,  that  the  claims  are  not  ren- 
dered indefinite  by  this  word,  and  that  this 
use  of  the  word  is  not  absurd  or  clearly  er- 
roneous. Held,  that  the  word  as  thus  used  is 
not  objectionable.  Ex  parte  Welch,  C.  D. 
1905,  115  O.  G.  1850. 

27.  A  statement  inserted  in  the  specifica- 
tion that  the  mechanism  may  be  changed  so 
long  as  that  stated  in  the  claims  be  employed 
or  the  equivalent  thereof  is  objectionable  as 
mere  surplusage,  being  a  statement  of  a  well- 
known  principle  of  law.  Ex  parte  Champ,  C. 
D.  1905,  114  O.  G.  1827. 

28.  Statements  in  the  specification  setting 
forth  the  purpose  and  function  of  the  con- 
struction claimed  are  not  objectionable  and 
should  be  distinguished  from  mere  laudatory 
statements  inserted  for  advertising  purposes. 
Ex  parte  Schoshusen,  C.  D.  1905,  116  O.  G. 
2008. 

29.  Descriptive  matter  in  a  specification 
which  consists  merely  in  statements  relative 
to  the  construction  and  operation  of  specific 
prior  devices,  made  with  the  idea  of  pointing 
otit  the  purpose  and  application  of  applicant's 
improvements,  is  not  objectionable  as  being  in 


derogation   of  the   inventions  of  others.     Ex 
parte  Ljungstrom,  C.  D.  1905,  119  O.  G.  2235. 

30.  Descriptive  matter  in  a  specification 
which  sets  forth  alleged  advantages  of  the 
construction  over  the  prior  art  in  language 
broad  enough  to  apply  to  a  prior  patent  or 
patents,  as  well  as  to  applicant's  construction, 
is  objectionable  and  should  be  canceled.  Such 
statements  amount  merely  to  a  comparison 
of  two  old  classes  of  machines.  Ex  parte 
Kenney,  C.  D.  1905,  119  O.  G.  2237. 

31.  Descriptive  matter  relating  to  construc- 
tions involved  in  claims  on  which  appeal  is 
to  be  taken  should  not  be  required  to  be  can- 
celed prior  to  appeal.    Id. 

32.  Where  the  applicant  states  in  his  speci- 
fication that  he  does  not  regard  his  invention 
as  limited  to  the  exact  details  of  construction 
and  it  appears  that  his  claims  are  not  so  lim- 
ited, Held,  that  he  should  not  be  required  to 
cancel  the  statement  as  superfluous.  (Ex 
parte  Champ,  C.  D.  1905,  .54,  114  O.  G.  1827, 
distinguished.)  Ex  parte  Jansson,  C.  D.  1906, 
120  O.  G.  2126. 

33.  In  a  case  of  doubt  the  intent  of  the  ap- 
plicant in  using  a  term  in  a  claim  and  the 
understanding  of  the  office  in  allowing  the 
claim  have  a  material  bearing  upon  its  mean- 
ing and  scope,  and  therefore  the  applicant 
should  not  be  required  to  cancel  statements 
v,'here  such  cancelation  may  result  in  a  more 
limited  construction  of  the  claim  than  is  nec- 
essary.    Id. 

34.  An  applicant  should  under  no  circum- 
stances be  allowed  in  his  specification  to  make 
derogatory  statements  as  to  the  inventions 
of  others;  but  within  reasonable  limits  he 
may  in  pointing  out  the  advantages  of  his 
invention  indicate  also  what  he  regards  as  the 
defects  or  deficiencies  common  to  structures 
representing  the  unimproved  art,  and  the  fact 
that  in  making  this  distinction  he  states  that 
his  device  is  superior  to  preceding  forms  in 
certain  respects  wherein  it  differs  from  them 
is  not  a  matter  of  importance.  (Citing  Ex 
parte  Shaw,  C.  D.  1890,  31,  .50  O.  G.  1129; 
Ex  parte  Schoshusen,  C.  D.  1905,  214,  116  O. 
G.  2008.)  Ex  parte  Heylman,  C.  D.  1907,  126 
O.  G.  1066. 

35.  A  statement  of  invention  forming  a 
part  of  the  specification  which  amounts  prac- 
tically to  a  mere  repetition  of  the  claims  in 
different  language  is  objectionable  and  should 
be  canceled.  Ex  parte  Edwards,  C.  D.  1908, 
137  O.  G.  1711. 


STATUTES. 


519 


STATUTES. 

!•  As  under  the  constitution  congress  has 
power  to  make  laws  which  shall  be  necessary 
and  proper  for  carrying  out  that  express 
power  of  the  constitution  in  regard  to  pro- 
tecting patents,  it  follows  that  congress  may 
provide  such  instrumentalities  in  relation  to 
the  matter  as  in  its  judgment  will  be  best  cal- 
culated to  effect  that  object.  **United  States, 
ex  rel.  Bernardin  v.  Duell,  Commissioner  of 
Patents,  C.  D.  1899,  S6  O.  G.  995. 

2.  Section  4886,  Revised  Statutes,  applies 
to  all  inventions,  irrespective  of  the  place  of 
their  origin,  and  the  term  "date  of  invention" 
is  used  without  discrimination  between  classes 
of  inventions.  The  language  of  the  section 
refers  to  the  actual  and  not  to  the  artificial 
date,  d  Welsbach  Light  Company  v.  Amer- 
ican Incandescent  Lamp  Company  and  Berlin- 
icke,  C.  D.  1900,  90  O.  G.  960. 

3.  While  the  construction  of  the  statute  by 
the  commissioner  would  not  be  binding  upon 
a  court  should  the  statute  properly  come  be- 
fore it  for  interpretation,  yet  such  construc- 
tion placed  upon  it  for  a  number  of  years 
would  be  entitled  to  great  respect  and  might 
be  controlling,  a  United  States  ex  rel.  Sta- 
pleton  v.  Duell,  Commissioner  of  Patents,  C. 
D.  1900,  93  O.  G.  2532. 

4.  Section  4923  of  the  Revised  Statutes, 
which  provides  that  a  patent  shall  not  be  de- 
clared invalid  by  reason  of  knowledge  or  use 
abroad,  in  effect  authorizes  the  issue  of  a 
patent  to  the  original  inventor  who  first  in- 
troduces a  knowledge  of  the  invention  into 
this  country  and  prohibits  the  issue  of  a  pat- 
ent to  any  one  else.  Ex  parte  Grosselin,  C. 
D.  1901,  97  O.  G.  2977. 

5.  Due  regard  should  be  given  to  a  practice 
which  admittedly  has  prevailed  for  more  than 
twenty-five  years  in  proceedings  of  a  judicial 
character,  even  should  there  be  a  reasonable 
doubt  in  the  mind  of  the  court  as  to  the  prop- 
er construction  to  be  placed  upon  a  statute. 
♦Allen,  Commissioner  of  Patents  v.  United 
States  of  America,  ex  rel.  Lowry  and  Planters 
Compress  Company,  C.  D.  1905,  116  O.  G. 
2253. 

6.  The  United  States  Supreme  Court  in  the 
case  of  ex  rel.  George  A.  Lowry  v.  Frederick 
L  Allen,  Commissioner  of  Patents  (C.  D.  1906, 
765,  125  O.  G.  2365),  held  that  section  4904 
of  the  Revised  Statutes  limits  the  declaration 
of   interferences   to   the   question   of   priority 


of  invention.  Should  a  party  be  permitted  to 
urge  that  the  claims  of  the  issue  are  patent- 
able to  neither  party  in  the  interference,  a 
decision  that  the  issue  is  not  patentable  would 
not  result  in  a  decision  of  priority  of  inven- 
tion in  favor  of  either  party  or  in  the  issue  of 
a  patent  to  one  of  the  parties.  In  the  cases 
contemplated  by  Rule  130,  however,  a  decision 
that  the  issue  is  not  patentable  to  one  party 
would  necessarily  result  in  a  decision  of  pri- 
ority in  favor  of  the  other  party.  Dixon  and 
Marsh  v.  Graves  and  Whittemore,  C.  D.  1907, 
127  O.  G.  1993. 

7.  In  construing  a  statute  the  court  is  not 
always  confined  to  a  literal  reading  thereof, 
and  may  consider  its  object  and  purpose,  the 
things  with  which  it  is  dealing,  and  the  con- 
ditions of  aflfairs  which  led  to  its  enactment 
so  as  to  effectuate  rather  than  destroy  the 
spirit  and  force  of  the  law  which  the  legisla- 
ture intended  to  enact.  **American  Tobacco 
Company  v.  Werckmeister,  C.  D.  1908,  133  O. 
G.  1433. 

8.  Although  section  4904,  Revised  Statutes, 
provides  that  whenever  "in  the  opinion  of  the 
commissioner"  an  interference  exists  notice 
shall  be  given  to  the  parties,  etc.,  the  commis- 
sioner is  not  obliged  personally  to  determine 
in  the  first  instance  whether  an  interference 
in  fact  exists,  but  may  delegate  this  duty  to 
the  primary  examiner.  The  demands  of  the 
statute  are  fully  met  when  it  is  provided  that 
at  some  stage  in  the  proceedings  the  personal 
opinion  of  the  commissioner  may  be  invoked 
by  either  party.  *United  States  of  America, 
ex  rel.  The  Newcomb  Motor  Company  v. 
Moore,  Commissioner  of  Patents,  C.  D.  1908, 
133  O.  G.  1680. 

9.  The  provisions  of  the  statutes  giving  an 
applicant  the  right  to  have  his  claim  twice 
rejected  (sees.  4903  and  4909,  R.  S.)  does  not 
apply  in  inter  partes  cases.    *Id. 

10.  A  construction  given  to  a  statute  by  the 
uniform  practice  of  the  patent  office  for  many 
years  is  entitled  to  much  weight,  being  a  con- 
struction adopted  by  a  co-ordinate  branch  of 
the  government,  c  Cheney  Brothers  v.  Wein- 
reb  and  Weinreb,  C.  D.  1910.  157  O.  G.  1002. 

11.  In  Revised  Statutes,  section  4916  (U.  S. 
Comp.  St.,  1901,  p.  3393),  authorizing  the  is- 
suance of  a  reissue  patent  where  the  original 
is  inoperative  or  invalid  "by  reason  of  a  de- 
fective or  insufficient  specification,"  the  word 
"specification,"  by  settled  construction,  may 
include   the   claims   as   well   as   the    technical 


520 


SUITS,  I,  II. 


specifications  preceding  them,  d  McDowell  v. 
Ideal  Concrete  Mach.  Co.,  C.  D.  1911,  171  O. 
G.  1002. 


STHTS. 


(See  Damages  and  Profits;  Demurrer;  In- 
fringement.) 

I.  Infringement,  in  General. 
II.  Infringement,     Against     the     United 
States  and  United  States  Officers. 

III.  Parties. 

IV.  Costs  of. 

V.  Under  Revised  Statute  4815. 

I.  Infringement,  in  General. 

1.  Where  suit  is  brought  on  a  single  patent 
against  a  single  defendant  and  a  decree  is  en- 
tered holding  a  part  of  the  claims  invalid  and 
a  part  of  the  valid  claims  not  infringed,  grant- 
ing an  injunction,  and  referring  the  cause  to 
a  master,  such  decree  does  not  amount  to  a 
dismissal  of  the  bill  from  which  appeal  may 
be  taken  as  the  controversy  is  not  separable 
either  as  to  parties  or  subject-matter.  *Ex 
parte  Natl.  Enameling  &  Stamping  Co.  & 
Lalance  &  Grosjean  Mfg.  Co.,  C.  D.  1906,  121 
O.  G.  1679. 

2.  Where  an  appeal  is  taken  in  a  patent  case 
from  an  interlocutory  order  granting  an  in- 
junction and  the  appellate  court  is  satisfied 
that  the  patent  is  void  on  its  face,  it  may  dis- 
miss the  bill  and  end  the  litigation,  as  it  would 
be  a  waste  of  time  and  an  unnecessary  con- 
tinuance of  litigation  simply  to  enter  an  order 
setting  aside  the  injunction  and  remanding 
the  case  for  further  proceedings.    *Id. 

3.  The  mere  fact  that  defendants  in  a  suit 
for  infringement  of  a  patent  contributed  to 
the  defense  in  a  prior  suit  on  the  same  patent 
against  other  parties,  it  not  being  shown  that 
the  present  defendants  had  the  right  to  inter- 
meddle in  any  way  in  the  conduct  of  that  case, 
does  not  render  them  privies  to  such  prior 
suit,  and  the  testimony  of  a  witness 
therein,  since  deceased,  is  inadmissible 
against  them  to  establish  infringement. 
**Rumford  Chemical  Works  v.  Hygienic 
Chemical  Company  of  New  Jersey ;  Hy- 
gienic Chemical  Company  of  New  York  et 
al  V.  Rumford  Chemical  Works,  C.  D.  1909, 
149  O.  G.  834. 


II.  Infringement,    Against    United    States 
AND  United  States  Officers. 

4.  Where  suit  is  brought  against  a  post- 
master alleging  infringement  of  a  patent  upon 
a  stamp-canceling  machine  and  praying  an 
injunction.  Held,  that  the  court  has  no  power 
to  grant  an  injunction.  **International  Postal 
Supply  Company  of  New  York  v.  Bruce,  C. 
D.  1904,  110  O.  G.  2511. 

5.  Where  stamp-canceling  machines  are 
used  by  a  postmaster  in  his  work  as  an  of- 
ficial of  the  government.  Held,  that  the  Unit- 
ed States  has  a  property  in  the  machines 
which  cannot  be  interfered  with  behind  its 
back,  and  since  it  cannot  he  made  a  party  the 
suit  asking  for  an  injunction  must  fail.    **Id. 

6.  Where  an  employee  of  the  government 
submits  an  invention  which  he  has  made  and 
patented  at  his  own  expense  to  his  superior 
officers,  and  it  is  adopted  and  used  by  the 
government,  the  inventor  supposing  that  he 
would  receive  compensation  and  the  superior 
officers  supposing  that  he  would  not  exact  or 
demand  compensation.  Held,  that  an  action 
in  the  court  of  claims  to  recover  compensa- 
tion cannot  be  sustained.  **Harley  v.  United 
States,  C.  D.  1905,  116  O.  G.  875. 

7.  An  employee  of  the  government  who  per- 
mits his  patented  invention  to  be  used  by  the 
government  without  protest  and  without  spe- 
cific demand  for  compensation  and  without 
agreement  as  to  compensation  is  not  entitled 
to  recover  in  the  court  of  claims.     **Id. 

8.  The  jurisdiction  of  the  court  of  claims 
in  suits  founded  on  contract  is  limited  to 
those  cases  where  there  is  "a  coming  together 
of  minds"  and  excludes  those  contracts  or 
obligations  that  the  law  is  said  to  imply  from 
a  tort.    **Id. 

9.  A  suit  against  an  officer  of  the  United 
States  to  restrain  him  from  manufacturing 
field-guns  and  gun-carriages  alleged  to  in- 
fringe certain  patents  owned  by  plaintif?  is 
not  a  suit  against  the  United  States,  since  it 
is  not  sought  to  disturb  the  United  States  in 
possession  and  use  of  guns  already  manufac- 
tured, but  the  court  is  merely  asked  to  restrain 
an  officer  of  the  United  States  for  invading 
rights  granted  by  the  government  itself. 
*Fried.  Krupp  Aktiengesellschaft  v.  Crozier, 
C.  D.  1908,  1.S7  O.  G.  1238. 

10.  Plaintiff  sued  to  restrain  defendant,  an 
officer  of  the  United  States,  from  infringing 
certain  patents.  The  defendant  demurred  on 
the  ground  that  the  suit  was  in  reality  against 


TECHNICAL  TERMS. 


521 


the  United  States.  Held,  that  as  it  was  not 
sought  to  disturb  the  United  States  in  the 
possession  of  the  alleged  infringing  article  al- 
ready manufactured  the  decree  sustaining  the 
demurrer  should  be  reversed.    *Id. 

III.  Parties. 

11-  The  allegation  by  a  party  that  he  has  in- 
vested money  in  a  factory  and  machinery  for 
making  a  device  does  not  give  him  a  legal 
interest  in  the  invention  embodied  in  it  nor 
in  the  question  whether  or  not  a  patent  shall 
be  issued  upon  it.  a  United  States  of  Amer- 
ica ex  rel.  National  Phonograph  Company  v. 
Allen,  Commissioner  of  Patents,  C.  D.  1902, 
101  O.  G.  IKi.f. 

12.  Where  a  party  has  no  patent  upon  an 
invention  and  does  not  claim  the  right  to 
secure  a  patent  upon  it  and  merely  says  that 
it  is  not  patentable  to  anybody.  Held,  that  he 
is  not  entitled  to  interfere  with  the  consider- 
ation by  the  commissioner  of  patents  of  an 
application  for  that  invention  filed  by  another 
party,     a  Id. 

IV.  Costs  of. 

13.  In  the  absence  of  a  rule  of  court  or  of 
a  written  stipulation  so  providing  the  e-xpense 
of  printing  records,  briefs,  and  supplemental 
briefs  in  the  circuit  court  or  of  procuring 
copies  of  the  official  stenographer's  notes 
of  testimony  for  the  use  and  convenience  of 
the  parties  is  not  taxable  as  costs ;  neither  is 
the  expense  of  constructing  or  procuring 
models,  charts,  photolithographing  paper  ex- 
hibits, etc.,  used  at  the  hearing  to  illustrate 
and  make  clear  the  oral  evidence.  *Kelly  et 
al.  V.  Springfield  Railway  Company  et  al.,  C. 
D.  1898,  82  O.  G.  7.-)l. 

14.  An  order  of  court  entered  upon  appli- 
cation of  both  parties  pursuant  to  a  stipula- 
tion between  them  that  a  printed  copy  of  the 
proofs  and  record  shall  be  considered  "for  all 
purposes  of  this  suit"  and  shall  constitute  the 
original  record  therein  is  not  an  order  requir- 
ing the  printing  of  the  proofs  and  record,  so 
as  to  make  the  cost  of  such  printing  taxable 
against  the  losing  party.    *Id. 

15.  The  granting  of  leave  to  file  supplemental 
briefs  does  not  make  the  expense  of  printing 
them  taxable  costs.     *Id. 


Patent  No.  367,267,  in  accordance  with  the 
provisions  of  Revised  Statutes,  section  4915, 
dismissed,  as  the  question  of  patentability  of 
the  combination  claimed  had  been  substan- 
tially passed  upon  by  the  circuit  court  of  ap- 
peals (60  Fed.  Rep.  87.)  c  Briggs  v.  Butter- 
worth,  Commissioner  of  Patents,  C.  D.  1898, 
8.3  O.  G.  159. 

17.  Letters  Patent  No.  .5.57,727,  granted  to 
John  D.  Tracy  and  James  F.  Piatt  on  April 
7,  1896,  for  a  corn-shredder.  Held  void  for 
lack  of  invention  in  a  suit  brought  under  sec- 
tion 4915,  Revised  Statutes,  by  complainant 
claiming  priority  of  invention,  to  require  the 
issue  of  a  patent  to  him.  *Leslie  v.  Tracy,  C 
D.  1900,  91  O.  G.  1804. 

18.  In  a  suit  brought  under  section  4915, 
Revised  Statutes,  to  require  the  issue  of  a 
patent  to  complainant  where  the  controversy 
is  between  two  claimants  to  priority  of  in- 
vention. Held,  that  there  an  be  no  adjudica- 
tion of  priority  in  favor  of  either  unless  the 
alleged  invention  of  the  issue  is  patentable. 
(Leslie  V.  Tracy  et  al.,  C.  D.  1900.  91  O.  G. 
1804. 

19.  The  filing  of  a  bill  in  equity  under  sec- 
tion 4915,  Revised  Statutes,  by  the  defeated 
party  to  an  interference  will  not  operate  to 
stay  the  issue  of  a  patent  to  the  successful 
party,  nor  will  it  justify  the  commissioner 
of  patents  in  withholding  it  until  the  equity 
proceeding  is  terminated.  (Citing  case  of 
Sargent,  C.  D.  1877,  12.-.,  12  O.  G.  475,  and 
Wells  V.  Boyle,  C.  D.  1888,  36,  43  O.  G.  753.) 
Dunbar  v.  Schellenger,  C.  D.  1906,  128  O.  G. 
2087. 

20.  The  evidence  presented  considered  and 
Held,  insufficient  to  overcome  the  rulings  of 
the  patent  office  and  the  court  of  appeals  of 
the  District  of  Columbia  that  the  claims  are 
unpatentable,  a  Dilg  v.  Moore  (substituted 
for  .A.llen),  Commissioner  of  Patents  of  the 
United  States,  C.  D.  1909,  149  O.  G.  601. 

21.  Evidence  considered  and  Held,  insuffi- 
cient to  show  that  the  elements  of  the  claims 
were  described  or  disclosed  in  applicant's 
original  application.  *Dilg  v.  Moore.  Com- 
missioner of  Patents,  C.  D.  1910.  l.'iO  O.  G. 
269. 


TECHNICAL  TERMS. 


V.  Unoer  Revised  Statute  491.5. 


!•  The   words   "skilled    in   the   art"   include 
careful  workmen  who  are  skilful  in  the  par- 
16.  A  bill  in  equity  for  a  decree  that  John      ticular  line  of  business  in  which  they  are  en- 
N.  Briggs  is  entitled  to  a  reissue  of  Letters      gaged.     The    law    does    not    warrant    a   con- 


532 


TRADE  MARKS. 


struction  of  these  words  which  includes  only 
persons  of  high  scientific  attainments.  Pupin 
V.  Hutin  and  Leblanc  v.  Stone,  C.  D.  1903, 
100  O.  G.  931. 

2.  The  term  "keyed"  is  not  accurate  when 
used  to  describe  the  connection  between  a 
washer  and  a  shaft  where  the  shaft  is  merely 
made  square  in  cross-section  and  the  washer 
is  made  to  fit  it.  To  key  one  part  upon  an- 
other is  to  drive  a  wedge  or  key  between  the 
parts.  Ex  parte  Mueller  and  Braunsdorf,  C. 
D.  1905,  118  O.  G.  270. 


I. 

II. 

III. 

IV. 

V. 

VI. 

VII. 


VIII. 

IX. 

X. 

XI. 

XII. 

XIII. 

XIV. 


XV. 

XVI. 
XVII. 


XVIII. 

XIX. 

XX. 

XXI. 

XXII. 

XXIII. 

XXIV. 
XXV. 


TRADE-MARKS. 

In  GE^fERAL. 

Alternatives. 

Assignment. 

Application  or  Mark  to  Goods. 

Act  of  1870. 

Act  of  1881. 

Act  of  1905. 

(a)  In  General. 

(b)  Constitutionality    and     Con- 

struction. 

(c)  Amending      Application      to 

Bring  Under  Act. 

(d)  Ten  Year  Clause. 

1.  In  General. 

2.  Exclusive  Use. 
Amendments  and  Disclaimers. 
Appeal. 

Abandonment. 

Cancellation. 

Correction  of  Registration. 

Coat  of  Arms,  Society  Emblems. 

Symbols.  Etc. 
Descriptive. 

(a)  In  General. 

(b)  Registrable. 

(c)  Not  Registrable. 
Descriptive  or  Deceptive. 
Descriptive  and  Geographical. 
Geographical. 

(a)  Registrable. 

(b)  Not  Registrable. 
Description  of  Mark. 
Division  of  Application. 
Drawings  or  Facsimiles. 
Essential  Features. 
Examination  of. 

Foreign    and    Interstate    Com- 
merce. 
Foreign  Words. 
Foreign  Applicant. 


XXVI. 

Fraud. 

XXVII. 

Good  Will. 

XXVIII. 

Goods  of  Same  Descriptive  Prop- 

erties. 

(a)  In  General. 

(b)  Held    Same. 

(c)  Not  Held  Same. 

XXIX. 

Infringement. 

XXX. 

Interference. 

(a)  In  General. 

(b)  Appeal. 

(c)  Burden  of  Proof. 

(d)  Date  of  Adoption  and  Use. 

(e)  Declaration. 

(f)  Dissolution. 

(g)   Evidence. 

(h)  Final  Hearing. 

(i)  Issue. 

(j)  Judgment  on  the  Record. 

(k)  Priority. 

(1)  Reopening. 

(m)  Suspension. 

(n)    Testimony. 

XXXI. 

Interference  in  Fact. 

(See  Trade  Marks;   Similarity 

of  Marks.) 

(a)  In  General. 

(b)  Marks  Held  Similar. 

(c)  Marks  Not  Held  Similar. 

XXXII. 

Jurisdiction. 

XXXIII. 

Laches. 

XXXIV. 

Mandamus. 

XXXV. 

Name  of  Patented  Article. 

XXXVI. 

Opposition. 

XXXVII. 

Ownership. 

XXXVIII. 

Personal  Name. 

(a)   In  General. 

(b)   Of  Applicant. 

XXXIX. 

Protest. 

XL. 

Public  Policy. 

XLI. 

Publication. 

XLII. 

Registration. 

xuii. 

Registrability. 

(a)  In  General. 

(b)   Color  and  Form. 

XLIV. 

Statutes. 

XLV. 

Scope. 

XLVI. 

Similarity  of  Marks. 

(See     Trade-Marks;     Interfer- 

ence IN  Fact. 

(a)  In  General. 

(b)   Deceptively   Similar. 

(c)  Not  Deceptively  Similar. 

XLVII. 

Specification  of  Goods. 

XLVIII. 

Technical. 

XLIX. 

Unfair  Competition. 

TRADE  MARKS,  I. 


523 


L.  Use  and  Sale  as  Establishing 

Title. 
LI.  What  Constitutes. 

I.  In  General. 

1.  The  patent  office  cannot  confer  the  right 
to  a  trade-mark  upon  any  one,  nor,  on  the 
other  hand,  can  it  take  away  such  right.  Its 
powers  in  reference  to  trade-marks  are  very 
limited  and  entirely  different  from  its  pow- 
ers in  reference  to  the  grant  of  patents.  That 
difference  is  clearly  set  forth  by  the  court  of 
appeals  in  the  District  of  Columbia  in  the  case 
of  Einstein  v.  Sawhill  (C.  D.  1893,  677,  65  O. 
G.  1918.)  Sherwood  v.  Harton,  Cato  &  Co., 
C  D.  1898,  84  O.  G.  2018. 

2.  The  question  as  to  the  constitutionality 
of  the  trade-mark  law  will  not  be  determined 
upon  opposition  to  the  registration  of  a 
trade-mark,  but  will  be  left  to  the  courts  for 
determination.  W.  A.  Gaines  &  Co.  v.  Carlton 
Importation  Co.,  C.  D.  1906,  120  O.  G.  902. 

3.  Copyrights  and  trade-marks  are  sep- 
arate and  distinct  rights,  and  the  trade-mark 
is  not  the  mere  name  of  the  copyright  picture, 
but  is  the  symbol  by  which  the  goods  are 
Icnown.  Held,  therefore,  that  the  registration 
of  a  label  embodying  a  trade-mark  will  not 
operate  to  prevent  the  registration  of  such 
trade-mark  for  particular  goods.  Rosenzweig 
V.  Forbes,  C.  D.  I9nr.,  121  O.  G.  2667. 

4.  There  is  no  liability  to  confusion  of  the 
■origin  of  goods  which  are  sold  only  on  the 
premises  of  the  originator.  The  utility  of  a 
trade-mark  does  not  come  into  existence  until 
the  goods  have  passed  from  the  hands  of  the 
originator,  and  it  is  only  by  the  presence  of 
the  mark  upon  the  goods  after  they  have  so 
passed  that  rights  to  the  same  as  a  trade- 
mark are  believed  to  become  established. 
Bigbie  Bros.  &  Co.  v.  Blumenthal  &  Bickart 
V.  The  J.  &  H.  Butler  Co.,  C.  D.  1907,  126  O. 
G.  1063. 

5.  Where  the  use  by  others  of  the  mark 
sought  to  be  registered  has  been  as  a  descrip- 
tive use  rather  than  a  continued  trade-mark 
luse,  but  it  appears  that  the  mark  was  "used  in 
the  usual  and  regular  order  of  business  on 
the  tins  or  kegs  or  whatever  containers  con- 
tained the  colors,"  Held,  that  such  use  was 
similar  to  a  trade-mark  use  and  would  render 
the  users  liable  under  section  16  of  the  trade 
act  to  be  held  as  infringers  if  the  applicant's 
mark  should  be  registered,  and  that  since  such 
use  if  subsequent  to  applicant's  would  infringe, 


when  prior  thereto  it  is  good  cause  for  re- 
fusing registration.  Kuttroflf  v.  Cassello  Color 
Co.,  C.   D.   1907,  129  O.  G.  31."j9. 

6.  The  scope  of  the  classes  of  merchandise 
established  under  section  2  of  the  act  of  May 
4,  1906,  is  peculiarly  within  the  knowledge  of 
the  examiner  of  trade-marks,  and  his  conclu- 
sions upon  questions  of  classification  will  not 
be  disturbed  except  in  cases  of  obvious  error. 
Ex  parte  Nestle  and  Anglo-Swiss  Condensed 
Milk  Company,  C.  D.  1907,  129  O.  G.  3160. 

7.  Where  it  appears  from  the  labels  submit- 
ted as  specimens  that  "cofifee  with  milk"  is 
intended  for  use  in  making  beverages  only 
and  that  "cocoa  with  milk"  and  "chocolate 
with  milk"  are  adapted  to  be  used  in  making 
"chocolate  creams,"  "blanc-mange,"  and  for 
"other  culinary  purposes,"  Held,  that  the  re- 
quirement that  the  former  be  classified  in 
Class  46,  coffee,  tea,  and  substitutes,  and  the 
latter  in  Class  47.  confectionery,  in  order  to 
preserve  the  established  lines  of  classes  is  well 
founded.     Id. 

8.  A  mere  casual  use  of  a  mark  is  insuffi- 
cient to  establish  a  right  to  protection  in  the 
use  thereof.  Luthy  &  Company  v.  Peoria 
Drill  &  Seeder  Company,  C.  D.  1907,  130  O. 
G.   978. 

9.  Where  a  manufacturer  sold  several  types 
of  step-ladders  embodying  features  covered 
by  several  patents  owned  by  him,  to  each  of 
which  types  a  different  trade-mark  was  ap- 
plied, one  of  such  marks  does  not  become  pub- 
lic property  upon  the  expiration  of  the  patents 
where  it  appears  that  it  was  never  used  as 
a  generic  and  identifying  name  of  step-ladders 
of  his  manufacture.  Udell-Predock  Manu- 
facturing Company  v.  The  Udell  Works,  C. 
D.  1908,  134  O.  G.  514. 

10.  It  is  incumbent  upon  the  patent  office 
in  considering  the  registration  of  trade-marks 
to  co-operate  with  the  other  departments  of 
the  government  in  the  observance  of  the  pro- 
visions of  the  Food  and  Drugs  Act  of  June 
30,  1906,  and  to  that  end  it  is  the  duty  of  the 
examiner  of  trade-marks  to  refuse  to  register 
a  mark  when  in  his  opinion  statements  arc 
contained  in  the  labels  presented  which  fall 
under  the  category  defined  as  "misbranded" 
in  that  act.  Ex  parte  Barclay  &  Barclay,  C 
D.  1908,  135  O.  G.  219. 

11.  Under  the  Trade-mark  Act  of  1905  an 
application  for  registration  does  not  consti- 
tute evidence  of  adoption  and  use  of  the 
mark  claimed  as  of  the  date  of  the  applica- 


524 


TRADE  MARKS,  II. 


tion,  as  the  application  is  not  prima  facie  evi- 
dence of  ownership.  Greene,  Tweed  &  Co.  v. 
Manufacturers'  Belt  Hook  Company,  C.  D. 
1908,  137  O.  G.  2221. 

12.  Bleached  sheetings  and  linen  fabrics. 
Held,  goods  of  the  same  descriptive  properties. 
Id. 

13.  A  registrable  trade-mark  cannot  be 
made  by  combining  ncm-registrable  words. 
(In  re  Meyer  Brothers  Coffee  and  Spice  Com- 
pany, C.  D.  1909,  312,  140  O.  G.  756,  32  App. 
D.  C.  277.)  Ex  parte  The  Saint  Anthony 
Milling  &  Elevator  Company,  C.  D.  191(1,  161 
O.  G.   1047. 

14.  The  term  "trade-mark"  has  been  in  use 
from  a  very  early  date,  and,  generally  speak- 
ing, it  means  a  distinctive  mark  of  authenticity 
through  which  the  products  of  particular  man- 
ufacturers or  the  vendable  commodities  of  par- 
ticular merchants  may  be  distinguished  from 
those  of  others.  **Standard  Paint  Co.  v. 
Trinidad  Asphalt  Mfg.  Co.,  C.  D.  1911,  165 
O.  G.  971. 

15.  The  settled  rule  is  that  no  one  can  ap- 
propriate as  a  trade-mark  a  generic  name  or 
one  descriptive  of  an  article  of  trade,  its  qual- 
ities, ingredients,  or  characteristics,  or  any 
sign,  word,  or  symbol  which  from  the  nature 
of  the  fact  it  is  used  to  signify  others  may 
employ  with  equal  truth.    **Id. 

II.  Alternatives. 

16.  It  is  well  settled  that  a  picture  and  a 
word  cannot  be  covered  by  one  registration 
unless  they  are  true  alternatives.  Ex  parte 
Muir,   C.    D.  1899,  87  O.   G.   3.->7. 

17.  The  representation  of  a  rose  and  the 
words  "American  Beauty"  are  not  true  al- 
ternatives and  cannot  be  registered  as  one 
trade-mark.     Id. 

18.  Where  applicants  sought  to  register  the 
word-symbol  "Rabbit"  or  the  representation 
of  a  rabbit  and  showed  in  their  drawing  only 
the  head  of  a  rabbit.  Held,  that  there  was  no 
objection  to  registering  the  mark  as  claimed 
by  applicant.  Ex  parte  Taylor  &  Locketl,  C. 
D.   1900,  93  O.  G.  2531. 

19.  Held,  also  that  there  is  no  force  in  the 
position  assumed  by  the  examiner  that  the 
alternative  form  of  the  claim  is  objectionable 
because  only  the  head  of  the  rabbit  is  shown. 
Id. 

20.  No  arbitrary  rule  can  be  laid  down  to 
cover  all  cases  where  alternative  forms  are 
sought  to  be  registered.    The  present  applica- 


tion comes  within  that  line  of  cases  where  reg- 
istration is  permissible.     Id. 

21.  Where  applicants  sought  to  register  the 
word-symbol  "Ivy"  or  the  representation  of 
ivy  and  showed  in  their  drawing  only  a  single 
ivy-leaf.  Held,  that  there  was  no  objection 
to  registering  the  mark  as  claimed  by  appli- 
cants. Ex  parte  S.  Hecht  &  Son,  C.  D.  1901, 
96  O.  G.  1648. 

22.  Held,  that  inasmuch  as  ivy  is  commonly 
known  only  by  its  leaves  to  persons  not  skilled 
in  botany,  ivy-leaves  though  shown  singly 
would  indicate  to  the  mind  the  ivy-plant  and 
not  necessarily  the  leaves  only  of  the  ivy- 
plant.     Id. 

23.  No  arbitrary  rule  can  be  laid  down  to 
cover  all  cases  where  alternative  forms  are 
sought  to  be  registered.  (Ex  parte  Taylor 
and  Lockett,  C.  D.  1900.  19S,  93  O.  G.  2531.) 
It  is  mere  matter  of  judgment  whether  or  not 
the  word-symbol  and  the  representation  would 
convey  to  the  mind  of  the  ordinary  purchaser 
the  same  thing.    Id. 

24.  The  representation  of  a  bridled  and 
blanketed  donkey  refused  registration  on  the 
word  "Donkey"  as  a  trade-mark  for  soap. 
Ex  parte  Woolwine,  C.  D.  1901.  97  O.  G.  1373. 

25.  Under  the  well-settled  doctrine  of  equiv- 
alents the  word  "Donkey"  is  the  same  trade- 
mark as  the  pictorial  representation  of  a  don- 
key.    Id. 

26.  There  is  no  provision  in  the  law  for 
registration  of  a  mark  which  may  be  varied 
as  circumstances  may  render  it  necessary  or 
desirable.  To  use  such  a  variable  mark  would 
defeat  the  very  purpose  for  which  a  trade- 
mark is  intended.  Ex  parte  Crowley.  C.  D. 
1902,  99  O.  G.  228. 

27.  When  the  facsimile  shows  the  mark  as 
comprising  the  word  "Tunnel,"  together  with 
certain  pictorial  represenfations,  and  it  is 
stated  that  the  word  "Tunnel"  alone  may  be 
used.  Held,  that  registration  should  be  refused 
Id. 

28.  Held,  further,  that  if  the  registration  is 
intended  to  cover  the  word  "Tunnel"  alone  the 
pictorial  representation  should  be  erased  from 
the  drawing  and  the  description  thereof  can- 
celed. If,  on  the  contrary,  it  is  intended  to 
cover  the  mark  as  it  is  shown  in  the  fac- 
simile, the  statement  of  essential  features  and 
the  description  should  be  made  to  conform 
to  such  showing.     Id. 

29.  The  letters  "Jr."  do  not  necessarily 
mean  "Junior"  unless  they  follow  a  name,  and 


TRADE  MARKS,  III. 


523 


therefore  when  used  alone  upon  goods  they 
do  not  constitute  a  substitute  for  or  abbrevia- 
tion of  "Junior."  The  word  and  the  letters 
cannot  be  included  alone  in  one  registration. 
Ex  parte  The  Bryant  Electric  Company,  C. 
D.  190.),  119  O.  G.  2522. 

30.  Where  the  word  "Junior"  in  actual  use 
has  always  followed  a  name,  the  trade-mark 
is  not  the  word  "Junior,"  but  that  word  fol- 
lowing the  name.     Id. 

31.  The  words  "Spot  Cord"  as  a  trade-mark 
for  braided  sash-cord.  Held,  not  in  conflict 
with  the  use  of  spots  on  a  cord,  the  latter 
being  a  mere  symbol  which  may  be  translated 
into  words  other  than  the  words  "spot  cord." 
Spots  on  a  cord  and  the  words  "Spot  Cord" 
are  not  true  alternatives.  Silver  Lake  Com- 
pany V.  Samson  Cordage  Works,  C.  D.  1907, 
131  O.  G.  1420. 

32.  The  words  "Old  Judge"  and  a  so-called 
pictorial  representation  of  an  old  judge  are 
not  alternatives,  since  the  picture  does  not 
have  any  such  characteristics  as  would  cause 
the  same  to  be  designated  by  the  name  "Old 
Judge,"  unless  associated  with  the  words  "Old 
Judge."  Herbst  v.  The  Rotherberg  Co.,  C. 
D.   1908,  137  O.  G.  1939. 

33.  A  decision  in  an  interference  involving 
a  trade-mark  consisting  of  the  words  "Old 
Judge"  does  not  render  the  question  of  reg- 
istration of  the  picture  of  an  old  man  res 
adjudicata,  although  the  exhibits  in  the  inter- 
ference showed  that  the  words  "Old  Judge" 
were  used  by  one  of  the  parties  in  connection 
with  the  picture.     Id. 

34.  A  map  of  the  United  States  and  the 
words  "United  States"  are  alternative.  Ex 
parte  American  Sugar  Refining  Co..  C.  D. 
1909,  144  O.  G.  562. 

III.  Assignment. 

35.  Every  trade-mark  is  assignable,  together 
with  the  business  in  which  it  is  used,  unless 
it  is  strictly  personal,  d  Sarazin  v.  Irby  Cigar 
&  Tobacco  Co.,  C.  D.  1899,  88  O.  G.  387. 

36.  If  a  trade-mark  belongs  to  the  class  of 
assignable  trade-marks,  it  is  transferred  by 
the  operation  of  an  insolvency  or  bankrupt 
law  to  the  assignee  as  part  of  the  bankrupt's 
assets.    *Id. 

37.  A  registered  trade-mark  for  a  brand  of 
smoking-tobacco  the  only  essential  feature 
of  which  is  the  name  of  the  brand,  "King 
Bee,"  is  not  personal  to  the  individual  regis- 
tering it  and  may  be  transferred,     d  Id. 


38.  The  insolvency  law  of  Louisiana  re- 
quires the  cession  of  all  the  property  of  a 
debtor  seeking  to  avail  himself  of  its  provi- 
sions, and  an  acceptance  of  such  cession  by 
the  courts  vests  all  the  debtor's  property  in 
his  creditors,  whether  enumerated  in  his  sched- 
ule or  whether  he  so  intended  or  not.  Such 
a  cession  and  an  acceptance  carry  with  them 
the  property  in  a  trade-mark  unless  it  is  strict- 
ly personal,  so  as  not  to  be  assignable,     d  Id. 

39.  Where  a  party  claims  the  right  to  trade- 
mark registration  by  assignment  from  the 
owner  of  the  mark,  but  the  assignment  does 
not  purport  to  transfer  the  business  as  well 
as  the  mark,  Held,  that  the  applicant  is  not 
the  owner  and  is  not  entitled  to  registration. 
Frazee  v.  Merchants'  Coffee  Co.,  C.  D.  1903, 
106  O.  G.  2292. 

40.  A  trade-mark  right  cannot  be  transfer- 
red without  a  transfer  of  the  business.     Id. 

41.  .Assignments  of  trade-marks  will  not  be 
recorded  unless  they  identify  same  applica- 
tion or  registration.  In  re  Laundry  Blue 
Company,  C.  D.  1904,  109  O.  G.  806. 

42.  It  is  not  necessary  to  have  a  separate 
instrument  in  writing  transferring  a  trade- 
mark, for  the  right  to  its  use  goes  with  the 
business.  J.  R.  Newberry  Company  v.  Joseph 
J.  O'Donohue's  Sons,  C.  D.  1904,  111  O.  G. 
299. 

43.  Held,  that  the  rights  under  a  trade-mark 
registration  may  be  transferred  and  that  it  is 
not  necessary  for  the  assignee  to  reregister  the 
mark  in  his  own  name  to  secure  those  rights. 
The  decisions  to  the  contrary  (Ex  parte  Bas- 
sett,  C.  D.  1891,  69,  55  O.  G.  997,  and  Ex  parte 
Roasted  Cereal  Company,  57  MS.  Dec.  455) 
overruled.  Frank  &  Gutmann  v.  MacWilliam, 
C.  D.  1905,  114  O.  G.  542. 

44.  Held,  that  the  specific  reference  in  the 
trade-mark  law  to  the  transfer  of  the  right 
leads  to  the  conclusion  that  the  same  practice 
in  regard  to  assignments  should  be  followed 
as  to  trade-marks  that  is  followed  in  the  case 
of  patents.    Id. 

45.  Section  10  of  the  trade-mark  act  pro- 
viding that  assignment  of  every  registered 
trade-mark  and  every  mark  for  the  registra- 
tion of  which  application  has  been  made  must 
be  by  an  instrument  in  writing  does  not  pre- 
vent a  party  from  proving  derivation  of  the 
mark  from  predecessors  in  an  oral  transfer 
of  business  where  the  mark  was  not  registered 
and  no  application  for  registration  had  been 
made.  The  Wolf  Bros.  &  Co.  v.  Hamilton 
Brown  Shoe  Co.,  C.  D.  1906.  125  O.  G.  667. 


526 


TRADE  MARKS,  IV. 


46.  In  order  that  an  assignment  of  a  trade- 
mark may  be  recordable  in  this  office,  section 
10  of  the  trade-mark  act  of  February  20,  1905, 
clearly  provides  that  the  assignment  must  not 
only  be  by  an  instrument  in  writing,  but  that 
it  must  be  acknowledged  according  to  the  laws 
of  the  country  or  state  in  which  the  same  is 
executed.  If  the  laws  of  the  country  or  state 
do  not  require  assignments  of  trade-marks  to 
be  acknowledged  or  are  silent  on  this  point 
it  is  believed  to  be  necessary  in  order  to  com- 
ply with  the  section  mentioned  that  there  be 
an  acknowledgment  such  as  the  laws  of  the 
country  or  state  provide  for  other  instruments 
in  writing  or  legal  documents  of  similar  char- 
acter. In  re  Hunter,  C.  D.  1907,  127  O.  G. 
1253. 

47.  The  assignment  of  the  business  with 
which  a  trade-mark  is  used,  together  with  the 
trade-mark  and  good-will  of  the  business  after 
the  filing  of  an  application  for  the  registra- 
tion of  such  mark,  does  not  work  an  aban- 
donment of  the  application,  but  necessitates 
suitable  action  under  section  10  of  the  trade- 
mark act  in  order  that  registration  may  be 
issued  to  the  assignee.  L.  W.  Levy  &  Co.  v. 
Uri,  C.  D.  1907,  131  O.  G.  1687. 

48.  Where  an  application  for  registration 
of  a  trade-mark  which  is  involved  in  an  inter- 
ference has  been  assigned  and  the  assignment 
recorded  in  the  patent  office  contains  a  re- 
quest that  the  certificate  of  registration  be 
issued  to  the  assignee.  Held,  that  the  assignee 
may  be  substituted  for  the  nominal  applicant 
in  the  interference  proceedings.  L-  W.  Levy 
&  Company  v.  Uri,  C.  D.  1907,  131  O.  G.  1689. 

49.  Held,  that  the  technical  relation  of  plain- 
tiff and  defendant  does  not  exist  in  trade- 
mark interference  proceedings  and  that  the 
substitute  for  the  applicant  of  the  party  to 
whom  the  certificate  of  registration  may  be 
issued  if  the  final  decision  in  the  interference 
should  be  adverse  to  the  opposing  party 
should  not  be  refused  even  if  the  courts  do 
not  allow  the  substitution  by  a  defendant  of 
a  party  defendant.    Id. 

50.  Section  2  and  section  10  of  the  trade- 
mark act  construed  and  Held,  not  to  provide 
for  the  recording  of  a  paper  purporting  to 
grant  a  mere  territorial  right  to  the  use  of 
a  trade-mark.  In  re  National  Chemical  Com- 
pany, C.  D.  1908,  134  O.  G.  1298. 

51.  Section  10  of  the  trade-mark  act  pro- 
vides that  a  registered  trade-mark  or  a  mark 
for  the  registration  of  which  application  has 
been  made   shall  be  assignable   in  connection 


with  the  good-will  of  the  business  in  which 
the  mark  is  used,  and  it  is  only  such  assign- 
ments which  are  recordable  in  this  office.  In 
re  National  Chemical  Company,  C.  D.  1908, 
134  O.  G.  1298. 

52.  "Good  will,  like  a  trade-mark,  is  but  an 
incident  to,  and  can  have  no  existence  apart 
from,  the  business  in  which  it  had  its  origin. 
'It  is  tangible  only  as  an  incident,  as  connect- 
ed with  a  going  concern  or  business  having 
locality  or  name,  and  is  not  susceptible  of 
being  disposed  of  independently.'  (Metropoli- 
tan Bank  v.  St.  Louis  Dispatch  Co.,  149  U.  S. 
436.)"  *Mauer  Fertilizer  &  Junk  Company 
V.  Virginia-Carolina  Chemical  Company,  C. 
D.   1910,  156  O.   G.  539. 

53.  "What  is  included  under  the  term  good 
will  'varies  almost  in  every  case,  but  it  is  a 
matter  distinctly  appreciable,  which  may  be 
preserved  (at  least  to  some  extent)  if  the 
business  be  sold  as  a  going  concern,  but  which 
is  wholly  lost  if  the  concern  is  wound  up, 
its  liabilities  discharged,  and  its  assets  got 
in  and  distributed.'  (Wedderburn  v.  Wed- 
derburn,  22  Beavan,  84.)"    *Id. 

54.  The  S.  Co.  upon  retiring  from  business 
assigned  to  A.  &  A.  its  "anchor"'  trade-mark 
for  fertilizer  and  its  good  will  and  issued  cir- 
culars stating  that  the  fertilizer  sold  by  A. 
&  A.  under  this  brand  would  be  made  by  the 
same  formula  and  of  the  same  material  as 
that  of  the  S.  Co.;  but  there  was  no  evidence 
that  this  was  done  or  that  the  formula  and 
raw  material  were  actually  transferred.  Held, 
that  the  assignment  was  insufficient  to  carry 
the  right  to  use  the  trade-mark.     *Id. 

IV.  Application  of  Mark  to  Goods. 

55.  It  is  not  an  essential  and  important  pre- 
requisite that  a  mark  should  be  affixed  or  at- 
tached to  the  goods  with  which  it  is  used  to 
make  it  a  valid  trade-mark.  It  is  sufficient 
if  the  mark  is  so  associated  with  the  goods  as 
to  distinguish  them  by  the  particular  mark. 
Hay  v.  Todd  Manufacturing  Company  v. 
Querns  Brothers,  C.  D.  1899,  86  O.  G.  1323. 

56.  Where  a  mark  was  used  by  a  company 
and  it  became  recognized  by  the  trade  as  the 
distinguishing  mark  of  its  goods,  although 
not  actually  affixed  thereto.  Held,  that  it  is  in 
a  position  to  invoke  the  aid  of  equity  for  the 
protection  of  its  rights.     Id. 

57.  Where  the  mark  in  question  had  been 
so  associated  with  the  goods  of  the  junior 
party,   although   not   actually    affixed   thereto, 


TRADE  MARKS,  V. 


527 


ihat  they  had  become  known  to  the  trade  by 
that  mark,  it  would  be  an  injustice  to  award 
priority  to  its  adversary,  who  actually  affixed 
the  mark  to  the  goods,  but  was  the  later  to 
adopt  it.     Id. 

58.  Where  a  party  advertised  goods  in  a 
paper  or  periodical  under  a  certain  name,  but 
there  is  no  evidence  that  he  ever  attached  the 
name  to  the  goods  themselves,  so  that  they 
could  be  identified  as  to  origin  or  ownership, 
Held,  that  he  has  not  established  his  right  to 
the  name  as  a  trade-mark.  Hartshorn  v.  Phil- 
brick,  C.  D.  1902,  101  O.  G.  2077. 

59.  The  mere  adoption  of  a  name  for  its 
goods  does  not  vest  in  the  company  trade- 
mark rights.  To  acquire  such  rights,  the 
name  must  be  physically  applied  to  the  goods 
in  trade,  as  by  brands  or  labels  on  the  pack- 
ages sold.  Bigbie  Bros.  &  Co.  v.  Blumenthal 
&  Bickart  v.  The  J.  &  H.  Butler  Co.,  C.  D. 
1907,  126  O.  G.  1063. 

60.  In  order  that  a  party  may  acquire  a 
trade-mark  right,  it  must  be  shown  that  he 
affixed  the  mark  to  the  goods.  Bay  State 
Belting  Company  v.  Kelton-Bruce  Manufac- 
turing Company,  C.  D.  1907.  131  O.  G.  2146. 

61-.  Where  it  was  impossible  from  the  na- 
ture of  the  goods  to  put  the  trade-mark  there- 
on, the  fact  that  the  mark  was  not  placed  on 
the  cases  in  which  the  goods  were  shipped 
and  that  M.  &  Co.  sent  out  a  circular  describ- 
ing four  grades  of  press-boards,  of  which 
"Eureka"  was  one.  Held,  insufficient  to  es- 
tablish that  this  mark  was  used  merely  to  in- 
dicate grade  or  quality.  Case  Bros.  v.  E.  W. 
Murphy  &  Co.,  C.   D.  1908,  136  O.  G.  22.5. 

62.  M.  &  Co.  placed  the  mark  "Eureka"  on 
samples  of  press-boards  which  were  distrib- 
uted to  the  trade  and  which  were  identical 
with  the  boards  furnished  to  customers  in  all 
respects  except  as  to  size.  Held,  that  this 
was  such  an  association  of  the  mark  with  the 
goods  as  to  confer  upon  M.  &  Co.  the  exclu- 
sive right  to  the  use  thereof.     Id. 

63.  Assuming,  as  held  by  the  commissioner 
of  patents,  that  the  word  "Eureka"  is  a  valid 
trade-mark  for  press-boards  and  that  its  use 
on  samples  of  such  boards  was  a  trade-mark 
use,  the  evidence  is  sufficient  to  justify  the 
holding  that  M.  &  Co.  were  entitled  to  reg- 
ister this  mark.  *Casc  Brothers  v.  E.  W. 
Murphy  &  Co.,  C.  D.  1908,  136  O.  G.  228. 

64.  When  sales  memoranda  and  bills  were 
produced  showing  sales  of  oil  designated 
"Autolene,"  but  no  evidence  was  given  that 
this    name    was    affixed    to    or    marked    upon 


packages  containing  the  oil,  Held,  that  while 
the  evidence  shows  that  the  word  was  adopt- 
ed in  the  office  and  warehouse  to  indicate 
grade  or  quality  it  does  not  show  adoption 
and  use  of  it  as  a  trade-mark.  *Crescent  Oil 
Company  v.  W.  C.  Robinson  &  Son  Company, 
C.  D.  1910,  1.53  O.  G.  822. 

V.  Act  of  1870. 

65.  Where  in  a  trade-mark  interference  one 
of  the  applicants  had  in  1876  registered  the 
mark  under  the  invalid  trade-mark  act  of 
1870,  Held,  that  he  is  not  entitled  to  the  date 
of  that  registration  in  deciding  upon  whom 
the  burden  of  proof  shall  be  placed.  Vanden 
Bergh  and  Company  v.  Belmont  Distillery 
Company,  C.  D.  1902,  99  O.  G.  1624. 

66.  Under  the  present  trade-mark  law  reg- 
istration is  prima  facie  evidence  of  ownership, 
and  therefore  the  opposing  party  must  show 
use  in  the  United  States  before  its  date;  but 
this  does  not  apply  to  registration  under  the 
old  law,  which  has  been  held  unconstitutional. 
Id. 

67.  Registration  under  the  act  of  1870  has 
merely  the  effect  of  a  printed  publication  and 
conveys  no  presumption  of  use  in  this  country, 
since  that  act  did  not  require  use  as  a  condi- 
tion precedent  to  registration.     Id. 

68.  While  the  trade-mark  act  of  1870  was 
invalid  and  registrations  thereunder  furnished 
no  protection  to  the  registrants,  such  registra- 
tions constitute  some  evidence  of  ownership 
and  may  be  used  by  this  office  as  references 
imtil  overcome  in  some  way  by  the  applicant. 
Ex  parte  The  Star  Distillery  Co.,  C.  D.  1905, 
119  O.  G.  963. 

69.  Registration  under  the  unconstitutional 
act  of  1870  is  not  prima  facie  evidence  of 
ownership  in  those  cases  where  the  certificate 
of  registration  sets  forth  that  the  mark  has 
not  been  used  in  business.  Rice  &  Hochster 
V.  Fishel,  Nessler  &  Co.,  Q  D.  1906,  123  O.  G. 
997. 

70.  Although  the  trade-mark  act  of  1870 
was  held  unconstitutional,  the  registration  of 
a  mark  under  that  act  is  evidence  of  a  claim 
to  the  mark  by  the  registrant  as  of  the  date 
of  the  registration.  ♦American  Stove  Com- 
pany v.  Detroit  Stove  Works  et  al.,  C.  D.  1908, 
134  O.  G.  2245. 

71.  In  view  of  the  fact  that  notice  of  the 
application  for  registration  of  a  trade-mark 
is  published  in  the  Official  Gazette  and  since 
the  act  of  1905  provides  that  any  person  who 


528 


TRADE  MARKS,  VI,  VII,  (a),  (b). 


believes  he  will  be  damaged  may  file  an  oppo- 
sition. Held,  that  the  burden  should  not  be 
placed  upon  an  applicant  for  registration  to 
show  the  abandonment  or  non-use  of  a  mark 
registered  under  the  act  of  1870,  and  that  reg- 
istration under  the  invalid  act  of  1870  should 
no  longer  be  held  a  bar  to  the  registration  of 
a  trade-mark.  Ex  parte  Havana-American 
Company,  C.  D.  1908,  132  O.  G.  1839. 

VI.  Act  of  1881. 

72.  The  right  to  a  trade-mark  is  a  common- 
law  right,  and  the  patent  office,  under  the  act 
of  March  3,  1881,  is  only  given  authority  to 
register  lawful  trade-marks  under  certain  re- 
strictions imposed  by  that  statute.  Sleepy  Eye 
Milling  Company  v.  C.  F.  Blanke  Tea  and 
Coffee  Company,  C.  D.  1898,  85  O.  G.  190.5. 

73.  The  act  of  August  5,  1883,  applies  only 
to  such  marks  as  were  lawful  trade-marks 
prior  to  March  3,  1881,  and  only  such  marks 
may  be  registered.  Ex  parte  Gale  Manufac- 
turing Company,  C.  D.  1898,  85  O.  G.  1907. 

74.  The  constitutionality  of  the  trade-mark 
act  approved  March  3,  1881,  held  to  be  fairly 
doubtful,  d  Illinois  Watch  Case  Company  et 
al.  V.  Elgin  Nationl  Watch  Company,  C.  D. 
1899,  87  O.  G.  2333. 

75.  The  registry  of  a  trade-mark  under  the 
act  of  March  3,  1881,  confers  no  property 
rights  similar  to  those  acquired  under  the 
patent  or  copyright  laws,  which  are  grants 
by  the  United  States,  but  merely  brings  pre- 
existing rights  which  the  proprietor  may  have 
at  common  law  within  the  cognizance  of 
federal  courts  in  cases  wherein  it  is  alleged 
in  the  pleadings  that  such  trade-mark  is  used 
in  connection  with  commerce  with  foreign 
countries  or  Indian  tribes.  Otherwise  suits 
relating  to  trade-marks,  whether  registered 
or  not,  involve  no  federal  question,  nor  does 
their  registry  bring  them  within  the  provisions 
of  the  patent  laws  as  to  the  formalities  re- 
quired by  their  transfer,  d  Sarrazin  v.  W.  R. 
Irby    Cigar   and   Tobacco    Company,    Limited, 

C.  D.  1899,  88  O.  G.  387. 

76.  Registrations  under  the  act  of  1881  are 
not  rendered  invalid  by  the  act  of  1905,  and 
therefore  they  constitute  prima  facie  evi- 
dence of  ownership.  They  constitute  valid 
reference  for  applications  for  registration  now 
filed.     Ex   parte  The   Star  Distillery   Co.,   C. 

D.  1905,  119  O.  G.  963. 

77.  The  fact  of  registration  under  the  act 
of  1881  should  weigh  in   favor  of  the  appli- 


cant for  registration  where  the  near  resem- 
blance of  the  applicant's  mark  with  that  of 
a  prior  registration  is  doubtful,  but  does  not 
warrant  registration  of  the  mark  under  the 
act  of  1905  where  the  similarity  of  the  marks 
is  clearly  apparent.  Ex  parte  Smith  and 
Hemenway  Co.,  C.  D.  1907,  129  O.  G.  2500. 

VII.  Act  of  1905. 
(a)  In   General. 

78.  The  appointment  of  a  representative  in 
the  United  States  required  by  section  3  of 
the  trade-mark  act  of  1905  must  be  made  by 
the  applicant  for  registration.  Authority  to 
appoint  such  representative  may  not  be  dele- 
gated to  an  attorney.  Ex  parte  E.  Wertheimer 
&  Cie.,  C.  D.  1908,  132  O.  G.  679. 

(b)   Constitutionality  and  Construction. 

79.  The  question  whether  the  trade-mark 
act  of  February  30,  1905,  is  unconstitutional 
will  not  be  entertained  or  determined  by  the 
patent  office,  but  will  be  left  for  determination 
by  the  courts.  The  office  will  perform  the 
duties  imposed  by  the  act,  leaving  to  the 
courts  the  question  as  to  the  validity  of  the 
registrations  made  thereunder.  W.  A.  Gaines 
&  Co.  v.  C.  A.  Knecht  &  Son,  C.  D.  1906,  130 
O.  G.  1163. 

80.  A  trade-mark  interference  declared 
under  the  act  of  1881,  but  not  decided  until 
after  the  passage  of  the  act  of  February  20, 
1905,  is  appealable  to  the  court  of  appeals  of 
the  District  of  Columbia  under  the  act  of 
February  20,  1905,  where  the  only  application 
involved  has  been  amended  to  bring  it  under 
the  provisions  of  that  act.  *Giles  Remedy 
Company  v.  Giles,  C.  D.  1906,  120  O.  G.  1826. 

81.  A  trade-mark  application  which  was  in- 
volved in  an  interference  at  the  time  of  the 
passage  of  the  act  of  February  20,  1905,  was 
a  pending  application  such  as  might  be  amend- 
ed to  bring  it  under  the  act.     *Id. 

82.  Where  it  is  urged  that  the  patent  office 
is  without  jurisdiction  to  grant  registration 
of  a  trade-mark  for  the  reason  that  the  act 
under  which  the  application  is  made  is  un- 
constitutional and  void,  Held,  that  if  the  act 
is  void  the  opposer  has  no  standing  as  a  party 
to  this  proceeding,  for  the  procedure  upon 
which  the  opposer  challenges  the  validity  of 
the  act  is  provided  by  the  act  itself.  *Gaines 
&  Co.  v.  Knecht  &  Son,  C.  D.  1906,  123  O.  G. 
657. 


TRADE  MARKS,  VII,  (c). 


529 


83.  Held,  that  a  party  opposing  the  regis- 
tration of  a  trade-mark  cannot  raise  the  ques- 
tion of  the  validity  of  the  trade-mark  act,  for 
courts  sit  only  to  protect  and  vindicate  rights 
of  persons  or  property,  and  the  certificate  of 
registration  must  be  read  in  connection  with 
the  act  and  derives  its  whole  vitality  from  the 
act.  If  the  act  is  void,  so  is  the  certificate 
void  upon  its  face,  and  no  right  of  property 
is  infringed  upon  or  threatened.     *Id. 

84.  Held,  that  an  opposer  is  in  no  situation 
to  raise  the  question  of  the  constitutionality 
of  the  trade-mark  act,  and  consideration 
thereof  declined,  for  the  reasons  given  in 
Gaines  and  Co.  v.  Knecht  and  Son  (ante,  690, 
123  O.  G.  6.57.)  *W.  A.  Gaines  &  Co.  v.  Carl- 
ton Importation  Co.,  C.  D.  1906,  123  O.  G. 
1994. 

85.  The  word  "statement"  as  used  in  the 
latter  portion  of  section  2  of  the  trade-mark 
act  refers  to  the  matters  of  fact  set  forth  by 
the  applicant  in  the  declaration  and  not  to 
the  particular  paper  which  is  ordinarily  re- 
ferred to  as  the  "statement"  of  the  applica- 
tion. Ex  parte  Konigliches,  Hofbrauam  & 
Munchen,  C.  D.  1909,  146  O.  G.  720. 

(c)  Amending    At>plication    to    Bring    Under 
Act. 

86.  Where  the  examiner  of  trade-marks  re- 
fuses to  permit  the  amendment  of  an  appli- 
cation filed  under  the  law  of  1S81  to  bring  it 
under  the  act  of  February  20,  1905,  Held,  that 
his  decision  is  not  appealable  under  the  act 
of  1905,  since  the  application  must  be  con- 
sidered and  decided  under  the  act  before  an 
appeal  can  be  taken  under  it.  Ex  parte  Mark 
Cross  Company,  C.  D.  1905,  116  G.  G.  1733. 

87.  The  permission  of  an  amendment  of  an 
application  under  the  old  trade-mark  law  to 
bring  it  under  the  new  law  is  a  condition 
precedent  to  a  consideration  of  and  decision 
upon  the  case  under  the  new  law.     Id. 

88.  A  trade-mark  application  under  the  law 
of  1881  in  which  registration  had  been  finally 
refused  before  the  passage  of  the  act  of  Feb- 
ruary 20,  1905,  cannot  be  regarded  as  "pend- 
ing" at  that  date,  and  therefore  cannot  be 
amended  to  bring  it  under  that  act.     Id. 

89.  The  word  "pending"  in  section  24  of 
the  act  of  February  20,  1905,  means  unde- 
cided and  does  not  include  those  cases  in 
which  an  adjudication  has  been  made  which 
is  final  and  calls  for  no  amendment  or  other 
action.    Id. 

34 


90.  The  word  "pending"  in  section  24  of 
the  act  of  February  20,  1905,  must  be  given 
its  natural  and  ordinary  meaning,  since  there 
is  nothing  to  show  a  different  intent  by  con- 
gress, and  its  meaning  cannot  be  varied  be- 
cause of  any  mere  guess  as  to  a  different  in- 
tent.    Id. 

91.  There  must  be  an  end  some  time  to 
the  prosecution  before  this  office  of  trade- 
mark applications,  and  that  end  is  reached 
when  a  final  decision  in  the  case  is  made.    Id. 

92.  The  fact  that  it  was  possible  to  grant 
a  rehearing  in  a  case  finally  disposed  of  does 
not  take  it  out  of  the  class  of  adjudicated 
cases  and  into  the  class  of  pending  cases.  Id. 

93.  The  fact  that  the  act  of  1881  contained 
no  time  limit  for  action  upon  trade-mark  ap- 
plications furnishes  no  basis  for  the  conclu- 
sion that  all  applications  under  that  act  are 
pending  and  that  none  of  them  has  been  final- 
ly disposed  of  and  ended.    Id. 

94.  The  absence  of  a  time  limit  for  action 
in  the  statute  does  not  mean  that  applications 
are  to  be  regarded  as  pending  indefinitely,  but 
makes  it  necessary  to  look  to  something  else 
to  determine  when  the  prosecution  is  ended. 
A  final  decision  allowing  or  refusing  regis- 
tration ends  the  prosecution.    Id. 

95.  Where  an  interference  was  declared  be- 
tween trade-mark  applications  filed  under  the 
act  of  1S81,  Held,  that  the  applications  should 
be  amended  to  bring  them  under  the  act  of 
February  20,  1905,  before  the  interference 
can  be  proceeded  with.  Graham  Bros.  &  Co. 
V.  Norddeutsche  Wollkammerei  and  Kamm- 
garnspinnerei,  C.  D.  1905,  116  O.  G.  1735. 

96.  Where  the  examiner  granted  a  motion 
to  dissolve  a  trade-mark  interference  on  the 
ground  that  the  mark  in  issue  was  not  regis- 
trable under  the  act  of  1881,  and  when  the 
question  was  heard  on  appeal,  the  act  of  1881 
had  been  superseded  by  the  act  of  February 
20,  1905,  Held,  that  the  case  should  be  re- 
turned to  the  examiner  for  decision  under  the 
act  of  February  20.  Silver  Lake  Company  v. 
Samson  Cordage  Works,  C.  D.  1905,  116  O. 
G.  2010. 

97.  Where  a  party  filed  a  trade-mark  ap- 
plication under  the  act  of  1881  and  seeks  to 
amend  it  under  section  24  of  the  act  of  1905, 
to  bring  it  under  the  provisions  of  the  new 
law,  but  the  commissioner  decides  that  he  is 
not  entitled  to  amend  to  bring  the  case  under 
the  new  law.  Held,  that  the  commissioner  has 
virtually    refused    registration,   and   his    deci- 


530 


TRADE  MARKS,  VII,   (d),  1. 


sion  is  appealable.    *In  re  Mark  Cross  Com- 
pany, C.  D.  1905,  116  O.  G.  2534. 

98.  An  amendment  seeking  to  bring  an  ap- 
plication under  the  trade-mark  act  of  1905 
should  be  entered,  and  if  it  is  believed  that 
the  application  is  not  one  of  those  which  may 
be  brought  under  the  new  law  in  accordance 
with  sections  14  and  24  registration  may  be 
refused.  An  appeal  lies  from  such  refusal. 
*Id. 

99.  Sections  14  and  24  of  the  trade-mark 
act  of  1905,  permitting  the  amendment  of 
pending  applications  to  bring  them  under  the 
new  law,  do  not  apply  to  applications  in  which 
registration  has  been  finally  refused.     *Id. 

100.  A  trade-mark  application  under  the  act 
of  1881,  which  had  been  rejected  by  the  exam- 
iner and  by  the  commissioner  on  appeal  cannot 
be  regarded  as  "pending,"  and  therefore  it 
cannot  be  brought  under  the  act  of  1905  by 
amendment.     *Id. 

101.  The  use  of  the  qualifying  word  "pend- 
ing" in  regard  to  applications  which  could  be 
amended  indicates  that  congress  did  not  in- 
tend that  all  applications  for  registration  of 
trade-marks,  which  had  not  been  allowed  at 
the  time  when  the  act  went  into  effect,  could 
be  further  prosecuted  under  the  provisions  of 
that  act.    *Id. 

102.  By  permitting  the  amendment  of  "pend- 
ing" applications  to  bring  them  under  the  new 
law  congress  did  not  intend  to  open  the  door 
to  the  further  prosecution  of  all  applications 
finally  rejected  during  the  last  twenty-four 
years.    *Id. 

103.  The  words  "pending  applications"  in 
section  14  and  24  of  the  act  of  1905  must  be 
given  their  natural  and  ordinary  meaning, 
since  no  reason  is  apparent  for  giving  them 
a  forced  construction.  "Pending"  properly 
indicates  the  period  before  final  judgment 
*Id. 

104.  To  give  to  the  word  "pending"  its  nat- 
ural meaning  protects  to  the  full  extent  all 
those  who  had  applications  undecided  remain- 
ing in  the  patent  office  filed  under  the  act 
of  1881.  It  saves  the  rights  of  all  who  have 
not  exhausted  or  forfeited  all  of  their  rights 
— all  those  against  whom  no  final  judgment 
had  been  given.    *Id. 

105.  The  trade-mark  act  of  1881  provided 
for  no  action  upon  an  application  save  regis- 
tiation  or  a  refusal  of  registration,  and  when 
either  of  these  was  done  nothing  remained  to 
be  done,  and  the  application  was  no  longer 
pending.     *Id. 


106.  An  application  is  not  "pending"  after 
refusal  by  the  commissioner  merely  because 
no  rehearing  had  been  asked  for  or  had. 
Neither  the  act  of  1881  nor  the  rules  provided 
for  a  rehearing,  and  of  course  no  rehearing 
could  be  had  under  the  act  of  1881  after  it 
was  repealed.    *Id. 

107.  The  refusal  to  permit  the  amendment 
of  an  application  under  the  act  of  1881  to 
bring  it  under  the  act  of  1905  is  a  rejection 
of  the  application,  and  appealable.  It  will  not 
be  reviewed  on  interlocutory  petition.  Ex 
parte    American    Separator    Company,    C.    D. 

1905,  119  O.  G.  339. 

108.  A  trade-mark  application  is  not  to  be 
regarded  as  adjudicated  and  as  not  "pending" 
within  the  meaning  of  sections  14  and  24  of 
the  act  of  1905,  merely  because  it  had  been 
rejected  by  the  examiner.  Ex  parte  Griserin- 
Werke  Paul  Camphausen,  G.  M.  B.  H.,  C.  D. 

1906,  120  O.  G.  327. 

109.  The  mere  rejection  by  the  examiner 
of  a  trade-mark  application  under  the  act  of 
1881  did  not  finally  dispose  of  it.  since  it  was 
subject  to  amendment  and  reconsideration  if 
request  therefor  were  made  within  a  reason- 
able time.     Id. 

110.  While  a  trade-mark  application  is  not 
taken  out  of  the  class  of  pending  cases  merely 
because  it  has  been  rejected,  it  is  taken  out 
of  that  class  where  the  right  of  appeal  was 
exhausted  and  where  there  has  been  unrea- 
sonable delay  in  prosecuting  the  application. 
Id. 

111.  The  action  of  the  examiner  of  trade- 
marks holding  that  an  application  filed  prior 
to  the  passage  of  the  act  of  February  20, 
1905,  was  not  a  pending  case  and  refusing  to 
permit  an  amendment  to  the  application  to 
bring  it  under  the  provisions  of  the  act  was  a 
judicial  decision  subject  to  review  on  appeal. 
Ex  parte  The  Chapot-Shirlaw  Company,  C. 
D.  1906,  121  O.  G.  2327. 

(d)   Ten   Year  Clause. 
1.  In  General. 

112.  Section  5  of  the  act  of  February  20, 
1905,  does  not  require  or  permit  the  registra- 
tion of  marks  the  use  of  which  is  prohibited 
by  public  policy  merely  because  those  marks 
have  been  used  for  ten  years.  Ex  parte 
Cahn,  Belt  &  Co.,  C.  D.  1905,  118  O.  G.  1936. 

113.  The  "ten  years' "  clause  of  the  trade- 
mark act  does  not  permit  registration  in  any 
case  where  the  user  could  not  in  the  absence 


TRADE  MARKS,   (d),  2. 


531 


of  registration  enforce  his  right  to  the  mark 
and  exclude  others  from  the  field  by  action 
brought  in  a  court  of  equity.    Id. 

114.  The  "ten-years' "  clause  of  the  trade- 
mark act  does  not  permit  the  registration  of 
any  mark  which  would  not  be  protected  under 
the  doctrine  of  unfair  competition  in  trade 
in  the  absence  of  registration.     Id. 

115.  When  registration  is  claimed  under  the 
ten-year  proviso  of  the  trade-mark  act,  it 
should  clearly  appear  in  the  application  for 
such  registration  that  every  condition  prece- 
dent has  been  fully  complied  with.  *In  re 
A.  G.  Spalding  and  Bros.,  C.  D.  1906,  123  O. 
G.  321. 

116.  The  term  actual  use  in  the  ten-year 
proviso  of  the  trade-mark  act  should  be  strict- 
ly construed.    *Id. 

117.  When  an  applicant  seeks  a  registration 
under  the  ten-year  proviso,  he  should  not  be 
permitted  to  register  a  word  or  name  not 
recognized  by  the  law  as  a  lawful  trade-mark 
for  any  articles  of  commerce  save  those  upon 
which  he  has  actually  used  the  mark  for  the 
required  period.     *Id. 

118.  It  is  not  to  be  presumed  that  in  enact- 
ing a  registration  law  congress  intended  to 
confer  upon  parties  the  right  even  to  register 
marks,  whether  subject  or  not  to  lawful  ap- 
propriation, in  connection  with  articles  upon 
which  they  had  not  been  used.    *Id. 

119.  Held,  that  in  order  to  defeat  registra- 
tion of  a  trade-mark  under  the  proviso  of 
section  .5  of  the  act  of  February  30,  1905,  rel- 
ative to  exclusive  use  for  ten  years  prior  to 
the  passage  of  the  act  it  is  not  necessary  that 
the  identical  mark  should  have  been  used  by 
others  than  the  applicant.  The  use  of  a  mark 
which  so  nearly  resembles  that  of  the  appli- 
cant as  to  cause  confusion  in  the  mind  of  the 
public  or  to  deceive  purchasers  is  sufficient  to 
bar  such  registration.  (Ex  parte  Star  Distil- 
lery Co.,  C.  D.  190.5,  493,  119  O.  G.  964;  Cahn, 
Belt  &  Co.,  C.  D.  1906,  627,  122  O.  G.  354.) 
International  Silver  Company  v.  William  A. 
Rogers,  Limited,  C.  D.  1906,  124  O.  G.  318. 

120.  A  statement  that  the  mark  has  been 
in  exclusive  use  for  ten  years  next  preceding 
February  20,  1905,  when  the  trade-mark  act 
was  approved,  is  not  sufficient  to  bring  the 
case  under  the  ten-year  proviso  of  the  act,  as 
the  ten  years  referred  to  are  those  preceding 
April  1,  1905,  when  the  act  went  into  effect. 
Ex  parte  Joseph  B.  Funke  Company,  C.  D. 
1906,  124  O.  G.  2902. 


121.  The  allegation  of  ten  years'  exclusive 
use  next  preceding  the  passage  of  the  act  of 
February  20,  1905,  does  not  confer  registra- 
bility upon  the  mark  if  it  so  nearly  resembles 
a  registered  or  known  trade-mark  owned  and 
in  use  by  another  upon  merchandise  of  the 
same  descriptive  properties  as  to  be  likely  to 
cause  confusion  in  trade.  Ex  parte  L.  &  A. 
Scharf,  C.  D.  1907,  128  O.  G.  2531. 

122.  The  fact  that  a  mark  is  descriptive  is 
not  in  itself  a  bar  to  its  registration  under 
the  ten-year  proviso.  (Citing  the  decision  of 
the  court  of  appeals  of  the  District  of  Colum- 
bia, in  re  Cahn,  Belt  &  Company,  C.  D.  1906, 
627.  122  O.  G.  354.)      Id. 

123.  It  has  been  repeatedly  held  by  the 
courts  that  where  a  party  was  the  first  to 
apply  a  certain  mark  to  a  particular  class  of 
goods  and  by  long  and  extensive  use  the  mark 
has  become  indicative  of  the  origin  of  the 
goods  he  may  acquire  a  property  right  in  the 
mark,  even  though  it  be  a  descriptive  or  geo- 
graphical term,  which  the  courts  will  uphold 
by  requiring  others  who  use  the  mark  to  so 
qualify  it  so  as  to  distinguish  their  goods 
from  those  of  the  original  user.    Id. 

124.  Where  the  registrant  has  shown  exclu- 
sive use  of  the  word  "Hauthaway's"  for  ten 
years  next  preceding  the  passage  of  the  act 
of  1905,  Held,  that  it  is  entitled  to  register 
the  mark  "Hauthaway's  Lynn  Burnishing  Ink" 
even  if  the  term  "Lynn  Burnishing  Ink"  has 
become  the  name  of  an  article  of  commerce. 
Whittemore  Bros.  &  Co.  v.  Hauthaway  & 
Sons,  Inc.,  C.  D.  1908,  132  O.  G.  233. 

125.  A  mark  registered  under  the  ten-years' 
proviso  of  section  5  of  the  act  of  1905  is  a 
"registered  trade-mark"  and  as  such  consti- 
tutes a  bar  to  the  subsequent  registration  of 
the  same  mark  or  one  so  similar  thereto  as 
to  be  likely  to  cause  confusion  in  the  mind  of 
the  public.  Ex  parte  American  Coffee  Co.  of 
New  Orleans,  Ltd.,  C.  D.  1910,  152  O.  G.  229. 

126.  Where  one  of  the  applications  involved 
in  an  interference  is  presented  under  the  "ten- 
years'  "  clause  of  the  trade-mark  act,  the 
question  of  whether  it  is  geographical  in  sig- 
nificance is  immaterial  to  the  proper  deter- 
mination of  a  motion  to  dissolve  the  interfer- 
ence. California  Fruit  Canners  .Association 
V.  Foster,  Caldarera  &  Co.,  C.  D.  1911,  162 
O.  G.  539. 

2.  Exclusive  Use. 

127.  The  "ten-years' "  clause  of  the  trade- 
mark   act    does   not    provide    for   registration 


532 


TRADE  MARKS,  VII,   (d),  2. 


where  the  applicant  was  the  sole  user  of  the 
mark  for  ten  years,  but  requires  that  he 
shall  have  had  "exclusive"  use.  Ex  parte 
Cahn,  Belt  &  Co.,  C.  D.  1905,  118  O.  G.  1936. 

128.  To  have  "exclusive"  use  of  a  mark, 
the  applicant  must  have  the  right  to  shut  out 
or  debar  others  from  using  the  mark,  and  it  is 
not  sufficient  that  he  was  the  only  one  in  fact 
using  the  mark.    Id. 

129.  A  mark  the  use  of  which  is  prohibited 
by  public  policy  is  incapable  of  "exclusive" 
appropriation,  and  therefore  ten  years'  use 
of  such  mark  gives  no  right  to  registration. 
Id. 

130.  Held,  that  the  use  of  the  term  "Magic- 
washer"  as  a  trade-mark  for  soap  cannot  be 
considered  exclusive  under  the  "ten-year 
clause"  of  section  5  of  the  trade-mark  act 
where  it  appears  that  the  word  "Magic"  was 
in  contemporaneous  use  for  the  same  class 
of  merchandise.  Ex  parte  Iowa  Soap  Com- 
pany. C.  D.  1906,   125  O.  G.  2364. 

131.  The  word  "exclusive"  in  the  ten-year 
proviso  of  section  5  of  the  trade-mark  act  is 
believed  to  necessarily  imply  the  right  to  ex- 
clude. Provided  there  is  a  clear  right  to  ex- 
clude, however,  it  is  not  thought  that  there 
must  necessarily  have  been  sole  use,  otherwise, 
use  by  another,  no  matter  how  fraudulent  or 
trivial,  would  defeat  the  right  to  registration 
under  this  provision  of  the  statute.  Beech 
Hill  Distilling  Company  v.  Brown-Forman 
Company,  C.  D.  1907,  128  O.  G.  1293. 

132.  Where  it  appears  that  each  party  to 
this  interference  independently  originated  the 
mark  and  neither  party  had  knowledge  of  the 
use  of  the  mark  by  the  other  party  until  nearly 
two  years  after  the  Beech  Hill  Distilling  Com- 
pany began  using  the  mark  and  that  then  the 
Brown-Forman  Company  made  no  objection, 
but  acquiesced  in  the  use  of  the  mark  by  the 
former  company,  Held,  that  these  circumstan- 
ces do  not  show  such  exclusive  use  on  the  part 
of  the  Brown-Forman  Company  as  to  entitle 
it  to  register  the  mark  in  issue  under  the  ten- 
year  proviso  of  section  5  of  the  trade-mark 
act.     Id. 

133.  The  word  "exclusive"  in  the  ten-year 
proviso  is  believed  to  necessarily  imply  the 
right  to  exclude.  But  provided  there  is  a 
clear  right  to  exclude  it  is  not  thought  that 
there  must  necessarily  have  been  sole  use. 
Otherwise  use  by  another,  no  matter  how 
fraudulent  or  trivial,  would  defeat  the  right 
of  registration  under  this  proviso  of  the  act. 


Worcester  Brewing  Corporation  v.   Renter  & 
Company,  C.  D.  1907,  128  O.  G.  1687. 

134.  Where  it  appears  that  the  opposer  at 
the  time  of  its  adoption  of  the  mark  was 
aware  of  the  fact  that  it  had  been  used  for  a 
long  time  as  a  trade-mark  by  the  applicant 
and  that  said  applicant  had  built  up  a  large 
business  thereon  and  it  further  appears  that 
the  applicant  has  not  acquiesced  in  the  use  of 
the  mark  by  the  opposer  and  that  it  has  been 
guilty  of  no  laches  in  asserting  its  rights, 
Held,  that  the  applicant  has  established  a  case 
of  "exclusive  use"  within  the  meaning  of  the 
last  proviso  of  section  5  and  is  entitled  to  reg- 
ister its   mark.     Id. 

135.  The  stipulated  use  of  the  mark  "Ali- 
zarine Black  3  B"  by  parties  other  than  those 
directly  involved  in  this  proceeding  is  admis- 
sible to  show  that  the  applicant  did  not  have 
exclusive  use  of  the  mark  for  ten  years  next 
preceding  the  passage  of  the  act  of  February 
20,  1905.  Kuttroff  V.  Cassella  Color  Co.,  C. 
D.    1907,  129  O.  G.   3159. 

136.  In  a  trade-mark  opposition  proceeding 
opposing  registration  of  a  mark  under  the 
"ten-year"  proviso  of  section  5  of  the  trade- 
mark act  proof  of  contemporaneous  use  by 
the  opposer  after  the  passage  of  the  act  is 
not  sufficient  to  negative  the  "exclusive"  use 
required  by  the  statute.  In  order  to  negative 
exclusive  use,  contemporaneous  use  within  the 
ten  years  next  preceding  the  passage  of  the 
act  must  be  shown.  Oswego  Maize  Products 
Company  v.  National  Starch  Company,  C.  D. 
1908,   132   O.   G.   1588. 

137.  In  determining  if  applicant's  use  of  a 
mark  has  been  "exclusive"  within  the  meaning 
of  section  5  of  the  trade-mark  act  it  is  imma- 
terial whether  the  opposer  used  the  mark  as  a 
trade-mark  or  merely  in  a  descriptive  sense. 
♦The  National  Food  Co.  v.  Williams,  C.  D. 
1908.  133  O.  G.  232. 

138.  The  phrase  "exclusive  use"  in  the  "ten- 
years'  "  clause  of  section  5  of  the  act  of  1905 
does  not  mean  "sole  use,"  but  the  right  to 
exclude  others  from  using.  Whittemore  Bros. 
&  Co.  V.  C.  L.  Hauthaway  &  Sons,  Inc.,  C.  D. 
1908,  132  O.  G.  233. 

139.  A  non-technical  mark  is  not  entitled  to 
registration  under  the  ten-year  proviso  of  sec- 
tion 5  of  the  trade-mark  act  of  February  20, 
1905,  unless  it  is  shown  that  the  applicant  pos- 
sessed and  enjoyed  an  actual  use  of  the  mark 
for  the  specified  period  to  the  sole  exclusion 
of  all  others,  and  if  it  appears  that  during  such 
period  another  was  using  the  same  word  as  a 


TRADE  MARKS,  VIII. 


533 


trade-mark  upon  the  same  character  of  goods 
the  use  cannot  be  considered  "exclusive"  with- 
in the  meaning  of  the  statute.  Worcester 
Brewing  Corporation  v.  Rueter  &  Co.,  C.  D. 
1908,  133  O.  G.  1190. 

140.  The  evidence  considered  and  Held,  to 
show  that  appHcant  did  not  possess  and  enjoy 
the  actual  use  of  the  mark  "to  the  sole  ex- 
clusion of  all  others"  during  the  ten-year  pe- 
riod necessary  to  entitle  him  to  registration 
under  the  ten-year  proviso.  Hansen  v.  In- 
land Type  Foundry  Co.,  134  O.  G.  775. 

141.  Where  the  appellant  applied  under  the 
ten-year  proviso  of  the  act  of  February  20, 
1905,  for  the  registration  of  the  words  "Old 
Tucker"  as  a  trade-mark  for  whiskey  and  it 
was  shown  that  the  appellee  had  used  the 
words  "J.  C.  Tucker"  as  a  trade-mark  for 
whiskey  since  January  15,  1902,  Held,  that  the 
appellant  is  not  entitled  to  register  the  mark, 
since  it  had  not  had  exclusive  use  of  its  trade- 
mark for  the  statutory  period.  *Brown-For- 
man  Company  v.  Beech  Hill  Distilling  Com- 
pany, C.  D.  1908,  134  O.  G.  1565. 

142.  Where  a  mark  was  registered  under 
the  "ten-years' "  clause  of  the  trade-mark  act, 
the  use  of  that  mark  by  the  applicant  for  can- 
celation after  the  passage  of  that  act  is  no 
ground  for  canceling  the  registration.  Graves 
v.  Gunder,  C.  D.  1908,  136  O.  G.  227. 

143.  A  mark  cannot  be  registered  under  the 
"ten-years' "  clause  of  the  act  of  February 
20,  1905,  where  a  mark  so  nearly  identical 
thereto  as  to  be  likely  to  confuse  and  mislead 
the  public  has  been  used  by  another  during 
the  ten  years  ne.xt  preceding  the  passage  of 
the  act.  Kentucky  Distilleries  and  Warehouse 
Co.  V.  Old  Lexington  Club  Distilling  Co.,  C. 
D.  1908,  135  O.  G.  226. 

144.  The  requirements  of  the  sworn  decla- 
ration prescribed  by  Rule  32  of  the  trade-mark 
rules  for  marks  sought  to  be  registered  under 
the  ten-years'  proviso  of  section  5  of  the  act 
of  1905,  must  be  complied  with.  The  filing  of 
a  certified  copy  of  registeration  in  a  foreign 
country  for  a  stated  period  does  not  consti- 
tute evidence  of  exclusive  use  of  the  mark 
for  ten  years  next  preceding  February  20, 
1905,  and  is  not  the  equivalent  of  the  sworn 
statement  of  the  applicant  as  to  the  exclusive 
use  during  that  period.  Ex  parte  Bechstein, 
C.  D.  1908,  136  O.  G.  657. 

145.  The  registration  of  a  trade-mark  is 
prima  facie  evidence  of  ownership,  and  the 
presumption  is  that  the  use  of  such  mark  has 


continued.  In  an  interference  between  an  ap- 
plicant and  a  registrant  involving  a  mark  reg- 
istrable only  under  the  "ten-years'  "  clause  of 
the  trade-mark  act  of  1905  applicant  was  prop- 
erly Held,  not  entitled  to  registration  in  the 
absence  of  testimony  showing  that  the  regis- 
trant had  not  used  the  mark  during  the  ten 
years  next  preceding  the  passage  of  that  act. 
Hezel  Milling  Company  v.  Weidler,  C.  D.  1909, 
138  O.  G.  258. 

146.  The  testimony  reviewed  and  Held,  to  es- 
tablish that  applicant  did  not  have  "exclusive" 
use  of  the  mark  sought  to  be  registered  for 
ten  years  next  preceding  the  passage  of  the 
trade-mark  act.  *Wm.  Wrigley,  Jr.,  &  Co. 
V.  Norris,  C.  D.  1910,  152  O.  G.  48S. 

147.  Held,  that  the  application  for  the  can- 
celation of  the  mark  rsgistered  by  appellant 
under  the  so-called  "ten-years  clause"  of  the 
trade-mark  act  was  properly  sustained,  since 
the  evidence  establishes  that  it  did  not  have 
exclusive  use  of  the  mark  during  the  ten 
years  next  preceding  the  passage  of  that  act. 
♦Duluth-Superior  Milling  Co.  v.  Koper,  C.  D. 
1911. 

VIII.  Amendments  and  Discl.\imers. 

148.  .\pplicant  applied  for  the  registration 
of  the  words  "Pittsburgh  Pump"  on  April  16, 
1897,  and  upon  registration  being  refused  he 
amended  the  application  by  setting  forth  that 
the  essential  feature  "is  the  words  P-I-T-T-S- 
B-U-R-G-H  P-U-M-P,  arranged  in  letter- 
hyphenated  form,"  and  amended  the  statement 
to  set  forth  that  the  mark  had  been  used  since 
March  22,  1898.  Held,  that  the  amendment 
ought  not  to  have  been  received,  as  it  is  not 
good  practice  to  permit  such  a  change  to  be 
made  in  what  is  set  forth  as  the  essential  fea- 
ture of  a  trade-mark  as  might  make  the  state- 
ment as  to  the  period  of  use  not  apply  to 
the  new  mark.  Ex  parte  Pittsburgh  Pump 
Co.,  C.  D.  1898,  84  O.  G.  309. 

149.  Where  the  applicant  petitions  that  if  the 
word  "Chewies"  be  refused  registration  he 
may  be  allowed  to  amend  by  prefixing  the 
word  "Dewey's,"  so  that  the  mark  will  read 
"Dewey's  Chewies,"  Held,  that  there  is  no 
good  reason  for  permitting  him  to  add  other 
features  not  disclosed  in  the  statement.  Ex 
parte  Mclnnerney,  C.  D.  1898,  85  O.  G.  148. 

150.  It  is  not  good  practice  to  permit  such 
a  change  to  be  made  in  what  is  set  forth  as 
the  essential  feature  of  a  trade-mark  as  might 
make  the  statement   as  to  the  period  of  use 


534 


TRADE  MARKS,  IX. 


not  apply  to  the  new   mark.     Ex  parte  Cal- 
vert &  Brc,  C.  D.  1898,  85  O.  G.  288. 

151.  Where  the  original  application  stated 
that  the  salient  features  of  the  mark  were  the 
bust  of  a  child  and  the  word  "Koffio,"  and  by 
an  amendment  the  essential  feature  was  lim- 
ited to  the  word  "Koffio,"  and  it  was  urged 
by  a  contestant  that  the  applicant  is  not  en- 
titled to  register  the  word  "Koffio"  under  these 
circumstances,  Held,  that  neither  authority 
nor  reason  prohibits  an  applicant  for  registry 
of  a  trade-mark  from  changing  the  statement 
as  to  the  essential  features  of  the  mark. 
Sleepy  Eye  Milling  Co.  v.  C.  F.  Blanke  Tea  & 
Coffee  Co.,  C.  D.  1898,  85  O.  G.  1905. 

152.  Where  the  manufactures  of  the  paint 
in  order  to  obtain  a  trade-mark  in  England 
expressly  disclaimed  the  exclusive  right  to 
the  words  "Rahtjen's  Composition,"  Held,  that 
the  disclaimer  is  not  confined  to  England  and 
that  it  is  binding  upon  them.  Held,  further, 
that  their  successors  in  business  did  not  and 
could  not  acquire  from  them  the  exclusive 
right  to  the  words  as  a  trade-mark.  **Hol- 
zapfel's  Compositions  Co.,  Ltd.  v.  Rahtjen's 
American  Composition  Co.,  C.  D.  1901,  97  O. 
G.  958. 

153.  There  is  nothing  in  the  trade-mark 
rules  in  regard  to  the  admission  of  amend- 
ments and  disclaimers,  but  under  Rule  44  they 
may  be  entered  in  accordance  with  the  provi- 
sions of  Rule  107  of  the  rules  relating  to  ap- 
phcations  for  patents.  Lewis  &  Brothers' 
Company  v.  Phoenix  Paint  &  Varnish  Com- 
pany V.  National  Lead  Company,  C.  D.  1906, 
121  O.  G.  1978. 

154.  Where  a  disclaimer  is  filed  in  a  trade- 
mark application  involved  in  an  interference, 
Held,  that  judgment  should  be  entered  dis- 
posing of  the  claims  of  the  parties  to  the 
matter  disclaimed.    Id. 

155.  Where  the  disclaimer  covers  only  a 
part  of  the  issue,  judgment  should  be  entered 
as  to  that  part,  and  if  there  is  any  question  as 
to  the  existence  of  an  interference  as  to  what 
remains  the  cases  should  be  referred  to  the 
examiner  of  trade-marks  for  consideration. 
Id. 

156.  Where  applicant  wishes  to  file  in  an 
application  for  trade-mark  registration  an 
amended  declaration  containing  a  statement 
of  exclusive  use  and  it  appears  that  the  ap- 
plication as  originally  filed  contained  such  a 
statement,  but  that  it  was  canceled  upon  the 
finding  that  applicant's  use  of  the  trade-mark 
had  not  been  exclusive,  and  applicant  there- 


upon unsuccessfully  sought  registration  of 
the  mark  as  a  technical  trade-mark,  Held,  that 
the  amendment  should  not  be  permitted.  Ex 
parte  Kenyon,   C.  D.  1906,  125  O.  G.  1702. 

157.  Where  a  party  to  an  interference  who 
has  failed  to  invoke  the  remedy  provided  by 
Rule  49  of  the  trade-mark  rules  presents  a 
disclaimer  or  concession  of  priority  as  to  the 
part  of  the  issue  which,  if  accepted,  would  in 
fact  cause  a  dissolution  of  the  interference 
without  a  decision  of  priority,  the  examiner  of 
interferences  should  direct  the  attention  of  the 
commissioner  to  these  facts  under  the  pro- 
visions of  Rule  48.  Columbia  River  Packers 
Association  v.  Nave-McCord  Mercantile  Com- 
pany, C.  D.  1909,  145  O.  G.  511. 

158.  Where  the  commissioner  refers  an  in- 
terference to  the  examiner  of  trade-marks  to 
consider  disclaimers  or  concession  of  priority, 
the  latter  will  hear  the  case  inter  partes,  and 
his  decision  will  be  binding  upon  the  exam- 
iner of  interferences.     Id. 

159.  Application  was  made  for  registration 
of  a  trade-mark  consisting  of  the  words  "La 
Vona."  Registration  was  refused  in  view  of 
the  registered  mark  "Larona,"  An  amend- 
ment was  therefore  filed  directing  the  can- 
celation of  the  word  "La"  and  asserting  that 
"Vona"  was  the  mark  claimed  by  applicant. 
Held,  that  this  change  should  not  be  permit- 
ted. Ex  parte  Newman,  C.  D.  1910,  159  O. 
G.  993. 

160.  An  applicant  will  not  be  permitted  to 
modify  the  mark  originally  shown  in  the 
drawing  by  the  elimination  of  a  fanciful,  ar- 
bitrary, and  salient  feature  thereof  unless 
there  shall  be  filed  a  disclaimer  of  such  fea- 
ture duly  verified  by  the  applicant.  Ex  parte 
Wayne  Poultry  Tonic  Co.,  C.  D.  1911,  164  O. 
G.  251. 

IX.  Appeal. 

161.  A  decision  of  the  court  of  appeals  of 
the  District  of  Columbia  on  appeal  from  the 
commissioner  of  patents  is  not  "final"  within 
the  meaning  of  sections  8  and  9  of  the  act  of 
February  9,  1893  (27  Stats.,  434,  436,  chap. 
74),  and  therefore  is  not  appealable  to  the 
Supreme  Court  of  the  United  States.  **E.  C. 
Atkins  &  Company  v.  Moore,  Commissioner 
of  Patents,  C.  D.  1909,  142  O.  G.  571. 

162.  Under  section  4914  of  the  Revised 
Statutes  no  opinion  or  decision  of  the  court 
of  appeals  on  appeal  from  the  commissioner 
precludes    "any    person    interested    from    the 


TRADE  MARKS,  X. 


535 


right  to  contest  the  validity  of  such  patent  in 
any  court  wherein  the  same  may  be  called  in 
question,"  and  by  section  4915  a  remedy  by 
bill  in  equity  is  given  where  a  patent  is  re- 
fused, and  we  regard  these  provisions  as  ap- 
plicable in  trade-mark  cases  under  section  9 
of  the  act  of  February  20,  1905.     **Id. 

163.  The  action  of  the  examiner  of  trade- 
marks refusing  registration  on  the  ground 
that  the  mark  had  not  been  used  in  commerce 
at  the  time  the  application  for  registration 
was  filed  is  reviewable  on  appeal  and  not  on 
petition.     Ex  parte  The  Commercial  Vehicle, 

C.  D.  1910,  154  O.  G.  835. 

164.  Where  an  application  for  registration 
of  a  trade-mark  was  filed  alleging  that  the 
mark  had  been  in  use  since  a  certain  date,  and 
it  appeared  from  specimens  subsequently  filed 
that  the  mark  had  not  been  used  at  that  time, 
Held,  that  the  date  of  filing  cannot  be  changed 
to  the  date  on  which  the  specimens  were  filed. 
Id. 

165.  Section  18  of  the  trade-mark  act  of 
February  20,  1905,  places  suits  brought  under 
that  act  within  the  scope  of  the  act  of  March 
3,  1891,  establishing  the  circuit  court  of  ap- 
peals, and  a  final  decision  of  such  court  can 
be  reviewed  in  the  Supreme  Court  of  the 
United  States  only  upon  certiorari.  **Hutch- 
inson,  Pierce  &  Co.  v.  Loewy,  C.  D.  1910,  155 
O.  G.  556. 

166.  Where  in  an  interference  between 
Planten  and  the  Canton  Pharmacy  Company 
the  commissioner  held  that  the  marks  of  both 
parties  were  descriptive  and  no  appeal  was 
taken  by  the  latter,  Held,  that  the  decision  of 
the  commissioner  was  res  adjudicata  and  that 
registration  of  the  mark  under  the  ten-years' 
clause  was  properly  refused  to  the  successor 
in  business  of  the  Canton  Pharmacy  Company. 
*In  re  The  Safety  Remedy  Company,  C.  D. 
1910,  159  O.  G.  994. 

167.  Where  the  registration  of  the  word 
"Autola"  as  a  trade-mark  for  cigars  was  re- 
fused in  view  of  the  prior  registration  of  the 
word  "Au-to-do"  for  the  same  goods.  Held, 
that  on  an  appeal  from  such  refusal  appli- 
cant cannot  question  the  validity  of  such  prior 
registration.     *In   re   Fred  Wilcot  &   Co.,   C. 

D.  1911,  162  O.  G.  530. 

X.  Abandonment. 

168.  The  word  "Non-Tox"  as  a  trade-mark 
for  "Carbonated  Root  and  Herb  Extract"  was 
refused  registration  on  a  prior  trade-mark  for 


a  certain  medicinal  tonic  to  remove  the  eflfects 
of  intoxication,  the  essential  feature  being 
the  word  "Anti-Tox."  It  was  shown  that  the 
registered  mark  had  become  abandoned. 
Held,  that  the  differences  in  the  marks,  the 
differences  in  the  articles  to  which  they  are 
intended  to  be  applied,  and  the  registered 
mark  having  become  abandoned,  would  war- 
rant giving  the  benefit  of  the  doubt  to  appli- 
cant and  allowing  registration.  Ex  parte 
Macdonald,  C.  D.  1898,  85  O.  G.  150. 

169.  Held,  with  regard  to  the  defense  of 
abandonment  that  there  is  but  slight  evidence 
of  any  personal  intention  on  the  part  of  Sax- 
lehner  to  abandon  the  use  of  the  word  "Hun- 
yadi"  or  to  dedicate  the  same  to  the  pub- 
lic. **Saxlehner  v.  Eisner  &  Mendelson  Co., 
C.  D.  1900,  93  O.  G.  940. 

170.  To  establish  the  defense  of  abandon- 
ment it  is  necessary  to  show  not  only  acts 
indicating  a  practical  abandonment,  but  an 
actual  intent  to  abandon.  Acts  which  unex- 
plained would  be  sufficient  to  establish  aban- 
donment may  be  answered  by  showing  that 
there  never  was  an  intent  to  give  up  and  relin- 
quish the  right  claimed.    **Id. 

171.  Evidence  that  the  Apollinaris  Company, 
which  had  the  exclusive  right  to  sell  the  medi- 
cinal water  for  Saxlehner  in  the  United  States, 
intended  to  abandon  the  right  to  the  name 
"Hunyadi"  might  be  sufficient  as  against  it 
to  defeat  a  suit  for  an  injunction,  but  it 
would  not  be  binding  upon  Saxlehner  unless 
done  with  his  knowledge  and  acquiescence. 
*»Id. 

172.  To  establish  abandonment  it  is  neces- 
sary to  show  not  only  acts  indicating  a  prac- 
tical abandonment,  but  an  actual  intent  to 
abandon  the  trade-mark.  J.  R.  Newberry's 
Co.  V.  Jos.  J.  O'Donohue's  Sons,  C.  D.  1904, 
111  O.  G.  299. 

173.  A  firm  cannot  appropriate  a  trade- 
mark belonging  to  another  and  subsequently 
acquire  a  good  title  thereto  by  the  proved 
abandonment  of  the  mark  by  the  first  pro- 
prietor. Auerbach  &  Sons  v.  Hall  &  Hay- 
nard  Co.,  C.  D.  1904,  111  O.  G.  806. 

174.  Where  a  party  shows  that  his  opponent 
is  not  actively  engaged  in  selling  goods  having 
thereon  the  trade-mark,  but  it  appears  that 
the  inactivity  covers  only  a  few  months,  due 
to  business  troubles,  that  the  part)-  intends 
to  resume  operations,  and  that  he  has  on  hand 
a  stock  of  the  goods  for  sale.  Held,  that  aban- 
donment of  the  mark  is  not  proved.     Gold- 


536 


TRADE  MARKS,  XI. 


smith  V.  United   Shirt  Vest   Co.,  C.  D.   1905, 
119  O.  G.  1261. 

175.  Where  after  rejection  the  trade-mark 
applicant  abandoned  all  intention  of  further 
prosecuting  the  case,  it  was  not  a  live  or  pend- 
ing case,  but  was  abandoned.  Ex  parte 
Griserin-Werke,  Paul  Camphausen,  C.  D. 
1906,  120  O.  G.  327. 

176.  Failure  to  take  any  action  in  prosecu- 
tion of  an  application  for  a  long  period  of 
time  is  evidence  of  an  intention  to  abandon 
the  application  and  in  the  absence  of  proof 
to  the  contrary  is  to  be  taken  as  establishing 
the  fact.     Id. 

177.  An  application  for  the  registration  of 
a  trade-mark  is  not  notice  to  the  public 
through  this  office  of  the  applicant's  claim  of 
ownership  unless  that  application  is  prose- 
cuted with  reasonable  diligence.  The  appli- 
cation is  abandoned  by  laches.     Id. 

178.  No  hard  and  fast  rule  can  be  laid  down 
as  to  what  delay  will  be  regarded  as  an  aban- 
donment of  a  trade-mark  application;  but 
ordinarily  a  delay  for  more  than  one  year  will 
be  deemed  unreasonable  unless  excuse  is  made 
therefor.     Id. 

179.  Where  a  party  invokes  the  rule  laid 
down  in  O'Rourke  v.  Central  City  Soap  Com- 
pany (C.  D.  1886,  217,  35  O.  G.  217,  26  Fed. 
Rep.  576),  to  the  effect  that  one  who  adopts  a 
trade-mark  while  it  is  the  property  of  another 
cannot  acquire  a  good  title  thereto  by  the 
abandonment  of  the  mark  by  the  first  pro- 
prietor, and  the  evidence  shows  that  both  par- 
ties to  the  interference  adopted  the  trade- 
mark in  issue  at  a  date  when  it  was  the  prop- 
erty of  a  third  party.  Held,  that  neither  of  the 
parties  to  the  interference  is  entitled  to  any 
exclusive  right  in  the  mark  or  to  registration 
of  the  same.     Id. 

180.  Where  both  of  the  interferants  adopt- 
ed the  trade-mark  in  issue  while  the  same  was 
the  property  of  a  third  party,  Held,  that,  in- 
dependently of  the  ruling  in  O'Rourke  v.  Cen- 
tral City  Soap  Company,  neither  party  can 
acquire  exclusive  rights  in  the  mark  upon  its 
abandonment  by  the  third  party,  for  the  rea- 
son that  the  rightful  use  of  the  mark  by  the 
interferants  commenced  at  the  same  time — 
namely,  at  the  date  of  the  third  party's  aban- 
donment— and  priority  cannot  therefore  be 
awarded  to  either  party.     Id. 

181.  Held,  that  even  if  the  evidence  showed 
that  one  of  the  interferants  adopted  the  trade- 
mark in  issue  before  and  the  other  after  the 
abandonment  by   the  original   rightful  owner 


the  ruling  in  O'Rourke  v.  Central  City  Soap 
Company  would  not  warrant  the  registration 
of  the  mark  to  either  party,  for  the  reason 
that  while  the  first  of  the  interferants  to 
adopt  the  mark  is  precluded  from  acquiring 
any  exclusive  rights  by  the  ruling  in  the  case 
referred  to  he  still  is  entitled  to  use  the  mark 
and  cannot  be  deprived  of  that  right  by  an- 
other later  to  adopt  and  use  it.    Id. 

182.  Where  an  applicant  presented  on  ap- 
peal affidavits  relative  to  the  abandonment  of 
the  registrant's  mark  in  which  his  applica- 
tion had  been  rejected  and  the  registration 
was  under  the  invalid  act  of  1870,  Held,  that 
the  case  should  be  remanded  to  the  exam- 
iner of  trade-marks  for  consideration  of  the 
affidavits.  Ex  parte  Penn  Tobacco  Co.,  C. 
D.  1906,  125  O.  G.  2764. 

183.  On  appeal  consideration  should  not  be 
given  to  affidavits  which  were  not  before  the 
tribunal  from  which  the  appeal  is  taken.     Id. 

184.  A  declaration  of  abandonment  filed 
for  the  purpose  of  terminating  an  interfer- 
ence must  be  unconditional  and  unequivocal. 
(Gabrielson  v.  Felbel,  C.  D.  1900,  108,  121  O. 
G.  691.)  The  Thomson  Wood  Finishing  Com- 
pany V.  Rinald  Brothers,  C.  D.  1907,  130  O. 
G.  980. 

185.  The  non-user  of  a  trade-mark  for 
liquor  for  a  period  of  years,  caused  by  a  re- 
striction upon  the  sale  thereof  by  a  state  law, 
did  not  operate  as  an  abandonment  of  the 
property  rights  in  the  mark  which  were  ac- 
quired prior  to  the  passage  of  the  said  law. 
*The  Hannis  Distilling  Co.  v.  Geo.  W.  Torrey 
Co.,  C.  D.  1909,  141  O.  G.  569. 

186.  The  non-user  of  a  trade-mark  for  liq- 
uor for  a  period  of  years,  caused  by  a  restric- 
tion upon  the  sale  thereof  by  a  state  law, 
should  not  be  held  to  operate  as  an  abandon- 
ment of  the  property  rights  in  the  mark  which 
were  acquired  prior  to  the  passage  of  the 
state  law  where  it  appears  that  the  owner  of 
the  mark  was  engaged  in  interstate  trade  and 
there  was  nothing  in  the  restricting  act  to  pre- 
vent the  manufacture  of  the  liquor  bearing  the 
mark  and  the  disposal  of  it  in  other  states. 
*Id. 

XI.  Cancellation. 

187.  Where  in  an  interference  case  involv- 
ing a  registered  trade-mark  this  office  ad- 
judges that  the  registrant  is  not  the  owner 
of  the  mark  and  thereafter  the  attorney  for 
the  registrant  files  the  certificate  of  registra- 


TRADE  MARKS,  XI. 


537 


tion  with  the  request  that  it  be  canceled,  Held, 
that  the  registration  will  be  canceled.  Ex 
parte  Bloomington  Canning  Co.,  C.  D.  1905, 
119  O.  G.  223.5. 

188.  Section  13  of  the  act  of  1905,  provid- 
ing for  the  cancellation  of  trade-mark  regis- 
trations, applies  only  to  those  registrations 
made  under  that  act.  Funke  v.  Baldwin,  C.  D. 
1907,  127  O.  G.  392. 

189.  By  section  30  of  the  act  of  1905  all 
legislation  inconsistent  with  the  provisions  of 
the  act  of  1905  is  repealed  except  the  trade- 
mark acts  of  1881  and  1882  in  their  applica- 
tion to  registrations  made  thereunder.  The 
acts  of  1881  and  1882  are  to  stand,  so  far  as 
registrations  made  thereunder  are  concerned, 
whether  consistent  with  the  act  of  1905  or 
otherwise.     Id. 

190.  Where  certain  words  were  registered 
as  a  trade-mark  for  merchandise  of  certain 
characteristics  and  the  words  as  used  by  the 
registrant  in  trade  represented  goods  of  dif- 
ferent characteristics,  Held,  that  the  regis- 
tration should  be  canceled.  Pioneer  Suspen- 
der Co.  V.  Louis  Oppenheimer's  Sons,  C.  D. 
1907,  128  O.  G.  1293. 

191.  Held,  that  the  right  to  use  referred  to 
in  the  first  ground  of  cancellation  set  forth 
in  section  13  of  the  trade-mark  act  means  a 
right  of  exclusive  use  and  that  the  use  re- 
ferred to  in  the  second  ground  is  a  use  of 
the  mark  as  a  trade-mark  for  the  goods  men- 
tioned in  the  registration.     Id. 

192.  The  right  registered  is  a  supposed  right 
to  exclusive  use.  The  evident  intention  of 
congress  was  to  permit  any  person  deeming 
himself  to  be  injured  by  a  registration  to 
question  the  validity  in  the  patent  office  and 
to  obtain  cancellation  thereof  if  the  registrant 
had  no  trade-mark  right  therein  at  the  time 
of  his  application  for  registration  or  if,  having 
had  such  a  right  at  that  time,  he  has  subse- 
quently lost  the  same.  Magic  Curler  Com- 
pany V.  Porter,  C.  D.  1907,  128  O.  G.  2088. 

193.  The  application  for  cancellation  need 
not  show  why  an  opposition  was  not  filed. 
The  question  as  to  the  registrability  of  a 
mark  is  not  res  ad  judicata  by  reason  of  its 
registration.     Id. 

194.  The  allegation  of  continuous  use  of 
the  mark  by  the  application  for  cancellation  is 
immaterial,  as  the  applicant  is  not  seeking 
registration  and  may  establish  a  case  for 
cancellation  without  such  use.     Id. 

195.  Where  the  examiner  of  interferences 
required    the   applicant    for   cancelation    of   a 


registered  mark  to  file  in  duplicate  affidavits 
showing  the  facts  upon  which  it  relied  in  its 
application  for  cancellation  before  further  ac- 
tion would  be  taken,  Held,  the  action  of  the 
examiner  of  interferences  is  deemed  reason- 
able and  proper  in  requiring  an  applicant  for 
the  cancellation  of  a  registered  mark  to  make 
such  a  showing  of  facts  as  would  establish, 
if  proved,  that  the  registrant  was  not  entitled 
to  the  use  of  the  mark  at  the  date  of  his  ap- 
plication for  registration  thereof  or  that  the 
mark  is  not  used  by  the  registrant  or  has  been 
abandoned.  (Sec.  13  of  Trade-Mark  Act  of 
February  20,  1905.)  Illinois  Hydraulic  Ce- 
ment Manufacturing  Company  v.  Utica  Hy- 
draulic Cement  Company,  C.  D.  1907,  129  O. 
G.  2502. 

196.  Where  application  is  made  for  the 
cancellation  of  a  registration.  Held,  that  un- 
less a  prima  facie  case  is  made  out,  such  as  is 
required  for  the  institution  of  a  public-use 
proceeding  in  case  of  application  for  patent, 
it  is  not  thought  that  the  registrant  should 
now  be  called  upon  to  defend  its  right  or  for- 
feit its  registration  upon  its  failure  to  do  so. 
Id. 

197.  Where  the  application  for  cancellation 
is  in  the  form  of  an  affidavit  sworn  to  by  the 
president  of  the  company  filing  the  application 
and  contains  positive  allegations  of  facts 
which,  if  true,  constitute  proper  ground  for 
cancellation  of  the  registration  under  the  stat- 
ute, Held,  that  a  prima  facie  case  is  made  out, 
such  as  will  warrant  instituting  the  cancella- 
tion proceeding  and  requiring  the  registrant 
to  file  its  plea,  answer,  or  demurrer.     Id. 

198.  Where  a  mark  was  registered  under 
the  "ten-years"  clause  of  section  5  of  the 
trade-mark  act  of  1905,  a  showing  that  the 
registrant  was  not  the  sole  user  of  the  mark 
during  the  ten  years  next  preceding  the  pas- 
sage of  that  act  is  not  sufficient  to  justify  the 
cancellation  of  the  mark.  Whittemore  Bros. 
&  Co.  V.  C.  L.  Hauthaway  &  Sons,  Incor- 
porated, C.  D.  1908,  132  O.  G.  233. 

199.  As  the  statute  providing  for  the  can- 
cellation of  registered  trade-marks  (acts  of 
Feb.  20,  1905,  sec.  26,  33  Stat.  L.)  does  not 
contemplate  that  any  one  may  petition  the 
commissioner  to  cancel  a  trade-mark  regular- 
ly registered,  but  it  does  provide  that  any 
one  who  "shall  deem  himself  injured"  may  do 
so,  the  petition  for  cancellation  must  contain 
a  statement  of  fact  on  his  jurisdictional  ques- 
tion sufficiently  full  to  show  that  the  petitioner 
has  been  injured  by  the  registration,  and  this 


538 


TRADE  MARKS,  XI. 


fact  must  not  be  left  to  conjecture,  but  must 
affirmatively  appear,  and  where  such  a  state- 
ment of  fact  is  lacking  the  petition  is  demur- 
rable. *E.  Mcllhenny's  Sons  v.  New  Iberia 
Extract  of  Tobasco  Pepper  Company,  Lim- 
ited, C.  D.  1908,  133  O.  G.  995. 

200.  An  averment  in  a  petition  for  the  can- 
cellation of  the  registered  trade-mark  "To- 
basco" for  pepper-sauce  that  petitioner  has 
used  such  trade-mark  is  not  sufficient,  for 
the  reason  that  unless  the  word  has  been  used 
in  the  same  business  no  injury  contemplated 
by  the   statute  would   have   followed.     *Id. 

201.  In  a  petition  for  the  cancellation  of 
a  registered  trade-mark  a  general  averment 
that  the  registration  "has  been  much  to  the 
predjudice,  damage,  and  loss"  of  the  petitioner 
unsupported  by  averments  of  facts  is  merely 
the  conclusion  of  the  pleader  and  is  not  a 
sufficient  averment  of  damage  to  give  peti- 
tioner a  standing  in  a  cancellation  proceeding. 
*Id. 

202.  The  registration  of  a  trade-mark  con- 
sisting of  a  comet  having  the  representation 
of  a  star  at  its  head  instead  of  the  usual  neb- 
ulous mass  and  associated  therewith  the  words 
"The  Comet"  will  not  be  canceled  upon  the 
application  of  the  owner  of  the  registered 
mark  "Star"  for  the  same  class  of  goods,  as 
there  is  no  such  near  resemblance  between  the 
marks  as  to  cause  confusion  in  trade.  Hutch- 
inson, Pierce  &  Co.  v.  Loewy,  C.  D.  1908,  134 
O.  G.  256. 

203.  The  owner  of  a  technical  trade-mark 
consisting  of  the  representation  of  a  star  and 
the  word  "Star"  has  no  such  right  therein  as 
would  warrant  the  cancellation  by  the  patent 
office  of  a  registered  mark  for  the  same  class 
of  goods  adopted  at  a  later  date  consisting 
of  a  star  and  other  features  forming  a  part 
thereof  which  clearly  distinguishes  as  a  whole 
from  the  prior  mark.     Id. 

204.  The  term  "entitled  to  use"  in  section 
13  of  the  trade-mark  act  means  exclusive  use, 
and  where  it  appears  that  the  registrant  was 
not  the  first  to  adopt  and  use  a  mark  the  reg- 
istration should  be  cancelled.  Familton  v.  The 
Alonzo  O.  Bliss  Medical  Company,  C.  D. 
1908,  135  O.  G.  1359. 

205.  Where  a  non-technical  mark  is  regis- 
tered under  the  "ten-years' "  clause  and  it  ap- 
pears that  the  registrant  did  not  during  the 
ten  years  next  preceding  the  passage  of  the 
act  have  sole  use  of  the  mark,  the  registra- 
tion should  be  canceled.    Id. 


206.  The  fact  that  a  mark  which  is  regis- 
tered under  the  "ten-years'  "  clause  is  descrip- 
tive and  that  therefore  the  applicant  for  can- 
cellation can  acquire  no  property  rights  there- 
in is  of  no  moment  so  far  as  the  rights  of 
the  registrant  are  concerned.     Id. 

207.  The  mark  registered  was  "Graves 
Tooth  Powder."  Held,  that  no  ground  for 
canceling  said  mark  would  be  established  by 
showing  that  the  mark  actually  used  was  "Dr. 
E.  L.  Graves  Tooth  Powder."  (Standard  Un- 
derground Cable  Co.,  C.  D.  1906,  687,  123  O. 
G.  656,  27  App.  D.  C.  320.)  Graves  v.  Gunder, 
C.  D.  1908,  136  O.  G.  227. 

208.  The  fact  that  a  party  registered  the 
words  "Dr.  E.  L.  Graves  Tooth  Powder"  and 
"Dr.  E.  L.  Graves  Unequalled  Tooth  Powder" 
does  not  constitute  a  ground  for  canceling  his 
registration  of  the  words  "Graves  Tooth  Pow- 
der." (Anheuser-Busch  Brewing  Association 
V.  D.  G.  Yuengling  et  al.,  C.  D.  1907,  232,  129 
O.  G.  3501.)     Id. 

209.  After  pleadings  have  been  filed,  proofs 
taken,  and  the  case  ready  for  final  hearing  an 
applicant  for  cancellation  will  not  be  permit- 
ted to  withdraw  his  application  without  pre- 
judice to  his  right  to  file  a  new  application. 
Dutcault  v.  The  New  York  Herald  Company, 
C.  D.  1908,   136  O.  G.  437. 

210.  The  commissioner  has  no  authority  to 
cancel  a  certificate  of  registration  of  a  trade- 
mark except  in  accordance  with  the  provisions' 
of  section  13  of  the  trade-mark  act  of  Febru- 
ary 20,  1905.  Case  v.  Quirk,  C.  D.  1908,  136 
O.  G.  1531. 

211.  An  applicant  who  has  been  rejected  on 
a  prior  registration  may  contest  with  the  reg- 
istrant the  question  of  priority  of  adoption 
and  use  in  a  cancellation  proceeding  brought 
under  section  13  of  the  trade-mark  act  of 
February  20,  1905,  and  is  not  obliged  to  enter 
an  interference  or  an  opposition  proceeding 
provided  for  by  sections  6  and  7  of  that  act. 
The  E.  T.  Fraim  Lock  Company  v.  Reading 
Hardward  Company,  C.  D.  1909,  140  0.  G. 
255. 

212.  The  mere  failure  of  the  owner  of  a 
trade-mark  through  a  period  of  years  to  as- 
sert his  rights  does  not  deprive  him  from 
bringing  a  proceeding  for  the  cancellation  of 
the  registered  mark,  alleged  to  be  the  same 
in  substance  and  to  cover  the  same  class  of 
goods,  for  the  purpose  of  determining  the 
ownership  of  the  mark.     Id. 

213.  Section  13  of  the  trade-mark  act  con- 
strued and  Held,  to  confer  upon  the  commis- 


TRADE  MARKS,  XII,  XIII. 


539 


sioner  of  patents  authority  to  cancel  a  mark 
registered  under  the  "ten-years' "  clause  where 
it  is  made  to  appear  in  a  proceeding  brought 
in  accordance  with  the  provisions  of  that  sec- 
tion that  the  registrant  was  not  the  exclusive 
user  of  the  mark  for  ten  years  next  preceding 
the  passage  of  the  trade-mark  act.  E.  Mc- 
Ilhenny's  Sons  v.  New  Iberia  Extract  of  To- 
basco  Pepper  Co.,  Ltd.,  C.  D.  1910,  153  O.  G. 
547. 

214.  Where  M.,  a  patentee  who  had  adopted 
and  used  a  trade-mark  on  roasting-pans,  gave 
a  license  to  R.  to  manufacture  and  sell  the 
roasting-pans  of  such  patent  and  suggested 
the  use  thereon  of  the  mark  which  he  had 
adopted,  Held,  that  the  giving  of  the  license 
did  not  constitute  an  abandonment  of  the 
trade-mark.  *Mathy  v.  The  Republic  Metal 
Ware  Co.,  154  O.  G.  1109. 

215.  Where  the  owner  of  a  trade-mark 
abandons  it,  such  mark  becomes  the  subject  of 
reappropriation  and  the  property  of  the  first 
taker.  *Mayer  Fertilizer  and  Junk  Co.  v. 
Virginia-Carolina  Chemical  Co.,  C.  D.  1910, 
156  O.  G.  539. 

216.  The  M.  Co.  adopted  a  trade-mark 
while  it  was  being  used  by  the  S.  Co.,  who 
subsequently  abandoned  the  same,  but  at- 
tempted to  assign  it  to  A.  &  A.  The  record 
did  not  show  that  A.  &  A.  began  to  use  it  im- 
mediately after  its  abandonment  by  the  S. 
Co.  Held,  that  the  use  by  the  M.  Co.  after 
the  abandonment  amounted  to  a  valid  appro- 
priation and  entitles  it  to  registration.    *Id. 

217.  Where  two  parties  are  using  a  mark 
at  the  time  of  its  abandonment  by  the  orig- 
inal owner  thereof.  Held,  that  neither  party 
acquires  title  to  such  mark.  (Mayer  Ferti- 
lizer Co.  V.  Virginia  Carolina  Chemical  Co., 
156  O.  G.  539,  35  App.  D.  C.  425,  distinguished. 
♦Justin    Seubert,   Inc.   v.   A.   Santaella  &   Co., 

C.  D.  1911,  166  O.  G.  987. 

218.  The  loss  of  the  right  of  property  in 
trade-marks  upon  the  ground  of  abandonment 
is  not  to  be  viewed  as  a  penalty  either  for 
non-user  or  for  the  creation  and  use  of  new 
devices.  There  must  be  found  as  intent  to 
abandon,  or  the  property  is  not  lost;  and 
while,  of  course,  as  in  other  cases,  intent  may 
be  inferred  when  the  facts  are  shown,  yet  the 
facts  must  be  adequate  to  support  the  finding. 
**Pere  Alfredo  Loris  Baghn,  Superior  Gen- 
eral of  the  Order  of  Carthusian   Monks,   C. 

D.  1911,  169  O.  G.  449. 

219.  The  Order  of  Carthusian  Monks, 
which  for  many  years  had  made  at  La  Grande 


Chartreuse,  in  France,  and  sold  a  liqueur 
under  the  name  "Chartreuse,"  was  expelled 
from  France  by  the  government,  and  posses- 
sion of  their  property  in  France  was  taken  by 
a  liquidator  of  the  French  court.  They  es- 
tablished a  factory  in  Spain  and  continued  to 
manufacture  a  liqueur  in  accordance  with  the 
original  formula.  They  used  on  their  labels 
the  words  "Peres  Chartreux"  and  the  words 
"Liqueur  Fabriquee  a  Tarragone  par  le  Peres 
Chartreux."  They  made  vigorous  efforts  in 
this  and  other  countries  to  prevent  the  use  of 
the  old  marks  by  the  liquidator.  Held,  that 
these  facts  do  not  establish  an  abandonment 
l)y  the  monks  of  their  rights  in  the  trade-mark 
"Chartreuse."    **Id. 

XII.  Correction  of  Registration. 

220.  Where  a  trade-mark  is  registered  by 
a  corporation  and  an  affidavit  is  filed  alleging 
that  through  mistake  its  place  of  incorpora- 
tion was  incorrectly  given  and  it  is  asked  that 
a  printed  copy  of  the  affidavit  be  attached  to 
each  copy  of  the  registration.  Held,  that  the 
request  will  be  denied,  since  the  mistake  was 
not  due  to  the  fault  of  the  office.  Ex  parte 
Crucible  Steel  Company  of  America,  C.  D. 
1903,  107  O.  G.  270. 

221.  Where  a  trade-mark  registration  con- 
tains an  error  in  the  descriptive  language 
stating  the  place  of  incorporation,  Held,  that 
the  error  is  not  of  consequence,  and  since  it 
does  not  affect  the  validity  of  the  registration 
no  correction  is  necessary.     Id. 

XIII.  Coat  of  .-Kri^s,  Society  Emblems,  Sym- 
bols, Etc. 

222.  \  Greek  cross  and  the  words  "Red 
Cross"  may  be  registered  as  a  trade-mark 
for  elastic  goring  to  be  used  in  congress  boots 
and  shoes.  Ex  parte  E.  &  A.  H.  Batcheller 
Company,  C.  D.  1898,  85  O.  G.  1583. 

223.  .-Kpplicant's  use  of  the  mark  for  elastic 
goring  to  be  used  in  the  manufacture  of  con- 
gress boots  or  shoes  would  not  tend  to  mis- 
lead the  purchasers,  as  the  purchasers  of  this 
class  of  goods  are  manufacturers  of  boots  and 
shoes  who  purchase  applicant's  elastic  goring 
presumably  because  of  the  superiority  of  the 
goods  or  because  the  price  is  satisfactory. 
Id. 

224.  In  view  of  the  various  uses  to  which 
a  red  Greek  cross  has  been  put  no  organiza- 
tion can  claim  such  exclusive  right  to  or  con- 


540 


TRADE  MARKS,  XIII. 


trol  over  it  as  to  prevent  its  use  within  lawful 
limitations  as  a  trade-mark.     Id. 

225.  The  facsimile  of  the  mark  presented 
for  registration  discloses  the  flag  of  the  Unit- 
ed States  crossed  diagonally  by  a  band  or 
panel,  upon  which  appears  the  word  "Stand- 
ard," and  distributed  about  the  flag  are  stars, 
the  whole  being  inclosed  in  concentric  cir- 
cles, between  which  appear  the  words  "Stand- 
ard Fashion  Company,  New  York."  The  es- 
sential features  are  recited  as  consisting  of 
"the  representation  of  a  standard  or  flag  and 
a  number  of  stars  distributed  about  the  stand- 
ard or  flag."  Held,  that  as  presented  the  mark 
is  not  registrable.  Ex  parte  Standard  Fashion 
Company,  C.  D.  1899,  89  O.  G.  189. 

226.  The  fact  that  the  word  "Carrom"  does 
not  appear  on  the  game-board  of  the  defend- 
ants is  held  to  be  immaterial  so  long  as  the 
defendants  advertise  their  boards  as  "carom- 
boards."  (Machine  Manufacturers  v.  Wilson, 
3  App.  Cas.,  389.)  d  Williams  et  al.  v.  Mit- 
chell et  al,  C.  D.  1901,  96  O.  G.  2411. 

227.  The  coat  of  arms  of  the  State  of  Mary- 
land is  not  registrable  under  the  trade-mark 
act  of  February  20,  190.5,  although  it  had  been 
used  by  the  applicant  for  ten  years  prior  to 
the  passage  of  that  act  Ex  parte  Cahn,  Belt 
&  Company,  C.  D.  1905,  118  O.  G.  1936. 

228.  The  use  of  the  flag  or  the  coat  of  arms 
of  a  state  or  nation  for  purposes  of  trade  is 
against  public  policy,  and  the  prohibition  in 
the  act  of  February  20,  1905,  against  the  reg- 
istration of  marks  containing  them  was  in 
recognition  of  such  policy  and  not  as  estab- 
lishing it.    Id. 

229.  The  policy  which  prohibits  the  regis- 
tration of  a  mark  consisting  of  the  flag  or 
coat  of  arms  is  not  dependent  upon  or  af- 
fected by  the  length  of  time  the  mark  has 
been  used.  Its  use  is  in  the  nature  of  a 
wrong,  and  persistence  in  that  wrong  is  to  be 
condemned  rather  than  rewarded.     Id. 

230.  A  simulation  of  the  coat-of-arms  of 
the  United  States  will  not  be  registered  as  a 
trade-mark  even  under  the  ten  years'  clause 
of  the  trade-mark  act.  Ex  parte  The  Wil- 
liam Connors  Paint  Mfg.  Co.,  C.  D.  1905,  119 
O.  G.  2522. 

231.  The  coat-of-arms  of  the  United  States 
is  not  registrable  as  a  trade-mark  even  under 
the  "ten-years' "  clause  of  the  law.  Ex  parte 
American  Glue  Company,  C.  D.  1906,  120  O. 
G.  324. 

232.  A  trade-mark  for  whiskey  consisting 
of  a  pictorial  representation  of  the  arms  and 


seal  of  the  State  of  Maryland,  with  certain 
additions  or  variations,  is  not  entitled  to  reg- 
istration under  the  last  proviso  of  the  fifth 
section  of  the  trade-mark  act  of  February 
20,  1905  (33  Stat.  L.,  724,  ch.  592),  as  it 
simulates  the  arms  and  seal  of  the  State  of 
Maryland  and  violates  the  express  provision 
of  such  section  which  prohibits  the  registra- 
tion of  any  mark  which  "consists  of  or  com- 
prises the  flag  or  coat-of-arms  or  other  in- 
signia of  the  United  States  or  any  simula- 
tion thereof  or  of  any  state."  *In  re  Cahn, 
Belt  &  Company,  C.  D.  1906,  122  O.  G.  354. 

233.  The  last  proviso  of  section  5  of  the 
trade-mark  act  of  February  20,  1905,  relating 
to  the  registration  of  marks  which  had  been 
in  actual  and  exclusive  use  for  ten  years,  was 
intended  to  provide  for  the  registration  and 
protection  of  marks  which  were  not  technical 
trade-marks,  but  which  had  been  actually  used 
as  trade-marks  by  the  applicants  or  their 
predecessors  from  whom  they  derived  title 
and  in  which  the  user  had  acquired  property 
rights  for  more  than  ten  years  next  preceding 
the  passage  of  the  act.    *Id. 

234.  A  mark  which  simulates  the  arms  or 
seal  of  the  State  of  Maryland  is  not  registra- 
ble under  the  last  proviso  of  the  fifth  section 
of  the  trade-mark  act  of  February  20,  1905, 
providing  for  the  registration  of  marks  which 
had  been  in  actual  and  exclusive  use  by  the 
applicants  for  ten  years  next  preceding  the 
passage  of  the  act,  as  the  use  was  not  ex- 
clusive. Applicants  could  never  acquire  such 
a  property  right  in  the  seal  or  the  coat-of- 
arms  of  the  State  of  Maryland  as  to  exclude 
the  state  from  the  use  thereof.  (Gilman  v. 
Hunnewell,  122  Mass.,  147;  Commonwealth 
V.  Sherman  Mfg.  Company,  75  N.  E.  71.) 
*Id. 

235.  That  the  use  of  the  coat-of-arms  of  the 
United  States  or  of  the  flag  or  of  armorial 
bearings  and  decorations  for  purposes  of 
trade  is  against  public  policy  or  order  has 
been  recognized  by  the  legislatures  of  various 
states  in  acts  prohibiting  their  use.  in  the  In- 
ternational Convention  for  the  Protection  of 
Industrial  Propertj-,  concluded  at  Paris,  March 
20,  1883,  and  by  the  commissioners  of  patents 
in  refusing  registration  to  marks  of  this  char- 
acter, and  it  was  in  recognition  of  this  public 
policy  that  congress  inserted  the  provision 
prohibiting  the  registration  of  such  marks. 
*Id. 

236.  Held,  that  a  mark  which  simulates  the 
Great  Seal  of  the  United  States  is  not  regis- 


TRADE  MARKS.  XIV,  (a). 


541 


trable  as  a  trade-mark  under  the  act  of  Feb- 
ruary 20,  1905.  *In  re  American  Glue  Com- 
pany, C.  n.  lOOfi,  123  O.  G.  999. 

237.  The  registration  of  a  trade-mark  the 
pictorial  representation  of  which  simulates  the 
seal  of  the  Department  of  Justice  of  the 
United  States  and  in  some  parts  the  Great 
Sea!  of  the  United  States  is  prohibited  under 
section  .")  of  the  act  of  February  20,  1905.  *In 
re  William  Connors  Paint  Mfg.  Company,  C. 
D.  1906,  123  O.  G.  799. 

238.  A  mark  an  essential  feature  of  which 
is  a  cross  printed  in  red  properly  refused  reg- 
istration under  the  act  of  January  5,  1905. 
since  such  a  cross  is  a  colorable  imitation  of 
the  cross  of  the  American  National  Red  Cross. 
Ex  parte  Streator  Metal  Stamping  Company, 
C.  D.  1907,  130  O.  G.  1483. 

239.  A  mark  consisting  of  the  letters  "U. 
S."  on  a  conventional  representation  of  a 
shield,  Held,  not  registrable  on  the  ground 
that  the  letters  "U.  S."  by  reason  of  their 
common  usage  by  the  government  on  army 
accouterments  and  upon  other  articles  of  mer- 
chandise, particularly  when  placed  upon  a 
simulation  of  the  United  States  shield,  should 
be  regarded  as  public  insignia,  which  can 
never  become  the  exclusive  property  of  the 
applicant,  and  on  the  further  ground  that  the 
use  of  such  a  mark  would  tend  to  induce  the 
public  to  believe  that  the  goods  bearing  the 
same  were  made  by  or  had  the  official  ap- 
proval of  the  United  States  government.  Ex 
parte  United  States  Sanitary  Manufacturing 
Company,  C.  D.  1908,  137  O.  G.  227. 

240.  A  trade-mark  comprising  the  coat-of- 
arms  of  a  foreign  country  is  not  registrable 
under  the  provisions  of  section  5  of  the  trade- 
mark act  of  1905,  even  though  registration  of 
said  mark  has  been  allowed  in  such  foreign 
country.  Ex  parte  Societe  pour  le  Commerce 
de  The  K  &  C  Popoff  Freres.  C.  D.  1908,  137 
O.  G.  1237. 

XIV.  Descriptive. 
(a)  In  General. 

241.  While,  according  to  the  doctrine  of 
trade-mark  law,  descriptive  words  cannot  be 
the  subject  of  a  valid  trade-mark,  yet  the 
courts  have  decided  that  the  originator  of  a 
word  is  entitled  to  certain  proprietary  rights 
in  a  name  which  he  has  used  to  designate  a 
certain  article  and  for  which  he  has  built  up 
a  reputation  and  a  business  and  which  he  has 
given   the  public  to   understand   is  an   article 


prepared  by  him,  so  that  certain  words  which 
contain  elements  of  description  have  been  de- 
clared by  the  courts  to  be  valid  trade-marks. 
c  Noel  v.  Ellis,  C.  D.  1899,  86  O.  G.  633. 

242.  The  objection  to  registering  a  descrip- 
tive mark  is  not  alone  on  the  ground  that  it 
does  in  fact  describe  the  goods  to  which  an 
applicant  actually  attaches  it,  but  because  oth- 
ers have  the  right  to  use  the  same  mark  to 
describe  their  goods,  and  therefore  the  exclu- 
sive right  to  the  mark  cannot  be  given  to  one 
person.  Ex  parte  Martin,  C.  D.  1899,  89  O. 
G.  2259. 

243.  The  mark  may  not  be  descriptive  of 
the  particular  goods  sold  by  an  applicant;  but 
at  the  same  time  it  may  be  descriptive  of  sim- 
ilar goods  sold  by  another  party,  and  that 
other  party  cannot  be  prevented  from  using 
that  descriptive  mark  on  his  goods.     Id. 

244.  An  injunction  against  the  use  of  the 
words  "American  Ball  Blue"  does  not  prevent 
a  description  of  the  goods  as  being  an  Amer- 
ican product,  since  that  can  be  effected  in 
many  forms  of  expression  without  leading 
purchasers  to  believe  that  it  is  the  product  of 
the  complainants,  d  Shaver  et  al.  v.  Heller 
&  Merz  Co.,  C.  D.  1901,  96  O.  G.  2229. 

245.  Application  having  been  made  for  the 
registration  of  a  mark  containing  a  descriptive 
word,  it  was  permissible  for  a  party  who 
claimed  to  have  used  that  word  as  a  trade- 
name to  file  an  opposition  to  the  registration 
of  the  mark.  *Johnson  v.  Brandau,  C.  D. 
1909,   139  O.   G.   732. 

246.  "It  was  evidently  the  intention  of  con- 
gress in  placing  these  restrictions  in  the  trade- 
mark act  to  prohibit  any  one  from  acquiring 
a  property  right,  protected  by  law  in  its  ex- 
clusive use,  in  a  name  possessing  any  inherent 
signification  that  would,  of  itself,  enhance  the 
sale  or  value  of  the  article  or  articles  to  which 
it  may  be  applied.  In  other  words,  it  was 
intended  to  limit  the  selection  to  mere  arbi- 
trary words  or  designs,  the  value  of  which 
should  consist  alone  in  their  becoming  fixed 
in  the  public  mind  through  continued  use  on 
the  goods  of  the  owner.  It  was  not  intended 
that  the  mark  should  lend  value  to  the  goods, 
but  that  the  quality  of  the  goods  and  the  repu- 
tation of  the  owner  should  ultimately  make 
the  mark  valuable  as  a  symbol  in  the  connec- 
tion in  which  it  may  be  used."  *In  re  Central 
Consumers  Company,  C.  D.  1909,  140  O.  G. 
1211. 

247.  Section  5  of  the  trade-mark  act  pro- 
hibits   the    registration    of   a   mark    which    is 


542 


TRADE  MARKS,  XIV,  (c). 


merely  descriptive  of  the  goods  or  quality  of 
the  goods  with  which  it  is  used.  Doubtless 
this  provision  would  permit  the  registration 
of  a  mark  primarily  intended  to  suggest  origin 
or  ownership  and  only  secondarily  descriptive 
or  suggestive  of  quality.  *In  re  Anti-Cori- 
Zine  Chemical  Company,  C.  D.  1910,  151  O.  G. 
452. 

(b)  Registrable. 

248.  The  word  "Koffio"  as  a  trade-mark  for 
cereal  coffee  may  be  suggestive,  but  it  is  not 
descriptive  and  may  be  registered  as  a  trade- 
mark. Sleepy  Eye  Milling  Co.  v.  C.  F.  Blanke 
Tea  &  Coffee  Co.,  C.  D.  1899,  85  O.  G.  1905. 

249.  The  words  "Vitae-Ore"  do  not  describe 
anything  and  they  are  purely  fanciful,  and 
being  arbitrarily  selected  by  the  complainant 
to  designate  his  goods.  Held,  that  they  are  a 
valid  trade-mark,  c  Noel  v.  Ellis,  C.  D.  1899, 
86  O.  G.  633. 

250.  Applicant  having  filed  an  affidavit  that 
the  words  "Royal  Blue"  are  not  descriptive 
of  the  general  color  of  the  carpet-sweeper  in 
connection  with  which  the  words  are  used. 
Held,  that  these  words  when  so  applied  to 
carpet-sweepers  as  not  to  be  indicative  of  the 
color  of  the  sweepers  cannot  be  refused  regis- 
tration, as  they  have  an  arbitrary  suggestive 
meaning.  Ex  parte  Grand  Rapids  School 
Furniture  Company,  C.  D.  1899,  87  O.  G.  1957. 

251.  Held,  that  the  word  "Waukeasy"  as 
applied  to  a  corn  cure  is  perhaps  suggestive, 
but  is  not  descriptive  of  the  composition  or 
qualities  of  the  article  or  the  direct  result 
produced  by  its  use,  and  is  therefore  regis- 
trable as  a  trade-mark.  Ex  parte  Peek,  C.  D. 
1901,  96  O.   G.  425. 

252.  Where  the  primary  object,  purpose, 
and  effect  of  a  mark  are  to  indicate  origin 
or  ownership  of  the  goods,  Held,  that  the  fact 
that  it  remotely  suggests  some  advantage 
which  may  be  derived  from  the  use  of  the 
goods  should  not  prevent  its  registration.     Id. 

253.  Held,  that  the  word  "Carrom"  or 
"Carom"  is  not  descriptive  of  a  certain  game- 
board  or  the  games  played  thereon,  for  while 
a  carom  is  possible  during  the  playing  of  the 
game  it  is  no  part  of  the  game.  It  is  the  case 
of  the  use  of  a  descriptive  word  in  a  non-de- 
scriptive sense,  rf  Williams  et  al.  v.  Mitchell 
et  al.,  C.  D.  1901,  96  O.  G.  2411. 

254.  The  words  "Solid  Comfort"  held  to  be 
registrable  as  a  trade-mark  for  furnaces  on 
the  ground  that  even  though  these  words  may 
convey  the  idea  that  persons  using  these  fur- 


naces will  experience  that  degree  of  comfort 
known  as  "solid  comfort"  they  are  not  descrip- 
tive of  the  quality  or  construction  of  the  fur- 
naces. They  merely  suggest  a  remote  result 
which  may  be  brought  about  by  the  use  of 
the  furnaces.     Ex  parte  Fieberger,  C.  D.  1902, 

99  O.  G.  2101. 

255.  The  word  "Waukwell"  as  a  trade-mark 
for  shoes  Held,  registrable  since  it  is  not  de- 
scriptive of  the  shoes.  Ex  parte  Parker, 
Holmes  &  Company,  C.  D.  1902,  100  O.  G. 
1111. 

256.  Held,  that  the  word  "Success"  as  a 
trade-mark  for  stoves  and  ranges  is  regis- 
trable, since  it  does  not  describe  any  quality 
or  characteristic  of  the  articles  and  would  be 
understood  by  purchasers  as  arbitrary  and 
fanciful.     Ex    parte    Huenefeld,    C.    D.    1907, 

100  O.  G.  1329. 

257.  The  prohibition  against  the  registra- 
tion of  descriptive  words  as  trade-marks  ap- 
plies only  to  those  words  which  state  or  define 
some  quality  or  characteristic  of  the  article  or 
designate  its  class,  grade,  style,  or  quality  or 
the  ingredients  of  which  it  is  composed.    Id. 

258.  The  word  "Cream"  Held,  to  be  de- 
descriptive  as  applied  to  baking  powder.  In- 
ternational Food  Co.  V.  Price  Baking  Powder 
Co.,  C.  D.  1910,  150  O.  G.  827. 

259.  The  word  "Cokettes"  Held,  registrable 
as  a  trade-mark  for  briquets,  for  although  this 
term  might  serve  to  indicate  a  briquet  made 
of  coke  its  suggestiveness  is  so  remote  that 
it  does  not  fall  within  the  class  of  marks 
whose  registration  is  prohibited  because  of 
their  descriptive  character.  Ex  parte  Carter, 
Jr.,  C.  D.  1910,  155  O.  G.  800. 

260.  Candy  does  not  come  within  the  class 
of  goods  which  would  be  readily  associated 
in  the  public  mind  with  the  general  supplies 
which  are  furnished  by  the  government  in 
equipping  the  navy.  The  word  "Navy"  as  ap- 
plied to  candy  is  therefore  not  descriptive. 
*In  re  The  National  Candy  Company,  C.  D. 
1910,   156  O.  G.   539. 

261.  The  words  "Hotel  Astor"  as  applied  to 
coffee  are  not  descriptive,  even  though  they 
may  incidentally  indicate  an  excellence  which 
caused  this  coffee  to  be  used  at  the  Hotel 
Astor.  A.  F.  Beckmann  &  Co.  v.  B.  Fischer 
&  Co.,  C.  D.  1910.  157  O.  G.  486. 

262.  The  word  "Hygeia"  Held,  registrable 
as  a  trade-mark  for  spring  mattresses,  not- 
withstanding the  fact  that  a  mark  previously 
registered  for  air  mattresses  included  the 
word    "Hygenic,"   the   latter    word   being   de- 


TRADE  MARKS,  XIV,  (c). 


543 


scriptive  of  the  goods  on  which  the  mark  was 
used.  Ex  parte  Enterprise  Bed  Company, 
C.  D.  1910,  158  O.  G.  481. 

(c)  Not  Registrable. 

263.  The  word  "Purity"  refused  registration 
as  a  trade-mark  for  oleomargarine  as  it  be- 
longs to  a  class  of  words  which  are  descrip- 
tive or  advertising  in  character  and  are  not 
registrable  as  trade-marks.  Ex  parte  The 
Capital  City  Dairy  Company,  C.  D.  1898,  83 
O.  G.  295. 

264.  While  the  word  "Purity''  is  not  an  ad- 
jective in  form  and  may  not  be  commonly  em- 
ployed to  describe  a  quality,  nevertheless  it 
cannot  be  successfully  denied  that  it  has  a 
suggestive  meaning.  If  the  word  is  used  in  a 
fanciful  sense,  as  contended  by  applicant's 
counsel,  then  it  certainly  has  a  tendency  to  de- 
ceive the  ordinary  buyer.    Id. 

265.  The  phrase  "Better  Than  Mother's" 
refused  registration  as  a  trade-mark  for  mince- 
meat, as  it  expresses  quality.  Ex  parte  Ervin 
A.  Rice  Company,  C.  D.  1898,  83  O.  G.  1207. 

266.  A  valid  trade-mark  cannot  be  predi- 
cated upon  words  or  phrases  expressing  qual- 
ity. No  one  can  appropriate  for  his  exclu- 
sive use  words  and  phrases  that  all  may  use. 
Any  one  dealing  in  mince-meat  can  declare, 
if  the  statement  be  true,  that  his  product  is 
better  than  any  one  else's,  be  that  other  "moth- 
er," "grandmother,"  or  "aunt."    Id. 

267.  The  words  "Malted  Milk"  refused  reg- 
istration as  a  trade-mark  for  a  food  prepara- 
tion for  infants  and  invalids,  as  they  are  so 
far  indicative  of  the  ingredients  and  charac- 
teristics of  petitioner's  preparation  as  to  be 
descriptive.  Ex  parte  Horlick's  Food  Com- 
pany, C.  D.  1898,  84  O.  G.  1870. 

268.  The  words  "Kid  Nee  Kure"  refused 
registration  as  a  trade-mark  for  a  remedy 
for  kidney  and  analogous  diseases  on  the 
ground  that  purely  descriptive  words  not  oth- 
erwise registrable  do  not  become  so  by  mis- 
spelling them  and  misplacing  capitals.  Ex 
parte  Henderson,  C.  D.  1898,  85  O.  G.  453. 

269.  The  words  "Perfect  Face  Paste"  re- 
fused registration  as  a  trade-mark  for  medical 
compounds  on  the  ground  that  they  are  purely 
descriptive  in  character  and  incapable  of  ex- 
clusive appropriation,  the  word  "Perfect"  be- 
ing an  adjective  in  common  use  in  speech  and 
for  advertising  purposes  and  the  words  "Face 
Paste"  merely  indicating  the  form  of  the  com- 


position  and   its  purpose.     Ex  parte  Rail,  C. 
D.   1898,  85  O.  G.  453. 

270.  The  words  "Blue  Label"  on  a  generally 
blue  field  refused  registration  as  a  trade-mark 
for  canned  soups,  etc.,  as  they  are  descriptive 
of  the  color  of  the  label  which  is  applied  to 
the  goods  in  question.  (Fischer  et  al.  v.  Blank, 
33  N.  E.  Rep.,  1040,  cited.)  Ex  parte  Curtice 
Brothers  Company,  C.  D.  1898,  85  O.  G.  610. 

271.  The  words  "Bromo  Soda  Mint"  refused 
registration  as  a  trade-mark  for  remedies  for 
certain  named  diseases,  as  they  are  indicative 
of  the  ingredients  and  characteristics  of  the 
preparation  to  which  they  are  applied,  as  any- 
one reading  said  words  would  gather  that 
soda-mint,  an  article  well  known  to  pharma- 
cists, is  combined  with  bromin  or  a  bromid. 
Ex  parte  Spayd,  C.  D.  1899,  S6  O.  G.  631. 

272.  The  words  "Apple  and  Honey"  refused 
registration  as  a  trade-mark  for  cures  for 
coughs,  colds,  etc.,  as  they  are  descriptive 
under  the  decisions  of  the  federal  courts. 
(Brown  Chemical  Co.  v.  Meyer,  C.  D.  1891, 
346,  55  O.  G.  287,  139  U.  S.  .540,  cited.)  Ex 
parte  G.  F.  Heublein  &  Brother,  C.  D.  1899, 
87  O.  G.  179. 

273.  The  words  "Chill  Stop"  refused  regis- 
tration as  a  trade-mark  for  chills  and  fever, 
malaria,  and  intermittent  fever,  as  they  ex- 
press a  quality  of  the  article  upon  which  they 
are  used.  Ex  parte  Hance  Brothers  &  White, 
C.  D.  1899,  87  O.  G.  698. 

274.  While  the  arrangement  of  the  words 
"Chill  Stop"  is  somewhat  different  from  the 
ordinary  and  they  do  not  express  quality  in 
the  most  grammatical  form,  they  being  catchy 
and  slangv',  they  are,  nevertheless,  descriptive 
as  well  as  advertising.  (Ex  parte  Brigham, 
C.  D.  1881,  38.  20  O.  G.  891,  cited.)     Id. 

275.  The  rearrangement  of  descriptive  words 
in  common  use  cannot  clothe  them  with  at- 
tributes not  possessed  when  not  so  arranged. 
Id. 

276.  The  words  "Nickel  Soap"  as  applied  to 
soap,  cannot  be  registered  as  a  trade-mark, 
as  the  word  "soap"  is  merely  the  name  of  the 
goods  to  which  the  mark  is  applied  and  is 
made  an  essential  feature  of  the  mark.  Ex 
parte  Butler,  C.  D.  1899,  87  O.  G.  1781. 

277.  The  word  "nickel"  as  applied  to  soap 
does  not  indicate  the  price  at  which  the  soap 
is  sold  and  mav  be  registered  as  a  trade-mark. 
Id. 

278.  Nickel  is  the  name  of  a  metal,  and  it 
is  not  robbed  of  its  primary  significance  by  the 
fact  that  in  some  localities  it  has  a  secondary 


«44 


TRADE  MARKS,  XIV,  (c). 


meaning  in  that  it  is  used  as  the  name  of  a 
coin.  This  subordinate  or  fanciful  meaning 
does  not  bar  its  adoption  and  use  as  a  trade- 
mark for  soap.    Id. 

279.  Tested  by  the  definitions  given  to  the 
term  "trade-mark"  and  applying  the  rules  laid 
down  as  guides,  it  is  Held,  that  the  term 
■"Ever-Ready,"  plainly  meaning  always  ready, 
as  applied  to  a  domestic  coffee-mill  intended 
for  ordinary  and  daily  household  use  is  not 
a  trade-mark,  in  that  it  lacks  the  essentia! 
characteristics  of  individuality  and  exclusive- 
Tiess.  Ex  parte  Bronson  Company,  C.  D.  1399, 
87  O.  G.  1782. 

280.  The  term  "Health  Food"  means  healthy 
food  or  health-producing  food,  is  therefore  de- 
scriptive of  quality,  and  can  not  be  a  technical 
trade-mark,  either  with  or  without  the  word 
"Company,"  any  more  than  the  words  "Nutri- 
tious Wine"  could  be  a  valid  trade-mark, 
-rf  Fuller  v.  Huff  et  al.,  C.  D.  1900,  92  O.  G. 
1620. 

281.  The  word  "Fitmeeasy"  as  applied  to 
•corsets,  waists,  and  underwear.  Held,  to  be 
descriptive  and  not  registrable  as  a  trade- 
■mark.  Ex  parte  Miller,  C.  D.  1901,  95  O.  G. 
14.52. 

282.  A  word  made  up  of  three  separate 
■words  cannot  be  held  to  be  coined  or  arbitrary 
where  it  conveys  the  same  idea  whether  read 
•or  pronounced  as  would  be  the  three  words 
written  separately.  A  mere  change  in  the 
manner  of  writing  the  mark  cannot  be  held  to 
change  its  character  so  long  as  the  impres- 
sion conveyed  by  it  is  the  same.     Id. 

283.  The  word  "Pain-Ease"  applied  to  a 
medicine  refused  registration  on  the  ground 
that  it  is  descriptive  and  advertising  in  char- 
acter and  is  not  a  lawful  trade-mark.  Ex 
parte  Evans  &  Shepard,  C.  D.  1901,  96  O.  G. 
42.5. 

284.  Held,  that  any  manufacturer  has  the 
right  to  say  that  his  medicine  eases  pain,  and 
■a  mere  reversal  of  the  usual  order  in  which 
the  words  are  written  does  not  give  them 
such  an  arbitrary  character  as  to  make  them 
registrable  as  a  trade-mark.     Id. 

285.  The  word  "Kas-K-Rilla"  as  a  trade- 
mark for  a  preparation  used  as  a  remedy  for 
■certain  diseases  refused  registration,  as  it 
is  merely  a  misspelling  of  the  descriptive  word 
"Cascarilla."  Ex  parte  Seager,  C.  D.  1901, 
97  O.  G.  749. 

286.  It  is  well  settled  that  a  descriptive  word 
■cannot   be   made   arbitrary   by   misspelling   it, 


hyphenating    its    syllables,    and    using   capital 
letters  and  ornamental  type.     Id. 

287.  The  word  "No-Rip"  and  the  represen- 
tation of  a  harness-pad  refused  registration 
on  the  ground  that  the  word  is  descriptive  and 
the  harness-pad  a  representation  of  the  goods 
to  which  the  mark  is  applied.  Ex  parte  Cres- 
cent Manufacturing  Company,  C.  D.  1901,  97 
O.  G.  7.50. 

288.  Words  descriptive  of  composition  or 
quality  of  an  article  should  not  be  registered. 
Such  words  are,  however,  to  be  distinguished 
from  those  which  are  merely  suggestive  of 
some  remote  result  of  the  use  of  the  article. 
Id. 

289.  Where  it  appears  that  the  word  "Holo- 
phane"  alone  is  not  registrable,  it  cannot  be 
made  registrable  by  association  with  an  arbi- 
trary symbol.  (Ex  parte  Farnum  and  Com- 
pany, C.  D.  1880,  155,  18  O.  G.  412.)  Ex  parte 
Holophane  Glass  Co.,  C.  D.  1902,  100  O.  G. 

450. 

290.  The  word  "Bestofall"  not  registrable 
as  a  trade-mark,  as  it  indicates  the  quality  of 
the  goods  in  that  they  are  the  best  of  all  in 
that  class.  Ex  parte  West,  C.  D.  1902,  100 
O.  G.  682. 

291.  The  single  word  "Bestofall"  conveys 
the  same  idea  as  the  three  words  "best  of  all." 
It  cannot,  therefore,  in  any  true  sense  be  said 
to  be  a  coined  word.    Id. 

292.  The  word  "Minute"  should  not  be  reg- 
istered as  a  trade-mark  for  malted  cereal  co- 
fee,  since  it  is  descriptive  of  a  quality  or  char- 
acteristic of  the  coffee,  meaning  that  it  is  of 
such  a  character  as  to  be  prepared  for  use  in 
a  minute.  Ex  parte  Whitman  Grocery  Com- 
pany, C.  D.  1902,  100  O.  G.  1763. 

293.  "Fullcut"  as  a  trade-mark  for  cloth- 
ing refused  registration  on  the  ground  that 
it  is  descriptive,  since  it  would  convey  to  the 
purchasing  public  a  definite  idea  of  the  style 
of  the  clothing.  Ex  parte  Miami  Clothing 
Manufacturing  Company,  C.  D.  1902,  100  O. 
G.  1975. 

294.  "Nevers-Tick"  as  a  trade-mark  for  lu- 
bricants refused  registration  upon  the  ground 
that  it  is  descriptive.  Ex  parte  Woolworth, 
C.  D.  1902,  100  O.  G.  1976. 

295.  The  words  "Catarrhal  Jelly"  as  a  trade- 
mark for  a  jelly-like  remedy  for  catarrh, 
Held,  descriptive  and  not  registrable.  Ex 
parte  Kenyon,  C.  D.  1902,  100  O.  G.  2383. 

296.  Where  the  facsimile  of  a  trade-mark 
includes  certain  arbitrary  symbols  and  the 
representation  of  the  sea  having  printed  there- 


TRADE  MARKS,  XIV,  (c). 


545 


on  the  word  "Lotion,"  Held,  that  the  word 
"Lotion"  being  descriptive  forms  no  part  of 
the  mark  and  should  be  removed.  Ex  parte 
Star  Lotion  Remedy  Company,  C.  D.  1902, 
100  O.  G.  2603. 

297.  A  descriptive  word  cannot  be  made  a 
part  of  a  trade-mark  by  association  with  arbi- 
trary symbols  in  the  ordinary  way,  and  there- 
fore the  drawing  of  the  application  should 
disclose  only  the  arbitrary  symbols.     Id. 

298.  A  descriptive  word  should  not  be  re- 
tained in  the  drawing  of  a  trade-mark  ap- 
plication unless  its  parts  are  so  interwoven 
with  the  arbitrary  parts  of  the  marks  as  to 
become  an  inseparable  part  thereof.     Id. 

299.  "Perfection"  as  a  trade-mark  for  candy 
refused  registration  on  the  ground  that  it  is 
descriptive.  Ex  parte  St.  Louis  Candy  Com- 
pany, C.  D.  1902,  101  O.  G.  220. 

300.  A  picture  of  goods  of  the  class  upon 
which  it  is  used  cannot  be  registered  as  a 
trade-mark,  although  it  may  not  be  a  picture 
of  the  particular  form  of  goods  sold  by  the 
applicant.  Ex  parte  Spoo,  C.  D.  1902,  101  O. 
G.  661. 

301.  The  word  "Vogue"  means  the  "mode 
or  fashion  prevalent  at  any  particular  time; 
*  *  *  now  generally  used  in  the  phrase  in 
vogue;  as,  a  particular  style  of  dress  was 
then  in  vogue,"  Held,  therefore  to  be  descrip- 
tive when  applied  to  an  article  of  wearing- 
aparel  and  not  registrable.  Ex  parte  P.  W. 
Minor  &  Son,  C.  D.  1902,  101  O.  G.  2079. 

302.  The  word  "Pastry"  refused  registra- 
tion as  a  trade-mark  for  baking-powder  on 
the  ground  that  the  word  would  indicate  that 
the  particular  baking-powder  so  designated 
was  desirable  for  use  in  making  pastry,  and 
therefore  it  is  not  an  arbitrary  word  when  so 
applied.  Ex  parte  A.  B.  Barnum  Co.,  Ltd., 
C.  D.  1903,  102  O.  G.  227. 

303.  The  word  "Sterling"  refused  registra- 
tion as  a  trade-mark  for  wagons  on  the  ground 
that  it  is  not  arbitrary  in  character,  but  es- 
sentially descriptive  of  quality.  Ex  parte 
Abingdon  Wagon  Company,  C.  D.  1903.  102 
O.  G.  230. 

304.  The  word  "Wine"  is  clearly  descriptive, 
and  it  cannot  form  a  part  of  the  trade-mark 
unless  it  is  so  interwoven  with  arbitrary  sym- 
bols that  the  removal  of  the  descriptive  word 
would  cause  the  mark  to  be  obliterated.  Ex 
parte  Star  Lotion  Remedy  Company,  C.  D., 
1902,  330.  100  O.  G.  2603.  Ex  parte  Brands- 
ville  Fruit  Farm  Company.  C.  D.  1903,  103 
O.  G.  660. 

35 


305.  The  words  "Cyco  Prize"  refused  regis- 
tration as  a  trade-mark,  since  "Cyco"  has  been 
registered,  and  the  added  descriptive  word 
"Prize"  does  not  qualify  or  change  the  mean- 
ing of  the  arbitrary  symbol.  Ex  parte  Bissell 
Carpet  Sweeper  Company,  C.  D.  1903,  104  O. 
G.  2148. 

306.  The  words  "Cyco  Gold  Medal"  refused 
registration,  since  "Cyco"  has  been  registered, 
and  the  addition  of  the  descriptive  words 
"Gold  Medal"  does  not  make  a  new  trade- 
mark. Ex  parte  Bissel  Carpet  Sweeper  Com- 
pany,  C.  D.   1903,  104  O.  G.  2149. 

307.  The  number  "1904"  refused  registra- 
tion as  a  trade-mark  for  coffee,  since  it  indi- 
cates when  the  coffee  was  grown  and  is  de- 
scriptive. Ex  parte  William  Schotten  &  Com- 
pany, C.  D.  1903,  105  O.  G.  1532. 

308.  The  word  "Rubberback"  substantially 
describes  a  composite  billiard-cloth  which  is 
made  of  a  facing  of  pure  wool  secured  by  a 
film  of  rubber  to  a  non-elastic  textile  fabric. 
Ex  parte  Goodman-Leavitt,  Yatter  Co..  107  O. 
G.  834. 

309.  Where  the  mark  disclosed  consists  of 
two  independent  essential  features — the  repre- 
sentation of  a  row  of  billiard-balls  arranged 
in  a  horizontal  line  between  two  billiard  cues, 
which  is  registrable,  and  a  word  placed  upon 
the  balls,  one  letter  on  each  ball,  this  word 
being  descriptive  or  deceptive  in  meaning — 
Held,  that  the  mark  as  a  whole  is  not  regis- 
trable. (Ex  parte  Tabor,  C.  D.  1901,  88,  96 
O.  G.  1036;  Ex  parte  Adriance,  Piatt  &  Com- 
pany, C.  D.  1881,  52,  20  O.  G.  1820.)     Id. 

310.  The  word  "Vichy"  has  by  use  become 
generic  and  indicative  of  the  character  of  the 
water  and  cannot  be  regarded  as  a  trade- 
mark. **La  Republique  Francaise  et  al  v. 
Saratoga  Vichy  Spring  Company,  C.  D.  1903, 
105  O.  G.  977. 

311.  Held,  that  the  owners  of  the  French 
\'ichy  springs  have  no  exclusive  right  to  the 
use  of  the  word  "Vichy,"  since  for  the  past 
thirty  years  they  have  permitted  others  to 
use  that  word  in  trade  upon  various  waters, 
both  natural  and  manufactured,  having  some 
similarity  to  that  of  the  French  springs,  and 
therefore  the  word  has  become  descriptive. 
"Id. 

312.  The  words  "Ox  Blood"  combined  with 
a  picture  of  ox-horns  refused  registration  as 
a  trade-mark  for  paints,  since  the  words  are 
descriptive  of  the  color  of  the  paint.  Ex 
parte  Jewell  &  Vinson,  C.  D.  1903,  106  O.  G. 
1242. 


546 


TRADE  MARKS,  XIV,  (c). 


313.  The  picture  of  ox-horns  associated  with 
the  words  "Ox  Blood"  does  not  change  in  any 
way  the  significance  of  the  words  as  applied  to 
paints.  They  indicate  the  color  of  the  paint 
and  cannot  form  a  part  of  a  trade-mark.     Id. 

314.  The  word  "Health"  as  a  trade-mark 
for  chocolate  candy  refused  registration  on 
the  ground  that  it  is  descriptive.  Ex  parte 
Geron,  C.  D.  1904,  108  O.  G.  288. 

315.  Held,  that  the  words  "Beaver  Brand" 
are  not  registrable  as  a  trade-mark,  as  the 
word  "Brand"  is  a  descriptive  word  which 
any  dealer  has  the  right  to  add  to  his  trade- 
mark.   Ex  parte  F.  P.  May  &  Company,  C.  D. 

1904,  111   O.  G.  2223. 

316.  "Cantripum"  refused  registration  as  a 
trade-mark  for  clothing  upon  the  ground  that 
it  is  a  mere  misspelling  of  the  descriptive 
phrase  "can't  rip  them."  Ex  parte  Hooker, 
Corser  and  Mitchell  Company,  C.  D.  1904, 
108  O.  G.  289. 

317.  Held,  that  the  word  "Kleanwell"  is 
descriptive  of  a  quality  possessed  by  a  mas- 
sage-sponge, and  therefore  it  is  not  registrable 
as  a  trade-mark  for  the  same.  Ex  parte  Smith, 
C.  D.  1904,  110  O.  G.  601. 

318.  Held,  that  a  word  which  is  purely  de- 
scriptive and  not  registrable  for  that  reason 
does  not  become  registrable  because  it  is  mis- 
spelled.   Id. 

319.  Held,  that  several  words  which  are  de- 
scriptive and  not  registrable  for  that  reason 
do  not  become  registrable  because  they  are 
combined  into  one  word.    Id. 

320.  The  word  "Special"  Held,  not  regis- 
trable as  a  trade-mark,  since  it  is  descriptive 
of  the  grade  or  style  of  the  goods.  Ex  parte 
Kiffe  and  Disch,  C.  D.  1904,  110  O.  G.  604. 

321.  Held,  that  the  words  "Sterling  Nickel" 
should  be  refused  registration  as  a  trade- 
mark for  culinary  ware  made  from  nickel, 
as  the  word  "Nickel"  is  descriptive  of  the 
goods  upon  which  it  is  used  and  the  word 
"Sterling"  is  descriptive  of  the  character  or 
quality  of  the  same.  Ex  parte  S.  Sternau-  & 
Company,  C.  D.  1904,  112  O.  G.  252. 

322.  The  word  "Purity"  refused  registra- 
tion for  peanuts,  as  it  belongs  to  a  class  of 
words  which  are  descriptive  or  advertising 
in  character  and  are  not  registrable  as  trade- 
marks.    Ex  parte  C.  M.  Taylor  &  Co.,  C.  D. 

1905,  114  O.  G.  972. 

323.  Such  a  word  as  "Purity"  applied  to 
shelled  or  unshelled  peanuts  would  be  under- 
stood as  indicating  that  the  peanuts  were  free 
from   dirt   and   adulteration,   and   it   is  there- 


fore descriptive  of  the  quality  of  the  goods 
and  as  such  is  not  registrable  as  a  trade- 
mark.   Id. 

324.  The  word  "Peerless"  refused  registra- 
tion as  a  trade-mark  on  the  ground  that  it  is 
descriptive.  E.\  parte  Paragon  Malt-Extract 
Company,  C.  D.  1906,  121  O.  G.  690. 

325.  The  words  "In  Curve"  as  a  trade-mark 
for  corsets,  Held,  descriptive  of  the  goods  and 
registration  denied.  Ex  parte  Kops  Brothers, 
C.  D.  1906,  121  O.  G.  1675. 

326.  Held,  that  "Fineeting"  is  not  regis- 
trable as  a  trade-mark  for  butcher-meat.  Ex 
parte  Rogers  &  Havard,  C.  D.  1906,  122  O.  G. 
3011. 

327.  The  word  "Worthmore"  refused  reg- 
istration as  a  trade-mark  for  shoes  on  the 
ground  that  it  is  descriptive.  Ex  parte  Block 
Brothers  Clothing  Company,  C.  D.  1906,  124 
O.  G.  1521. 

328.  The  word  "Standard"  has  a  descriptive 
meaning  when  applied  to  phonographs.  Ex 
parte  National  Phonograph  Company,  C.  D. 
1906,  124  O.  G.  2901. 

329.  Where  the  word  is  descriptive  as  ap- 
plied to  goods  of  the  character  for  which  reg- 
istration is  sought,  though  not  descriptive  of 
the  particular  articles  upon  which  the  appli- 
cant uses  it,  registration  should  be  refused. 
Id. 

330.  Held,  that  the  words  "Catarrhal  Jelly" 
as  a  trade-mark  for  medicinal  preparations 
are  descriptive,  as  before  decided  (C.  D.  1902, 
322,  100  O.  G.  2.383),  and  that  there  is  nothing 
in  the  present  trade-mark  statute  to  justify  a 
diflferent  conclusion.  E.x  parte  Keynon,  C.  D. 
1900,  124  O.  G.  2901. 

331.  The  words  "circular  loom"  refused  reg- 
istration as  a  trade-mark  for  "conduits  and 
coverings  for  electrical  conductors  consist- 
ing of  fiber  spirals  wrapped  with  fiber  and 
tape,  and  covered  with  a  protective  cotton 
tube  with  an  outer  coating  of  an  insulating 
compound  and  mica"  on  the  ground  that  they 
are  descriptive  of  the  protective  cotton  tube, 
which  is  one  of  the  material  parts  of  the  con- 
struction. An  inspection  of  the  article  shows 
that  the  cotton  tube  is  woven  on  a  circular 
loom,  which  must  be  known  to  dealers  in  the 
goods,  and  it  may  be  \vell  inferred  that  this 
product  of  a  circular  loom  is  considered  a 
superior  quality  in  the  trade.  *In  re  Amer- 
ican Circular  Loom  Company,  C.  D.  1907, 
127  O.  G.  393. 

332.  Sometimes  arbitrary  words,  adopted 
primarily  as  a  mark  to  indicate  origin  or  own- 


TRADE  MARKS,  XIV,  (c). 


547 


ership,  may  through  long-continued  and  wide 
sale  of  the  particular  article,  come  to  indicate 
quality  also,  and  in  such  event  the  owner 
would  not  be  debarred  from  their  protection 
as  a  trade-mark.  It  would  have  to  appear 
with  certainty,  however,  that  at  the  time  of 
adoption  the  mark  was  for  the  purpose  of  in- 
dicating origin,  manufacture,  or  ownership 
and  not  at  all  as  descriptive  of  grade  or  qual- 
ity.    *Id. 

333.  The  phrase  "Rust?  Never!"  is  clearly 
the  predominant  feature  of  the  mark  pre- 
sented for  registration  and  indicates  that  the 
hooks  and  eyes  are  so  treated  that  they  will 
never  rust  and  that  therefore  "rust"  will  never 
be  transmitted  to  the  goods  to  which  they  are 
applied.  Ex  parte  The  De  Long  Hook  &  Eye 
Company,  C.  D.  1907,  128  O.  G.  855. 

334.  The  fact  that  the  words  "Rust? 
Never !"  appear  upon  a  red  rectangular  back- 
ground does  not  confer  registrability  upon  the 
mark.  It  is  not  an  unusual  configuration 
which  would  impress  itself  upon  the  memory 
of  the  purchaser,  but  merely  serves  to  throw 
the  words  "Rust?  Never!"  into  bold  relief. 
Id. 

335.  The  words  "Dull  Black"  as  applied  to 
hooks  and  eyes  are  obviously  descriptive  of 
the  color  of  these  articles,  and  therefor  not 
registrable.  Ex  parte  The  De  Long  Hook  and 
Eye  Company,  C.  D.  1907,  128  O.  G.  1291. 

336.  Held,  that  the  word  "Standard"  as  ap- 
plied to  phonographs  is  descriptive  and  there- 
fore not  registrable.  *In  re  National  Phono- 
graph Company.  C.  D.  1907,  128  O.  G.  129.5. 

337.  Where  an  applicant  desires  to  register 
the  words  "Self  Loading"  as  a  trade-mark 
for  cartridges  adopted  for  use  on  a  rifle 
placed  upon  the  market  by  applicant  and 
called  a  "self-loading"  rifle  from  the 
fact  that  the  gun  reloads  itself.  Held, 
that  the  words  as  applied  to  the  cart- 
ridges state  the  purpose  for  which  they  are 
made  and  sold  that  the  reasons  for  the  pro- 
hibition of  the  statute  to  the  registration  of 
marks  which  consist  merely  of  descriptive  mat- 
ters are  applicable  to  this  case,  and  that  the 
mark  is  in  fact,  nothing  more  than  a  descrip- 
tive term.  The  Peters  Cartridge  Company  v. 
The  Winchester  Repeating  Arms  Company, 
C.  D.  1907,  128  O.  G.  3287. 

338.  Held,  that  the  word  "Infallible"  as  ap- 
plied to  flour  is  descriptive  or  indicative  of 
the  quality  of  the  flour,  and  therefore  not 
registrable.  Ex  parte  The  Sauers  Milling 
Company,  C.  D.  1907,  129  O.  G.  3161. 


339.  The  words  "Rat  Bis-Kit"  indicate  a 
product  to  be  eaten  by  rats,  which  would  be 
understood  by  the  public  to  contain  a  rat- 
poison.  Held,  therefore,  to  be  descriptive  and 
not  registrable  as  a  trade-mark  for  a  poison- 
ing compound  for  rats  and  mice.  Ex  parte 
The  Rat  Biscuit  Company,  C.  D.  1907,  130 
O.  G.  300. 

340.  The  words  "Golden  Brown  Color  No. 
21"  refused  registration  as  a  trade-mark  for 
leather,  since  the  words  "Golden  Brown 
Color"  are  descriptive  of  the  character  or 
quality  of  the  goods.  Ex  parte  F.  Blumen- 
thal  &  Co.,  C  D.  1907,  130  O.  G.  2068. 

341.  Descriptive  words  are  no  less  so  be- 
cause associated  with  some  arbitrary  svmbol. 
Id. 

342.  Combining  descriptive  words  in  an 
arbitrary  manner  does  not  render  a  mark  reg- 
istrable.   Id. 

343.  A  word  or  phrase  which  is  not  descrip- 
tive of  the  ingredients  or  characteristics  of 
an  article  of  merchandise  to  which  it  is  ap- 
plied is  not  registrable  if  it  is  descriptive  of 
the  uses  to  which  the  same  may  be  put.  Ex 
parte  The  Cobb  Manufacturing  Company,  C. 
D.  1908,  132  O.  G.  233. 

344.  The  words  "Silver  Dip"  as  a  trade- 
mark for  a  preparation  in  which  silver  articles 
may  be  dipped  or  immersed  for  the  purpose 
of  cleaning  them  is  descriptive,  and  hence  not 
registrable.     Id. 

345.  The  word  "Neverfail"  as  a  trade-mark 
for  stock  and  poultry  food  properly  refused 
registration,  since  it  is  descriptive  of  the 
character  of  quality  of  the  goods  to  which  it 
is  applied.  Ex  parte  Empire  Grain  &  Eleva- 
tor Co.,  C.  D.  1908,  132  O.  G.  844. 

34G.  The  words  "Nutty  Corn"  held  to  be 
descriptive  of  a  mixture  of  candied  nuts,  com, 
and  cocoanut  and  registration  of  the  same 
properly  refused.  Ex  parte  C.  Shenkberg  Co., 
C.  D.  1908,  132  O.  G.  1073. 

347.  The  words  "Shredded  Whole  Wheat" 
as  applied  to  certain  food  preparations  Held, 
to  be  descriptive,  and  therefore  incapable  of 
appropriation  as  a  trade-mark.  *The  Natural 
Food  Company  v.  Williams,  C.  D.  1908,  133 
O.  G.  232. 

348.  The  word  "Fits-U"  as  a  trade-mark  for 
eye  glasses  and  spectacle  frames  and  mount- 
ings is  a  mere  misspelling  of  the  descriptive 
words  "fits  )-ou"  and  is  not  registrable  as  a 
technical  trade-mark.  Ex  parte  American  Op- 
tical Company,  C.  D.  1908,  133  O.  G.  1935. 


548 


TRADE  MARKS,  XV. 


349.  The  registration  of  words  or  devices 
which  are  "merely  descriptive"  being  prohibited 
by  section  5  of  the  act  of  1905,  an  arrangement 
of  the  letters  of  such  a  word  in  a  particular 
way  or  a  mere  misspelling  thereof  does  not 
avoid  the  prohibition.     Id. 

350.  The  words  "Hold  On"  as  a  trade-mark 
for  clutches  for  scarf-pins  and  hat-pins  prop- 
erly refused  registration,  since  it  is  descrip- 
tive of  the  character  or  quality  of  the  goods 
to  which  it  is  applied.  Ex  parte  C.  P.  Gold- 
smith &  Company,  C.  D.  1908,  133  O.  G.  1935. 

351.  The  word  "Sterling"  as  a  trade-mark 
for  ale  or  for  any  other  kind  of  goods  is  de- 
scriptive of  the  quality  of  the  articles  on  which 
it  is  used,  as  it  denotes  that  the  article  is  gen- 
uine, pure,  and  of  superior  quality,  and  it  is 
therefore  ineligible  for  registration  as  a  tech- 
nical mark.  *Worcester  Brewing  Corporation 
V.  Ructcr  &  Company,  C.  D.  1908,  133  O.  G. 
1190. 

362.  The  words  "Standard  Line"  as  applied 
to  type  made  according  to  the  "lining  system"' 
are  descriptive  and  cannot  be  registered  as  a 
technical  trade-mark.  Hansen  v.  Inland  Type 
Foundry,  C.  D.  1908,  134  O.  G.  775. 

353.  The  word  "Asbestos"  as  applied  to 
shoes  made  of  leather  and  asbestos  is  clearly 
descriptive.     Johnson  v.  Brandan,  C.  D.  1908, 

134  O.  G.  257. 

354.  The  words  "Mountain  Dew"  as  a  trade- 
mark for  whiskey,  Held,  to  be  descriptive  in 
character,  and  therefore  not  registrable,  these 
words  as  commonly  used  meaning  whiskey 
or  a  particular  kind  of  whiskey.  Robertson, 
Sanderson  &  Company,  Ltd.  v.  Charles  Den- 
nehy  &  Company,  C.  D.  1908,  134  O.  G.  513. 

355.  The  words  "Health  Food"  as  applied  to 
bread,  crackers,  etc.,  are  clearly  descriptive 
of  the  goods  with  which  they  are  used  and 
cannot  be  appropriated  and  registered  as  a 
technical  trade-mark.  ♦Battle  Creek  Sani- 
tarium Co.,  Ltd.  V.  Fuller,  C.  D.  1908,  134  O.  G. 
411. 

356.  The  words  "Self-Loading"  as  applied 
to  a  cartridge  adapted  for  use  with  an  auto- 
matic gun  are  descriptive  and  not  registrable 
as  a  technical  trade-mark.  *The  Winchester 
Repeating  Arms  Company  v.  The  Peters  Cart- 
ridge Company,  C.   D.   1908,  134  O.  G.  2030. 

357.  The  words  "Library  Slips"  are  de- 
scriptive of  trading-coupons  to  be  used  in  the 
purchase  of  books,  libraries,  etc.,  and  cannot 
be  registered  as  a  technical  trade-mark.  Ex 
parte  The  Magazine  and  Book  Co.,  C.  D.  1908, 

135  O.  G.  661. 


358.  A  trade-mark  consisting  of  the  word 
"Nextobeer"  with  a  paraph  thereunder  for  a 
"non-intoxicating  malt  beverage,"  Held,  mere- 
ly descriptive  and  not  registrable.  Ex  parte 
Central  Consumers  Company,  C.  D.  1908,  135 
O.  G.  1581. 

359.  The  word  "Bestok"  Held,  descriptive, 
being  a  mere  misspelling  of  the  words  "best 
stock."  Ex  parte  Scott  Paper  Company,  C.  D. 
1908,  137  O.  G.  1482. 

360.  The  word  "Bestok"  being  descriptive 
and  not  registrable  alone,  is  not  rendered  reg- 
istrable by  the  association  therewith  of  the 
minor  details  of  an  ornamental  border  and  a 
seal.     Id. 

361.  The  words  "Celery  Ade"  as  a  trade- 
mark for  beverages  and  sirups  therefore.  Held, 
to  be  merely  descriptive  in  the  sense  contem- 
plated by  section  5  of  the  trade-mark  act  of 
1905,  and  therefore  not  registrable.  Ex  parte 
Shannon,  Ward  &  Company,  C.  D.  1909,  138 
O.  G.  257. 

362.  The  word  "Wearease"  as  a  trade-mark 
for  shoes  Held,  to  be  descriptive,  and  there- 
fore not  registrable.  Ex  parte  C.  S.  Sisson 
Company,  C.  D.  1909,  138  O.  G.  528. 

363.  Applicant  having  shown  a  mark  con- 
sisting of  the  picture  of  an  ass  with  a  descrip- 
tive word  written  thereacross,  he  made  all 
essential,  and  the  mark  must  be  treated  as  an 
entirety.  *Johnson  v.  Brandau,  C.  D.  1909, 
139  O.  G.  732. 

364.  In  such  a  case  registration  should  be 
denied  as  claimed.    *Id. 

365.  Held,  that  the  word  "Nextobeer,"  used 
as  a  trade-mark  for  non-intoxicating  beverage, 
is  descriptive,  and  therefore  not  registrable. 
*In  re  Central  Consumers  Co.,  C.  D.  1909,  140 
O.  G.  1112. 

366.  The  word  "Antiaqua"  Held,  descrip- 
tive, and  therefore  not  registrable  as  a  trade- 
mark for  an  asphaltic  cement,  since  the  ob- 
vious meaning  of  the  word  is  waterproof.  Ex 
parte  Union  Fibre  Company,  C.  D.  1909,  141 
O.  G.  285. 

367.  The  words  "Mountain  Dew"  as  a  trade- 
mark for  whiskey.  Held,  to  be  descriptive  and 
registration  properly  refused,  for  the  reason 
that,  however  fanciful  the  term  may  original- 
ly have  been,  the  words  are  now  generally 
recognized  as  meaning  whiskey.  *Charles 
Dennehy  &  Co.  v.  Robertson,  Sanderson  & 
Co.,  Limited,  C.  D.  1909,  140  O.  G.  1005. 

368.  The  word  "Crystal"  for  beer  Held,  to 
be  descriptive.  "As  applied  to  beer  the  word 
would  import  that  it  is  clear,  transparent,  that 


TRADE  MARKS,  XIV,  (c). 


549 


is,  light,  clear  beer  as  distinguished  from  other 
beers  that  are  dark  or  black.  That  it  was  in- 
tended by  the  applicant  to  represent  this  qual- 
ity is  apparent  from  the  figure  on  the  label, 
of  a  woman  holding  up  a  glass  of  the  bever- 
age and  examining  it  in  the  rays  of  the  sun." 
*In  re  The  New  South  Brewery  and  Ice  Com- 
pany, C.  D.  19()<J,  142  O.  G.  291. 

369.  The  mark  "UNXLD,"  Held,  to  be  a 
misspelling  of  the  word  "unexcelled,"  and 
therefore  not  registrable,  since  such  word  is 
"merely  descriptive."  Ex  parte  Clark-Hor- 
rocks  Company,  C.  D.  1909,  142  O.  G.  85.5. 

370.  The  words  "Black  Capsules"  are  not 
registrable  as  a  trade-mark  for  a  medicine  of 
a  dark  color  which  is  put  up  in  transparent 
capsules,  since  these  words  are  clearly  de- 
scriptive of  the  filled  capsules.  *John  Rutgert 
Planten  v.  Canton  Pharmacy  Co.,  C.  D.  1909, 
143   O.  G.  111.-!. 

371.  A  mark  comprising  a  circular  figure 
bearing  a  monogram  and  the  legend  "If  Not 
Right^Write — Will  Make  Right"  is  not  reg- 
istrable, since  the  legend  is  a  descriptive  phrase 
(citing  Johnson  v.  Brandau,  ante,  298,  139 
O.  G.  732,  32  App.  D.  C.  348).  Ex  parte  Sum- 
ner Iron  Works,  C.  D.  1909,  147  O.  G.  237. 

372.  The  word  "Getwell'  as  applied  to  a 
medicine  is  descriptive  of  the  goods  or  of  a 
quality  thereof  and  is  not  registrable  as  a 
trade-mark.  *In  re  Anti-Cori-Zine  Chemical 
Company,  C.  D.  1910,  151  O.  G.  452. 

373.  The  words  "Puncture  Proof"  Held,  not 
registrable  as  a  trade-mark  for  hosiery,  since 
they  are  descriptive  of  the  goods  to  which 
they  are  applied.  Ex  parte  A.  B.  Andrews 
Company,  C.  D.  1910,  151  O.  G.  740. 

374.  The  word  "Servself"  as  applied  to 
lunches,  sandwiches,  etc.,  Held,  descriptive 
and  registration  thereof  properly  refused.  Ex 
parte  Brennan,  Fitzgerald  &  Sinks,  C.  D.  1910, 
151  O.  G.  449. 

375.  The  word  "Kantleek"  as  applied  to 
atomizers,  fountain-syringes,  face  bags,  ice- 
bags,  and  water-bottles  is  descriptive,  and 
therefore  not  registrable  as  a  technical  trade- 
mark. *In  re  The  Seamless  Rubber  Company, 
C.  D.  1910,  153  O.  G.  547. 

376.  The  word  "Quick-Pression"  as  applied 
to  cocks  and  faucets.  Held,  descriptive  within 
the  meaning  of  section  5  of  the  trade-mark 
act  and  its  registration  properly  refused.  E.\ 
parte  The  Central  Brass  Mfg.  Co.,  C.  D.  1910, 
1.59  O.  G.  991. 

377.  The  word  "Buyfiat"  is  not  registrable 
as  a  trade-mark  for  hooks  and  eyes,  since  it 


is  descriptive  of  the  goods  upon  which  it  is 
used.  Ex  parte  Heaton  Manufacturing  Com- 
pany, C.  D.  1910,  160  O.  G.  493. 

378.  The  word  "New-Tone"  as  applied  to 
a  liquid  preparation  used  to  give  a  new  luster 
to  painted  or  varnished  surfaces  which  have 
become  dull.  Held,  properly  refused  registra- 
tion as  being  descriptive  of  the  goods  to  which 
it  is  applied.     Ex  parte  Newton,  C.   D.  1910, 

160  O.  G.  1037. 

379.  The  words  "Mosquito  Dope"  as  applied 
to  a  preparation  for  keeping  away  mosquitos, 
Held,  properly  refused  registration,  since  it 
is  descriptive  of  the  goods  upon  which  it  is 
used.     Ex  parte  Potter  &  Roziene,  C.  D.  1910, 

161  O.  G.  269. 

380.  The  words  "Choc  Home-Spun"  Held. 
properly  refused  registration  as  a  trade-mark 
for  candy,  since  such  mark  is  descriptive  of 
the  goods  to  which  it  is  applied.  Ex  parte 
Croft  &  Allen  Co.,  C.  D.  1911,  163  O.  G.  490. 

381.  The  words  "Lady  Like"  as  applied  to 
shoes.  Held,  descriptive  of  the  character  or 
quality  of  the  goods,  and  therefore  not  regis- 
trable as  a  technical  trade-mark.  Ex  parte 
E.  B.  Piekenbrock  &  Sons,  C.  D.  1911,  164 
O.  G.  507. 

382.  A  mark  which  is  descriptive  of  the 
goods  upon  which  it  is  used  does  not  lose  such 
quality  and  becomes  arbitrary  by  being  mis- 
spelled. Bad  orthography  has  not  yet  be- 
come so  rare  or  so  easily  detected  as  to  make 
a  word  the  arbitrary  sign  of  something  else 
than  its  conventional  meaning.  **Standard 
Paint  Co.  V.  Trinidad  Asphalt  Mfg.  Co.,  C. 
D.  1911,  165  O.  G.  971. 

383.  The  word  "Ruberoid"  Held,  to  be  a 
mere  misspelling  of  "rubberoid"  and  not  to 
constitute  a  valid  trade-mark  for  a  flexible 
roofing  material.    **Id. 

384.  The  words  "No  Sag"  Held,  properly 
refused  registration  as  a  trade-mark  for  hand- 
bags, since  they  are  descriptive  of  the  goods 
to  which  they  are  applied.  *In  re  Freund 
Bros.  &  Co..  C.  D.  1911,  169  O.  G.  206. 

385.  The  word  "Collier"  as  applied  to  dyna- 
mite. Held,  descriptive,  and  hence  not  regis- 
trable, since  it  would  indicate  to  the  trade 
that  it  was  intended  for  use  in  coal-mining. 
Ex  parte  Sinnamahoning  Powder  Mfg.  Co., 
C.  D.  1911,  170  O.  G.  481. 

386.  The  word  "Trophy"  is  not  registrable 
as  a  trade-mark,  since  it  would  indicate  to 
the  purchaser  that  the  goods  to  which  it  was 
applied  had  been  recognized  as  of  superior 
quality    by    the    presentation    of    a    prize    or 


550 


TRADE   MARKS,  XVII,    (a). 


trophy.    Ex  parte  Meyer  Bros.  Coffee  &  Spice 
Co.,  C.  D.  1911,  170  0.  G.  70.i. 

387.  Writing  a  descriptive  word  in  a  dis- 
tinctive manner  does  not  render  it  registrable 
as  a  trade-mark.  Ex  parte  Loft.  C.  D.  1911, 
172  O.  G.  261. 

388.  The  phrase  "Penny  a  Pound  Profit" 
Held,  descriptive  as  applied  to  candy.     Id. 

389.  The  mark  "Inter-Phone"  Held,  not 
registrable  as  a  trade-mark  for  telephone 
switching  apparatus,  since  it  is  descriptive  of 
the  goods  to  which  it  is  applied.  Ex  parte 
Western  Electric  Co..  C.  D.  1911,  173  O.  G. 
286. 

390.  A  mark  consisting  of  the  words  "Scot- 
issue  Towels"  Held,  properly  refused  regis- 
tration as  a  trade-mark  for  paper  toweling. 
Ex  parte  Scott  Paper  Co.,  C.  D.  1911,  173  O. 
G.  287. 

391.  A  mark  which  is  descriptive  is  not 
made  registrable  by  displaying  it  in  a  dis- 
tinctive manner.    Id. 

XV.  Descriptive  or  Deceitive. 

392.  The  words  "Barbers  Model"  are  de- 
scriptive in  that  they  convey  the  idea  that 
razors  so  marked  are  a  form  adopted  or  de- 
sired by  barbers  or  specially  adapted  for 
their  use.  If  not,  the  use  of  these  words  is 
deceptive  in  that  they  would  convey  such  a 
belief  to  the  intending  purchaser,  and  reg- 
istry should  therefore  be  refused.  Ex  parte 
Krusius  Brothers,  C.  D.  1898,  82  O.  G.  1687. 

393.  It  being  elementary  that  the  purpose 
of  a  trade-mark  is  to  denote  the  origin  of  the 
goods  upon  which  it  is  used,  it  seems  strange 
that  manufacturers  should  continue  to  adopt 
and  attempt  to  monopolize  words  which  either 
convey  an  idea  of  the  characteristics  of  or 
purposes  to  which  the  article  is  adapted  or 
which  are  deceptive  and  misleading.     Id. 

394.  Where  an  applicant  sought  to  register 
as  a  trade-mark  for  powdered  soap  "the  pic- 
ture of  a  bag  having  the  open  end  thereof 
held  close  by  a  tie,"  Held,  that  the  mark  is 
either  descriptive  or  deceptive  and  cannot  be 
registered.  Ex  parte  Martin,  C.  D.  1899,  89 
O.  G.  2259. 

395.  The  general  rule  for  refusing  to  regis- 
ter words  used  deceptively  is  that  the  words 
should  not  be  registered  whenever  it  clearly 
and  distinctly  appears  that  the  proposed  trade- 
mark constitutes  a  misrepresentation  of  such 
a  character  that  the  courts  would  not  protect. 
(Ex  parte  Bloch  &  Co.,  C.  D.  1887,  .54,  40  O. 


G.  443,  cited.)     Ex  parte  Grand  Rapids  Fur- 
niture Co.,  C.  D.  1899,  87  O.  G.  1957. 

396.  The  words  "Pepsin-Punch"  as  a  trade- 
mark for  a  non-alcoholic  beverage  refused 
registration  on  the  ground  that  they  are  de- 
scriptive and  deceptive.  Ex  parte  Birkhead, 
C.  D.  1901,  97  O.  G.  749. 

397.  The  word  "Felt-Less"  as  a  trade-mark 
for  sweat-pads  used  in  connection  with  har- 
ness for  horses  refused  registration  on  the 
ground  that  it  is  either  descriptive  or  decep- 
tive. Ex  parte  McClain,  C.  D.  1902,  99  O.  G. 
2101. 

398.  The  compound  word  "Napthol-Meth- 
ane"  Held,  to  be  registrable  as  a  trade-mark 
for  carbon-black,  for  the  reason  that  it  is 
well  known  that  this  substance  contains  noth- 
ing but  carbon.  If  these  words  are  descriptive 
at  all,  they  are  not  descriptive  of  this  sub- 
stance ;  neither  are  they  deceptive,  as  they 
would  never  be  understood  as  describing  car- 
bon-black. Ex  parte  Castle  Brook  Carbon 
Black  Company,  C.  D.  1902.  100  O.  G.  683. 

399.  Held,  that  "Malt  Myrrh"  as  a  trade- 
mark for  malt  liquors  is  not  registrable,  since 
the  word  "Malt"  is  clearly  descriptive  and 
"Myrrh"  is  either  descriptive  or  deceptive.  Ex 
parte  Barrett  &  Barrett,  C.  D.  1902,  100  O.  G. 
1976. 

400.  "Syrup  of  Figs"  as  a  trade-mark  or 
trade-name  for  a  medical  preparation  contain- 
ing no  appreciable  amount  of  the  syrup  of 
figs.  Held,  to  be  deceptive  and  not  entitled  to 
protection  as  a  property  right.  **Clinton  E. 
Worden  &  Company  v.  California  Fig  Syrup 
Company,  C.  D.  1903,  102  O.  G.  623. 

401.  The  contention  that  "Syrup  of  Figs" 
although  not  a  technical  trade-mark  may  be 
protected  as  a  trade-name  describing  the  ar- 
ticle overruled  because  it  contains  a  false  sug- 
gestion.    **Id. 

402.  Even  if  the  juice  of  figs  was  at  first  so 
largely  used  in  the  compound  called  "Syrup 
of  Figs"  as  to  make  that  term  descriptive. 
Held,  that  there  was  no  justification  for  con- 
tinuing the  use  of  that  term  after  the  manu- 
facturers and  venders  of  the  medicine  ceased 
to  use  fig-juice  as  a  material  ingredient.    **Id. 

403.  The  publication  by  the  complainant  of 
articles  stating  that  the  medical  properties 
of  its  compound  "Syrup  of  Figs"  were  de- 
rived from  senna  and  not  the  juice  of  figs. 
Held,  insufficient  to  avoid  the  charge  of  de- 
ception, since  the  popularity  of  the  medicine 
was  due  to  the  popular  belief  that  its  essen- 
tial ingredient  was  the  juice  of  figs.    **Id. 


TRADE  MARKS,  XVI. 


551 


404.  Where  any  symbol  or  label  claimed  as 
a  trade-mark  is  so  constructed  or  worded  as 
to  make  or  contain  a  distinct  assertion  which 
is  false,  no  property  can  be  claimed  in  it,  and 
the  right  to  the  exclusive  use  of  it  cannot  be 
maintained.     **Id. 

405.  Where  a  can  known  to  contain  a  syrup 
has  therenn  a  representation  of  a  maple-leaf, 
Held,  that  the  mark  is  either  descriptive  or 
deceptive  and  should  be  refused  registration, 
as  the  ordinary  purchaser  would  naturally 
expect  to  find  maple-syrup  in  the  can,  and  if 
it  was  found  to  contain  some  other  kind  of 
syrup  the  purchaser  would  be  deceived.  Ex 
parte  A.  R.  Gregoise  &  Co.,  C.  D.  1903,  102  O. 
G.  129.-?. 

406.  "\'itrified"  as  applied  to  asbestos  Held, 
to  be  either  descriptive  or  deceptive  and  not 
regristrable  as  a  trade-mark.  Ex  parte  Chi- 
cago  Fire   Proof    Covering   Company,   C.    D. 

1903,  104  O.  G.  852. 

407.  The  word  "Ruhberback"  used  in  ref- 
erence to  a  billiard-cloth  w^ould  convey  the 
impression  that  the  cloth  was  backed  with 
rubber  and  would  therefore  be  either  descrip- 
tive or  deceptive  in  meaning.  Ex  parte  Good- 
man-Leavitt-Vatter  Company,  C.  D.  1903,  107 
O.  G.  834. 

408.  Held,  that  the  word  "radium"  is  either 
descriptive  or  deceptive  in  meaning  when  ap- 
plied to  liniments,  and  therefore  it  is  not 
registrable  either  alone  or  in  connection  with 
the  word  "radia."     Ex  parte  Mitchell,  C.   D. 

1904,  113  O.  G.  1970. 

409.  The  applicant's  claim  to  the  use  of 
"Standard"  as  a  trade-mark  is  in  no  wise 
strengthened,  because  the  word  is  applied  only 
to  machines  of  inferior  design  which  are  not 
in  any  sense  standard.  The  word  cannot  be 
appropriated  as  a  trade-mark  whether  it  is 
truly  descriptive  or  falsely  descriptive.  In  re 
National  Phonograph  Co.,  C.  D.  1907,  128  O. 
G.  1295. 

410.  The  word  "Oolitic"  as  applied  to  a 
paint  is  either  descriptive  or  deceptive,  and 
therefore  not  registrable.  Ex  parte  The  A. 
Burdsal  Company,  C.  D.  1909,  146  O.  G.  505. 

411.  "Spanish"  or  "Zimmer  Spanish"  being 
the  name  of  a  well-known  variety  of  tobacco, 
Held,  that  the  term  "Half  Spanish"  as  applied 
to  cigars  would  be  either  descriptive  or  de- 
ceptive and  is  therefore  not  registrable  as  a 
trade-mark.  The  Geo.  B.  Sprague  Cigar  Co. 
and  The  W'ing  Cigar  v.  T.  M.  Kildow  Cigar 
Company,  C.  D.  1910,  155  O.  G.  1041. 


412.  The  words  "Half  Spanish"  as  applied 
to  cigars.  Held,  deceptive,  and  therefore  not 
registrable  as  a  trade-mark  where  half  of  the 
tobacco  used  in  the  manufacture  of  such 
cigars  was  not,  in  fact,  Spanish  tobacco.  *T. 
M.  Kildow  Cigar  Company  v.  The  George  B. 
Sprague  Cigar  Company,  C.  D.  1910,  156  O. 
G.  259. 

XVI.  Descriptive  and  Geocraphicaj,. 

413.  The  words  "P-I-T-T-S-B-U-R-G 
P-U-M-P,"  arranged  in  letter-hyphenated 
form,  refused  registration  as  a  trade-mark 
for  pumps  on  the  ground  that  the  word  "Pitts- 
burgh" being  geographical  and  "Pump"  de- 
scriptive and  the  petitioner  carrying  on  the 
business  of  the  manufacture  of  pumps  at 
Pittsburg,  Pa.,  it  follows  that  it  has  no  right 
to  monopolize  the  words,  at  least  as  against 
every  other  manufacturer  of  pumps  in  Pitts- 
burgh. Ex  parte  Pittsburgh  Pump  Company, 
C.   D.  1898,  84  O.  G.  309. 

414.  By  hyphenating  the  words  the  essen- 
tial feature  of  the  trade-mark  has  not  been 
changed  to  a  degree  that  would  warrant  regis- 
tration. The  geographical  and  descriptive 
words  still  remain,  notwithstanding  the  form 
in  which  they  are  shown  in  the  facsimile,  the 
essential  features  of  the  trade-mark,  and  it 
would  be  a  very  close  observer  who  would 
pay  any  heed  to  the  manner  in  which  the  let- 
ters were  separated.    Id. 

415.  The  words  "The  Roman"  refused  reg- 
istration as  a  trade-mark  on  the  ground  that 
they  indicate  either  that  the  goods  are  man- 
ufactured in  some  locality  called  Rome,  or 
that  they  are  made  after  the  Roman  style  or 
pattern.  Marks  indicating  the  place  of  manu- 
facture or  descriptive  of  the  style  or  quality 
of  the  goods  are  not  registrable.  Ex  parte 
Textile  Company,  C.  D.  1900,  91  O.  G.  820. 

416.  Held,  that  the  word  "Yale"  having  a 
geographical  significance  and  being  a  more  or 
less  common  surname  is  not  such  an  arbitrary 
word  as  would  make  it  the  sole  property  of 
any  one  individual,  and  its  registration  as  a 
trade-mark  should  be  refused.  Ex  parte 
Peats,  C.  D.  1901,  96  O.  G.  1649. 

417.  The  words  "Red  River  Special"  held 
not  to  be  registrable  as  a  trade-mark  for  agri- 
cultural machinery  on  the  ground  that  the 
words  "Red  River"  are  geog^raphical  and  the 
word  "Special"  is  indicative  of  grade  or  style, 
and  therefore  the  mark  is  not  as  an  entirety 
indicative  of  origin  or  ownership.     (Browne 


5S3 


TRADE  MARKS,  XVII,  (b). 


on  Trade-Marks,  sees.  346,  347 ;  Ex  parte 
Buffalo  Pitts  Co.,  C.  D.  1899,  244,  89  O.  G. 
2069.)  Ex  parte  Nichols  and  Shepard  Com- 
pany, C.  D.  1902,  99  O.  G.  1623. 

418.  Held,  that  the  word  "Grecian"  should 
not  be  registered  as  a  trade-mark,  since  it 
either  conveys  the  idea  that  the  articles  to 
which  it  is  applied  came  from  Greece  and  is 
therefore  geographical  or  that  they  are  made 
in  the  Grecian  style  and  is  therefore  descrip- 
tive. Ex  parte  Classic  Corset  Company,  C.  D. 
1902,   100   O.   G.   1329. 

419.  Where  the  national  emblems  and  colors 
are  used  to  form  a  part  of  a  trade-mark  for 
the  purpose  of  indicating  origin.  Held,  that 
the  mark  has  both  a  geographical  and  a  de- 
scriptive significance,  and  for  these  reasons, 
besides  that  of  public  policy,  the  mark  in  its 
entirety  is  not  registrable.  Ex  parte  Brands- 
ville  Fruit  Farm  Co.,  C.  D.  1903.  103  O.  G. 
660. 

420.  The  word  "Club"  as  applied  to  liquors 
having  become  descriptive  and  the  word  "Lex- 
ington" being  geographical,  the  term  "Old 
Lexington  Club"  as  applied  to  whiskey  is  not 
registrable  as  a  technical  trade-mark.  Ken- 
tucky Distilleries  &  Warehouse  Co.  v.  Old 
Lexington  Club  Distillery,  C.  D.  1908,  13.5  O. 
G.  226. 

421.  The  words  "Union  Carbide"  are  not 
registrable  as  a  trade-mark  for  calcium  car- 
bid,  as  the  word  "Union"  is  geographical  and 
the  word  Carbide"  is  descriptive.  Ex  parte 
Union  Carbide  Co.,  C.  D.  1908,  133  O.  G.  450. 

422.  "America's  Strength"  is  not  registrable 
as  a  trade-mark  for  coffee,  the  word  "Amer- 
ica's" being  geographical  and  the  word 
"Strength"  being  descriptive  of  a  quality  of 
the  goods.  Ex  parte  Meyer  Brothers  Coffee 
and  Spice  Co.,  C.  D.  1908,  13.5  O.  G.  89. 

423.  The  words  "America's  Strength"  are 
not  registrable  as  a  trade-mark  for  coffee, 
since  the  word  "America"  is  clearly  geo- 
graphical, and  the  word  "Strength"  as  ap- 
plied to  coffee  is  descriptive  of  quality.  *In 
re  Meyer  Brothers  Coffee  and  Spice  Company, 
C.   D.   1909,   140  O.   G.   756. 

424.  A  registrable  trade-mark  cannot  be 
made  by  combining  two  non-registrable  words. 
*Id. 

425.  The  words  "Parisian  Ivory"  are  not 
registrable  as  a  trade-mark  for  tooth-brushes, 
since  the  word  "Parisian"  is  geographical  and 
the  word  "Ivory"  as  applied  to  tooth-brushes 
is  either  descriptive  or  deceptive.  Ex  parte 
Loonen,  C.  D.  1909,  146  O.  G.  937. 


426.  A  mark  consisting  of  the  words  "Yel- 
lowstone Special"  and  the  representation  of 
a  train  of  cars.  Held,  not  registrable  as  a 
trade-mark  for  flour,  since  the  word  "Yellow- 
stone" is  geographical,  the  woid  "Special"  is 
descriptive,  and  the  representation  of  a  train 
of  cars  is  shown  in  prior  registered  marks  for 
goods  of  the  same  descriptive  properties.  Ex 
parte  The  St.  Anthony  Milling  &  Elevator 
Co.,  C.  D.  1910,  161  O.  G.  1047. 

XVII.  Geographical. 
(a)  Registrable. 

427.  On  appeal  from  the  decision  of  the 
examiner  refusing  to  register  the  word 
"Hansa"  as  a  trade-mark  for  lard,  sausages, 
and  bacon  on  the  ground  that  as  it  is  the 
name  of  a  trading  league  comprising  the  cities 
of  Hamljurg.  Lubeck,  and  Bremen,  known  as 
"The  Hansa,"  it  is  geographical  in  character, 
Held,  that  the  word  has  no  such  geographical 
character  to-day  as  would  forbid  its  registra- 
tion. Ex  parte  Tietgens  &  Robertson,  C.  D. 
1899.  87  O.  G.  2117. 

428.  As  the  word  "Hansa"  was  registered 
in  Germany  under  the  German  law.  which  pro- 
hibits registration  of  words  which  are  of  a 
geographical  character,  any  doubt  of  the  pro- 
priety of  registering  it  here  should  be  waived, 
as  the  German  patent  office  is  eminently  qual- 
ified to  pass  upon  the  question  of  the  geo- 
graphical character  of  the  word,  and  its  deci- 
sion is  entitled  to  respect,  although  in  no  man- 
ner controlling.  (Carter  v.  Wollschlaeger, 
53  Fed.  Rep.  573,  cited.)     Id. 

429.  A  word-symbol  to  be  refused  registra- 
tion because  of  its  geographical  character 
must  refer  to  some  specific  locality.    Id. 

430.  The  name  "Hunyadi"  being  neither  de- 
scriptive nor  geographical,  but  purely  arbi- 
trary and  fanciful  as  applied  to  medicinal 
waters,  was  the  proper  subject  of  a  trade- 
mark. ♦*Saxlehner  v.  Eisner  &  Mendelson 
Company,  C.  D.  1900,  93  O.  G.  940. 

431.  The  word  "Delta,"  although  the  name 
of  a  county  in  Michigan,  a  county  in  Texas, 
and  of  numerous  small  towns,  is  a  valid  trade- 
mark for  hardware,  since  its  arbitrary  sig- 
nificance as  a  letter  of  the  Greek  alphabet  is 
so  far  superior  to  its  geographical  meaning 
that  it  cannot  be  considered  a  geographical 
word.  Ex  parte  Manogue-Pidgeon  Iron  Com- 
pany, C.  D.  1901,  97  O.  G.  2089. 

432.  It  is  settled  by  the  decisions  of  the 
courts    that    words    which    have    no    well-de- 


TRADE  MARKS,  XVII,  (a). 


553 


fined  meaning  other  than  their  geographical 
meaning  are  mere  geographical  words  and 
are  not  registrable  as  trade-marks.     Id. 

433.  Marks  which  are  mere  geographical 
words  are  not  registrable ;  but  it  is  not  be- 
lieved to  have  been  the  intention  of  the  courts 
to  rule,  broadly,  that  a  word  cannot  be  a  trade- 
mark merely  because  it  happens  to  be  used  to 
designate  some  town  or  locality.     Id. 

434.  Where  words  which  are  in  common 
use  and  in  such  use  have  a  well-defined  mean- 
ing have  been  been  also  used  as  the  name  of 
some  town  or  locality.  Held,  that  they  are  not 
thereby  changed  to  geographical  words,  and 
where  they  are  commonly  understood  in  their 
original  sense  their  geographical  meaning  is 
so  remote  that  it  may  be  disregarded.     Id. 

435.  The  word  "Selma,"  although  the  name 
of  a  town  in  Alabama,  is  registrable  as  a 
trade-mark  for  washing-machines,  since  it 
would  be  accepted  by  purchasers  of  such  ma- 
chines as  arbitrary  and  fanciful  in  view  of 
its  classical  origin  and  use  as  a  feminine 
Christian  name  and  would  not  in  any  case  be 
given  a  geographical  significance.  Ex  parte 
Huenefeld.  C.  D.  1003,  98  O.  G.  1968. 

436.  The  word  "Defiance"  Held,  registrable 
as  a  trade-mark  for  paper,  since  its  geographi- 
cal significance  due  to  its  use  as  the  name  of 
a  town  does  not  overshadow  its  original  mean- 
ing of  a  challenge  and  take  from  it  its  arbi- 
trary significance.  Ex  parte  Byron  Weston 
Company,  C.  D.  1902,  99  O.  G.  861. 

437.  Where  a  mark  is  arbitrary  and  dis- 
tinctive when  adopted,  but  has  since  become 
prominent  geographically  as  the  name  of  a 
place,  Held,  that  in  justice  the  applicant  can- 
not be  deprived  of  his  mark  unless  its  geo- 
graphical significance  is  so  great  as  to  make 
it  certain  that  it  would  be  understood  in  that 
sense  by  the  purchasing  public.     Id. 

438.  "The  word  "Galena"  as  a  trade-mark 
for  manufactured  metals.  Held,  to  be  register- 
able  on  the  ground  that  while  it  has  a  limited 
geographical  significance  and  is  also  descriptive 
of  lead  sulfid  its  arbitrary  significance  when 
used  in  connection  with  antifriction  metals  is 
so  far  predominating  that  it  will  be  so  un- 
derstood by  the  public.  Ex  parte  Magnus 
Metal  Company,  C.  D.  1902,  100  O.  G.  451. 

439.  The  word  "Aurora"  Held,  to  be  regis- 
trable as  a  trade-mark,  as  its  fanciful  or  arbi- 
trary meaning  so  predominates  over  its  purely 
geographical  significance  that  it  would  be 
understood  by  the  purchasing  public  as  an 
arbitrary  word   designating  origin  or  owner- 


ship.    Ex  parte  Aspegren  &  Co.,  C.  D.  1902, 
100  O.  G.  684. 

440.  Where  a  word  having  an  arbitrary  or 
fanciful  meaning  has  been  adopted  as  a  name 
of  locality,  Held,  that  the  question  whether 
or  not  it  is  registrable  as  a  trade-mark  de- 
pends upon  the  question  whether  or  not  its 
arbitrary  meaning  so  far  predominates  over 
its  geographical  meaning  that  it  will  be  so 
understood  by  the  purchasing  public.     Id. 

441.  The  appellees'  right  to  the  trade-mark 
"Angostura"  for  bitters  sustained  notwith- 
standing the  fact  that  the  bitters  were  orig- 
inally made  at  a  town  called  "Angostura," 
which  town  has  long  since  ceased  to  exist 
(f  A.  Bauer  &  Co.  v.  Siegert  et  al.,  C.  D.  1903, 
106  O.  G.  267. 

442.  Geographical  names  often  acquire  a 
secondary  signification  indicative  not  only  of 
the  place  of  manufacture  or  production,  but 
of  the  name  of  the  manufacturer  or  producer 
and  the  excellence  of  the  thing  manufactured 
or  produced,  which  enables  the  owner  to  as- 
sert exclusive  right  to  such  name  as  against 
every  one  not  doing  business  within  the  same 
geographical  limits,  and  even  against  them  if 
the  name  be  used  fraudulently  for  the  purpose 
of  misleading  buyers  as  to  the  actual  origin 
of  the  thing  produced  or  of  palming  off  the 
productions  of  one  person  as  those  of  another. 
**La  Republique  Francaise  v.  Saratoga  Vichy 
Spring  Co.,  C.  D.  190.3,  105  O.  G.  977. 

443.  Held,  that  the  defendant  has  not  sim- 
ulated the  label  of  the  plaintiff  or  attempted  to 
foist  its  goods  upon  the  public  as  the  goods  of 
the  plaintiff.    **Id. 

444.  Held,  that  the  arbitrary  significance  of 
the  word  "Gibraltar"  renders  it  registrable  as 
a  trade-mark  for  belting,  notwithstanding  the 
geographical  meaning  of  the  word.  (Ex  parte 
Nave  &  McCord  Mercantile  Co.,  C.  D..  1899, 
GO,  8G  O.  G.  1985,  overruled.)  Ex  parte  Jewell 
Belting  Company,  C.  D.  190.-?,  110  O.  G.  309. 

445.  The  word  "Gibraltar"  has  the  fanciful 
meaning  of  firmness  and  strength  and  when 
applied  to  goods  requiring  strength.  Held,  that 
the  arl>itrary  significance  of  the  word  so  far 
transcends  its  geographical  meaning  as  to 
render  the  geographical  meaning  of  compara- 
tive insignificance.    Id. 

446.  The  mark  "Brookwood"  for  whiskey. 
Held,  not  geographical.  L.  W.  Levy  &  Co.  v. 
Uri,  C.  D.  1907,  131  O.  G.  1687. 

447.  The  words  "Hotel  .\stor"  are  not  geo- 
graphical  and   are  capable  of  use  as  a  valid 


554 


TRADE  MARKS,  XVII,  (b). 


trade-mark.     A.   F.   Beckmann  and   Company 
V.  B.  Fischer  &  Co.,  C.  D.  1910,  157  O.  G.  486. 

448.  The  word  "Cehic"  used  as  a  trade- 
mark for  tea,  Held,  not  geographical  and  to 
constitute  a  registrable  trade-mark.  Ex  parte 
Acker,  Merrall  &  Condit  Co.,  C.  D.,  1911,  165 
O.  G.  473. 

449.  The  word  "Chartreuse"  as  applied  to 
a  liqueur  or  cordial.  Held,  not  geographical 
and  to  constitute  a  valid  trade-mark.  **Pere 
Alfrado  Luis  Baglin,  Supervisor  General  of 
the  Carthusian  Monks,  C.  D.  1911,  169  O.  G. 
449. 

450.  A  mark  for  wheat-flour  consisting  of  the 
words  "Orange  Grove"  and  the  representation 
of  a  twig  having  oranges  thereon.  Held,  to  be 
a  fanciful  mark  and  not  to  fall  within  the 
prohibition  of  the  statute  against  the  regis- 
tration of  marks  which  are  merely  geogra- 
phical. C.  A.  Gambrill  Mfg.  Co.  v.  H.  Becker, 
C.  D.  1911,  173  O.  G.  863. 

(b)  Not  Registrable. 

451.  The  word  "Yucatan"  is  geographical 
and  cannot  be  registered  as  a  trade-mark  for 
leather  and  leather  goods.  Any  one  import- 
ing hides  from  Yucatan  or  purchasing  hides 
exported  from  Yucatan  would  be  entitled  to 
call  or  mark  skins  and  tanned  leather  having 
such  origin  by  the  name  "Yucatan."  Ex  parte 
Weil.  C.  D.  1898,  83  O.  G.  1802. 

452.  As  "Yucatan"  taken  by  itself  is  not 
registrable,  it  is  not  made  registrable  by  plac- 
ing it  within  a  square  figure,  as  the  essential 
feature  of  the  mark  is  the  word  "Yucatan." 
Id. 

453.  An  alleged  trade-mark,  the  essential 
feature  of  which  is  stated  to  be  the  word 
"Aurora,"  refused  registration  as  a  trade- 
mark for  boots  and  shoes  on  the  ground  that 
it  is  geographical.  E.x  parte  Little  &  Co.,  C. 
C.  D.  1898,  85  O.  G.  1221. 

454.  The  mere  fact  that  a  word  appears  in 
the  Postal  Guide  as  the  name  of  a  postoffice 
does  not  give  to  said  word  such  a  geographi- 
cal meaning  as  to  prevent  its  adoption  as  a 
trade-mark  when  it  has  a  primary  significance 
not  geographical.     Id. 

455.  The  general  rule  that  geographical 
names  cannot  be  registered  as  trade-marks  is 
well  settled  and  very  rarely  can  a  word  which 
is  truly  geographical  be  registered  even  though 
it  has  a  fanciful  or  arbitrary  meaning.  It 
being  once  admitted  that  a  word  sought  to  be 
registered    has    a    geographical    meaning,    it 


should  be  the  rule  of  the  office  not  to  register 
such  word,  unless  it  appears  beyond  any 
doubt  not  only  that  its  fanciful  or  arbitrary 
meaning  is  so  well  understood  that  the  mean- 
ing of  the  word  would  be  at  once  recognized, 
but  that  the  name  could  not  be  rightfully 
used  upon  the  same  class  of  goods  by  any  one 
making  them  in  the  locality  bearing  the  name. 
Id. 

456.  While  the  word  "Gibraltar"  has  a  cer- 
tain arbitrary  and  fanciful  meaning,  implying 
firmness  and  strength,  yet  that  is  secondary 
to  its  geographical  meaning,  and  it  should  not 
he  registered  as  a  trade-mark.  Ex  parte 
Nave  &  McCord  Mercantile  Company,  C.  D. 
1899.  86  O.  G.  198i>. 

457.  The  fact  that  no  one  carries  on  the 
manufacture  of  goods  at  any  of  the  places 
named  Gibraltar  should  not  be  controlling, 
as  the  applicant  by  appropriating  the  word 
cannot  bar  another  who  may  hereafter  manu- 
facture goods  at  Gibraltar  from  marking  his 
goods  with  that  word.    Id. 

458.  It  is  not  now  a  question  that  no  one 
can  acquire  an  exclusive  right  to  the  use  of 
geographical  names  as  trade-marks,  as  that 
question  has  been  settled  by  a  long  line  of 
court  decisions,  d  Illinois  Watch  Case  Co.  v. 
Elgin  National  Watch  Co.,  C.  D.  1899,  87  O. 
G.  2323. 

459.  As  the  office  of  a  trade-mark  is  to 
point  out  distinctively  the  origin  or  ownership 
of  the  articles  to  which  it  is  affixed,  no  sign,  or 
form  of  words  can  be  appropriated  as  a 
valid  trade-mark  which  from  the  nature  of 
the  fact  conveyed  by  its  primary  meaning 
others  may  employ  with  equal  right  for  the 
same  purpose.    *Id. 

480.  The  general  rule  is  thoroughly  estab- 
lished that  words  that  do  not  in  or  of  them- 
selves indicate  anything  of  the  nature  of  ori- 
gin, manufacture,  or  ownership,  but  are  mere- 
ly descriptive  of  the  place  where  the  article 
is  manufactured  or  produced,  cannot  be  mo- 
nopolized as  a  trade-mark.    *Id. 

461.  While  the  secondary  signification  at- 
tributed to  the  use  of  the  word  "Elgin"  might 
entitle  appellant  to  relief,  the  fact  that  pri- 
marily it  simply  described  the  place  of  manu- 
facture and  that  appellees  had  the  right  to  use 
it  in  that  sense,  though  not  the  right  to  use 
it  without  explanation  or  qualification,  if  such 
use  would  be  an  instrument  of  fraud,  war- 
rants the  holding  that  the  general  rule  ap- 
plies and  that  the  geographical  name  cannot 
I)e  employed  as  a  trade-mark  and  its  exclusive 


TRADE  MARKS,  XVII,  (b). 


555 


use  vested  in  appellant,  and  that  it  is  not 
properly  entitled  to  be  registered  as  a  trade- 
mark.   *Id. 

462.  The  decision  of  the  court  below  sus- 
taining the  bill  upon  the  ground  that  the  word 
"Elgin"  had  acquired  a  secondary  significa- 
tion and  through  a  long  course  of  business 
had  come  as  applied  to  watches  to  designate 
the  manufacture  of  appellee  as  an  article  of 
approved  excellence  and  that  therefore  the 
word  in  that  connection  performed  distinctly 
the  function  of  a  trade-mark  and  could  be 
registered  and  upheld  as  such  under  the  act 
of  congress,  Held,  to  be  erroneous  and  that 
the  word  "Elgin"  was  not  and  could  not  be 
made  a  trade-mark.  (Elgin  Watch  Co.  v. 
Illinois  Watch  Case  Co.,  89  Fed.  Rep.,  487, 
reversed.)  d  Illinois  Watch  Case  Co.  v.  Elgin 
Watch  Co.,  C.  D.  1899,  87  O.  G.  2323. 

463.  The  complainants  are  not  exclusive 
owners  of  the  trade  name  "Pocahontas"  as  ap- 
plied to  all  coal  coming  from  the  Pocahontas 
coal  field,  as  prior  to  the  time  when  they 
claim  they  became  owners  of  the  name,  the 
name  "Pocahontas"  had  been  used  to  indicate 
the  region  from  which  coal  came  and  the 
natural  quality  thereof,  and  was  applied  in- 
discriminately to  the  product  of  all  the  mines 
in  that  region.  **Castner  et  al.  v.  Coflfman, 
etc.,  C.  D.  1900,  91  O.  G.  2003. 

464.  A  mark  for  crackers  consisting  of  the 
representation  of  a  cracker  with  the  word 
"St.  Johnsbury"  printed  thereon  in  dotted 
letters,  Held,  essentially  geographical  and  not 
registrable.  Ex  parte  Cross,  C.  D.  1901,  96  O. 
G.  643. 

465.  A  geographical  name  not  being  regis- 
trable alone  cannot  properly  be  included  as 
an  essential  feature  of  a  mark  to  be  registered. 
Ex  parte  Columbia  Incandescent  Lamp  Com- 
pany, C.  D.  1901,  96  O.  G.  1036. 

466.  The  fact  that  the  letters  are  so  ar- 
ranged that  the  geographical  name  spelled  by 
them  plainly  appears  and  gives  the  impression 
to  tile  reader  that  the  name  is  the  essential 
feature  of  the  mark,  Held,  that  this  arrange- 
ment cannot  be  considered  so  arbitrary  as  to 
warrant  registration.    Id. 

467.  When  the  geographical  name  is  printed 
so  that  the  letter  "C"  is  made  to  form  about 
three-fourths  of  a  circular  band  and  the  band 
is  completed  by  the  letters  "olumbia,"  Held, 
that  the  arrangement  is  not  such  as  to  de- 
stroy the  identity  of  the  same  and  to  render 
it  so  arbitrary  and  fanciful  as  to  be  regis- 
trable.    Id. 


468.  A  mark  which  is  common  property  is 
not  made  the  property  of  any  one  individual 
by  associating  with  it  certain  arbitrary  sym- 
bols which  in  themselves  may  be  registrable. 
Id. 

469.  The  word  "Mobile"  refused  registra- 
tion as  a  trade-mark  for  playing-cards  on  the 
ground  that  it  is  geographical.  Ex  parte 
United  States  Playing  Card  Company,  C.  D. 
1901,  96  O.  G.  1855. 

470.  The  word  "Mobile,"  which  is  the  name 
of  the  principal  seaport  of  the  State  of  Ala- 
bama, situated  on  Mobile  Bay,  the  site  of  the 
historic  battle  of  Mobile  Bay,  Held,  to  have  a 
geographical  meaning  greater  than  any  fan- 
ciful or  arbitrary  meaning  which  may  be  as- 
cribed thereto.  Registration  should  therefore 
be  refused.  (Ex  parte  Little  &  Co.,  C.  D. 
1898,  652,  85  O.  G.  1221.)     Id. 

471.  The  word  ".Alabamatube"  can  mean 
nothing  diiTerent  from  the  two  words  "Ala- 
bama tube" — that  is,  a  tube  produced  in  Ala- 
bama. The  word  is  geographically  descriptive 
and  cannot  be  registered  as  a  trade-mark  for 
tubes.  Ex  parte  Alabama  Tube  and  Iron 
Company,  C.  D.  1902,  99  O.  G.  2321. 

472.  The  word  "Clinton"  surrounded  by  an 
ornamental  border  refused  registration  as  a 
trade-mark  for  wagons  on  the  ground  that  it 
is  essentially  a  geographical  word,  especially 
when  used  in  connection  with  wagons.  The 
word  "Clinton"  not  being  arbitrary  in  char- 
acter is  not  made  arbitrary  by  the  fact  that  it 
is  surrounded  by  an  ornamental  border.  Ex 
parte  Abingdon  Wagon  Company,  C.  D.  1903, 
102  O.  G.  229. 

473.  The  word  "York"  refused  registration 
as  a  trade-mark  for  the  reason  that  its  pri- 
mary significance  is  geographical.  Ex  parte 
Abendroth  Brothers.  C.  D.  1903,  104  O.  G. 
1119. 

474.  Held,  that  the  word  "Yale"  has  a  geo- 
graphical significance,  and  being  a  common 
surname  is  not  such  an  arbitrary  word  as 
would  make  it  the  sole  property  of  any  one 
individual,  and  its  registration  as  a  trade- 
mark should  be  refused.  (Ex  parte  Peats, 
C.  D.  1901,  117,  96  O.  G.  1649.)  Ex  parte 
Charles  A.  Masters  &  Company,  C.  D.  1904. 
109  O.  G.  1069. 

475.  "Manhattan"  as  a  trade-mark  for  sew- 
ing-machines refused  registration  on  the 
ground  that  it  is  geographical.  Ex  parte  The 
Davis  Sewing  Machine  Company,  C.  D.  1904, 
112  O.  G.  17.5. 


656 


TRADE  MARKS,   XIX. 


476.  The  word  "Ozark"  refused  registra- 
tion as  a  trade-mark  for  mineral  water  on 
the  ground  that  it  is  geographical.  Ex  parte 
Siloam  Springs  Water  Company,  C.  D.  1904, 
113  O.  G.  1420. 

477.  Where  a  word  has  no  meaning  except 
its  geographical  meaning,  it  must  be  regarded 
as  primarily  geographical  and  cannot  be  reg- 
istered as  a  trade-mark.     Id. 

478.  Held,  that  the  word  "Amherst"'  is  es- 
sentially geographical  in  meaning,  and  there- 
fore not  registrable  as  a  trade-mark.  Ex 
parte  Elmira  Cotton  Mills  Company,  C.  D. 
1904,  111  O.  G.  2493. 

479.  The  word  "Mattawan"  refused  regis- 
tration as  a  trade-mark,  since  its  geographical 
meaning  outweighs  any  fanciful  meaning 
which  may  be  ascribed  to  it.  Ex  parte  Falken- 
berg.  C.  D.  1905,  ll.i  O.  G.  106.5. 

480.  While  the  word  "Mattawan"  has  a 
meaning  in  the  Indian  language  which  would 
render  it  arbitrary  if  understood,  such  mean- 
ing would  not  be  known  to  the  general  pub- 
lic, but  only  to  students  of  the  Indian  lan- 
guages.    Id. 

481.  The  word  "Ozark"  refused  registra- 
tion as  a  trade-mark,  since  its  meaning  is 
primarily  geographical.  Ex  parte  Keet  & 
Rountree  Drygoods  Company,  C.  D.  190.5,  11.5 
O.  G.  1849. 

482.  While  the  word  "Ozark"  may  have 
meanings  other  than  geographical,  such  mean- 
ings would  not  be  known  or  appreciated  by 
the  ordinary  purchaser  seeing  the  word  used 
as  a  trade-mark  upon  goods.     Id. 

483.  The  word  "Savoy"  is  primarily  geo- 
graphical in  significance,  and  is  therefore  not 
registrable.  Ex  parte  United  States  Brewing 
Company,  C.   D.   190G,  125  O.  G.  352. 

484.  Where  it  is  contended  that  the  word 
"Savoy"  as  a  family  name  is  registrable  be- 
cause printed  in  script  on  a  diagonal  line  with 
the  letters  shaded  and  with  a  paraph  under 
the  word,  Held,  not  to  be  printed  in  such  a 
particular  or  distinctive  manner  as  to  entitle 
it  to  registration.     Id. 

485.  A  mark  having  as  the  predominating 
feature  the  words  "Oriental  Cream"  is  not 
registrable,  since  the  word  "Oriental"  is  geo- 
graphical in  significance.  Ex  parte  Hopkins, 
C.  n.  1906,  125  O.  G.  670. 

486.  The  word  "Continental"  as  applied  to 
dump,  flat,  logging,  and  ballast  push  and  mine 
cars  is  primarily  geographical  and  not  regis- 
trable. Ex  parte  Continental  Car  and  Equip- 
ment Company,  C.  D.  1907,  127  O.  G.  2816. 


487.  The  registrability  of  a  trade-mark  de- 
pends upon  the  predominance  of  the  arbitrary 
features  to  give  character  to  the  mark.  It 
cannot  be  based  upon  features  incapable  of 
exclusive  appropriation  merely  because  they 
are  embellished  by  arbitrary  features  which 
are  in  themselves  insignificant.     Id. 

488.  The  geographical  word  "Continental" 
being  the  predominant  feature  of  the  mark 
by  which  the  goods  would  become  known,  a 
diamond-shaped  figure  surrounding  the  same 
instead  of  being  a  further  distinguishing  fea- 
ture of  the  mark  serves  merely  as  a  frame  to 
give  prominence  to  the  inclosed  symbol  of 
ownership.     Id. 

489.  Held,  that  a  trade-mark  comprising 
the  words  "  'Oriental  Cream,'  associated  with 
an  eagle  holding  a  scroll  in  its  beak."  is  not 
registrable  as  a  trade-mark  for  a  skin  lotion 
because  of  its  geographical  significance.  *In 
re  Hopkins,  C.  D.  1907,  128  O.  G.  890. 

490.  The  word  "Orient"  as  applied  to  ink- 
ribbons  and  carbon-paper  is  primarily  geo- 
graphical in  significance,  and  therefore  not 
registrable.  Ex  parte  Crescent  Typewriter 
Supply  Company,  C.  D.  1907.  128  O.  G.  1295. 

491.  The  fact  that  the  geographical  word 
"orient"  is  printed  in  a  certain  manner  and 
inclosed  within  a  wreath  does  not  make  the 
word  registrable  as  a  trade-mark.     Id. 

492.  The  word  "Union"  refused  registra- 
tion as  a  trade-mark  for  heel  plates  for  boots 
and  shoes  on  the  ground  that  it  is  a  geograph- 
ical term,  also  for  the  reason  that  it  is  com- 
monly used  as  a  descriptive  term  to  designate 
the  goods  made  by  members  of  a  trade-union. 
Ex  parte  Sacks,  C.  D.  1907,  128  O.  G.  2530. 

493.  Section  5  of  the  Trade-Mark  .^ct  of 
1905  is  broad  enough  to  prohibit  the  regis- 
tration of  any  word  that  has  an  exclusive 
geographical  significance  or  that  would  sug- 
gest any  particular  geographical  location.  *In 
re  Crescent  Typewriter  Supply  Co.,  C.  D. 
1908,  133  O.  G.  231. 

494.  The  word  "Orient"  is  generally  un- 
derstood to  refer  to  certain  Eastern  countries, 
and,  as  applied  to  ink-ribbons  and  carbon- 
paper.  Held,  to  be  geographical  and  not  reg- 
istrable.   ♦Id. 

495.  A  mark  for  ink-ribbons  and  carbon- 
paper  consisting  of  the  word  "Orient"  in- 
closed in  a  wreath,  the  letters  E  and  I  of  the 
word  being  printed  as  a  monogram.  Held, 
not  registrable  under  section  5  of  the  Trade- 
Mark  Act  of  1905,  as  the  word  "Orient"  is 
geographical.     *Id. 


TRADE  MARKS,  XVIII. 


557 


496.  A  mark  consisting  of  a  map  of  the 
United  States,  with  the  boundaries  of  the  sev- 
eral states  clearly  indicated  thereon  and  with 
the  characters  "H.  &  E"  appearing  upon  the 
face  thereof,  was  properly  refused  registra- 
tion on  the  ground  that  it  is  geographical. 
Ex  parte  The  American  Sugar  Refining  Com- 
pany, C.  D.  1909,  144  O.  G.  .562. 

497.  The  word  "Cadillac"  Held,  to  have  a 
geographical  significance,  and  therefore  not 
registrable  as  a  technical  trade-mark.  Ex 
parte  Wolverine  Manufacturing  Company,  C. 
D.  1910,  l.'sa  O.  G.  487. 

498.  The  word  "Hunyadi"  as  applied  to  bit- 
ter waters  having  become  public  property  and 
in  effect  only  a  geographical  expression,  the 
owner  of  the  Hunyadi  Janos  springs  at  Buda- 
pest, Hungary,  Held,  not  entitled  to  prevent 
the  advertisement  of  bitter  waters  made  in 
this  country  as  "Artificial  Hunyadi."  **Sax- 
lehner  v.  Wagner  et  al.,  C.  D.  1910,  152  O. 
G.  490. 

499.  The  word  "Tabasco"  is  a  geographical 
name  and  not  entitled  to  exclusive  appropria- 
tion as  a  technical  trade-mark.  *E.  Mclll- 
henny's  Son  v.  The  New  Iberia  Extract  of 
Tabasco  Pepper  Company,  Ltd.,  C.  D.  1910, 
153  O.  G.  547. 

500.  The  word  "Spanish"  is  geographical, 
and  therefore  the  term  "Half  Spanish"  is  not 
registrable  as  a  trade-mark.  The  Geo.  B. 
Sprague  Cigar  Co.  and  The  Wing  Cigar  v.  T. 
M.  Kildow  Cigar  Co.,  C.  D.  1910,  155  O.  G. 
1041. 

501.  "Topsy  Geneva"  as  a  trade-mark  for 
hosiery  Held,  unregistrable  because  geographi- 
cal in  significance,  the  arbitrary  word  "Topsy" 
not  being  sufficient  to  relieve  the  mark  from 
this  objection.  (In  re  Hopkins,  C.  D.  1907, 
549,  128  O.  G.  890;  In  re  Crescent  Typewriter 
Supply  Co.,  C.  D.  1908,  .318,  133  O.  G.  231.) 
Ex  parte  Ely  &  Walker  Dry  Goods  Co.,  C.  D. 
1910,  157  O.  G.  753. 

XVIII.  Description  of  Mark. 

502.  A  statement  of  an  alleged  essential  fea- 
ture of  a  trade-mark  in  the  following  form 
is  objectionable  and  must  be  canceled  before 
the  mark  can  be  registered :  "either  in  identity 
and  entirety  as  hereinbefore  described  and  as 
illustrated  in  the  accompanying  facsimile  or 
to  such  extent  and  in  such  near  resemblance 
thereto  as  might  be  calculated  to  mislead  and 
deceive  the  public."  Ex  parte  A.  Stein  &  Co., 
C.   D.   1898,  85  O.  G.   147. 


503.  The  office  regulation  that  an  applicant 
should  particularly  discriminate  between  the 
essential  and  non-essential  features  of  his 
trade-mark  is  made  in  conformity  with  the 
statute,  is  reasonable,  and  is  made  in  the  in- 
terest of  applicants  and  the  office,  and  it  must 
be  complied  with.    Id. 

504.  As  the  word  "cross"  is  so  wide  in  its 
application  as  to  be  generic  to  widely-differing 
figures.  Held,  that  it  is  inadequate  to  serve 
as  a  description  of  the  form  of  any  particular 
specimen  within  its  class.  Ex  parte  Cross,  C. 
D.  1903,  107  O.  G.  2236. 

505.  Where  a  trade-mark  is  described  by  a 
word  which  has  so  wide  a  significance  as  to 
be  generic  of  many  forms  or  figures  belong- 
ing to  the  class  of  which  the  particular  form 
or  figure  shown  in  the  facsimile  is  an  exam- 
ple, Held,  that  the  description  does  not  com- 
ply with  the  requirements  of  the  trade-mark 
statute  (section  3),  which  provides  that  there 
must  be  recorded  in  the  patent  office  a  descrip- 
tion of  the  trade-mark.    Id. 

506.  Where  the  particular  goods  of  a  trade- 
mark application  are  described  as  trimmings 
for  car-doors  and  journal-bearings.  Held,  too 
indefinite  and  not  a  compliance  with  the  law 
requiring  a  particular  description  of  the  goods. 
Ex  parte  Camel  Co.,  C.  D.  1904,  108  O.  G. 
288. 

507.  The  trade-mark  act  of  February  20, 
1905,  requires  that  the  application  for  regis- 
tration include  a  description  of  the  mark,  as 
well  as  a  drawing  of  it,  and  therefore  a  rea- 
sonably definite  description  must  be  insisted 
upon.  Ex  parte  The  Carborundum  Company, 
C.  D.  1905,   118  O.  G.  2250. 

508.  Where  it  is  impossible  by  words  of 
description  to  give  a  clear  and  accurate  idea 
of  the  appearance  of  the  mark,  the  description 
should  refer  to  the  drawing  for  a  more  com- 
plete disclosure.     Id. 

509.  A  statement  in  the  application  of  the 
prominent  characteristics  of  the  picture  con- 
stituting the  mark  can  neither  limit  nor  broad- 
en the  applicant's  right,  since  that  right  is 
based  upon  the  actual  use  of  the  mark  and 
cannot  be  changed  by  registration.     Id. 

510.  Where  the  drawing  of  the  application 
shows  several  things  constituting  trade-mark 
subject-matter,  the  description  should  men- 
tion them  all  and  should  not  merely  refer  to 
one.  Ex  parte  The  Dr.  Peter  Fahrney  &  Sons 
Co.,  C.  D.  1905,  119  O.  G.  1924. 

.    511.  Where  the  trade-mark  is  shown  in  the 
drawing    surrounded    by    the   usual    marginal 


558 


TRADE  MARKS,  XXII. 


line,  it  is  not  necessary  to  refer  to  the  mar- 
ginal line  in  the  description.  It  clearly  con- 
stitutes no  part  of  the  trade-mark.    Id. 

512.  Where  the  trade-mark  consists  of  a 
word  which  is  shown  printed  upon  a  back- 
ground made  up  of  vertical  hnes,  it  is  not 
necessary  to  describe  the  background  as  a 
part  of  the  mark.  Ex  parte  The  Eli  Lilly 
Company,  C.  D.  190.5,  119  O.  G.  2234. 

513.  There  must  be  no  inconsistency  be- 
tween the  description  and  drawing  in  trade- 
mark cases,  and  this  is  true  of  immaterial  as 
well  as  material  features.  Where  the  mark 
is  shown  as  a  hyphenated  word,  it  must  not  be 
described  as  two  words.  Ex  parte  E.  C.  At- 
kins &  Company,  C.  D.  1905,  119  O.  G.  2236. 

514.  The  fact  that  the  trade-mark  has  been 
published  is  no  good  reason  why  the  exam- 
iner of  trade-marks  may  not  require  a  de- 
scription of  the  trade-mark  as  shown  in  the 
drawing.  Ex  parte  Sleepy  Eye  Milling  Com- 
pany, C.  D.  1906,  121  O.  G.  2327. 

515.  Section  1  of  the  act  of  May  4,  1906, 
amending  section  1  of  the  Trade-Mark  Act  of 
February  20,  1905,  by  inserting  after  the  words 
"a  description  of  the  trade-mark  itself"  the 
words  "only  when  needed  to  express  colors 
not  shown  in  the  drawing,"  is  construed  to 
mean  that  the  drawing  should  be  relied  upon 
to  disclose  the  mark  and  that  a  description 
of  the  mark  should  be  permitted  "only  when 
needed  to  express  colors  not  shown  in  the 
drawing."  Ex  parte  E.  C.  Atkins  &  Company, 
C.   D.   1907,  126  O.   G.  3424. 

516.  The  purpose  of  the  amendment  con- 
tained in  section  1  of  the  act  of  May  4,  1906, 
is  to  make  the  registration  definite  by  limit- 
ing it  to  the  disclosure  in  the  drawing,  leaving 
the  question  of  what  is'  an  immaterial  varia- 
tion in  the  mark  to  the  courts.     Id. 

517.  The  fact  that  the  application  was  filed 
under  the  former  statutes  does  not  excuse  the 
applicant  from  complying  with  the  amended 
statute,  since  the  latter  makes  no  exception 
of  applications  pending  at  the  date  it  became 
effective.    Id. 

518.  A  statement  which  does  not  purport 
to  be  a  description  of  the  mark,  but  indirect- 
ly states  the  nature  of  the  principal  feature 
of  applicant's  mark,  was  properly  objected 
to  by  the  examiner  of  trade-marks.  Ex  parte 
Pittsburgh  Valve,  Foundry  and  Construction 
Co.,  C.  D.  1907,  128  O.  G.  887. 

519.  Held,  that  the  commissioner  in  refusing 
to  allow,  under  the  act  of  May  4,  1906,  in  an 
application    for    the   registration   of   a   trade- 


mark, a  description  of  the  mark  acted  within 
his  discretion,  and  in  the  absence  of  a  gross 
abuse  of  that  discretion  his  action  will  not 
be  disturbed.  *In  re  E.  C.  .\tkins  &  Company, 
C.  D.  1909,   142  O.  G.   570. 

XIX.  Division  of  Application. 

520.  It  was  the  purpose  of  the  trade-mark 
law  that  one  trade-mark  should  be  registered 
for  one  fee  and  where  the  application  covers 
more  than  one  trade-mark  division  will  be  re- 
quired. Ex  parte  Faxon,  C.  D.  1903,  103  O. 
G.  891. 

521.  Where  a  trade-mark  application  for 
cutlery  and  edge-tools  describes  many  differ- 
ent kinds  of  edged  tools  which  have  no  real 
resemblance  to  each  other.  Held,  that  the  ap- 
plication is  not  limited  to  goods  of  substan- 
tially the  same  descriptive  properties,  and  di- 
vision of  the  application  is  necessary.  Ex 
parte  Marsh  Brothers  Company,  C.  D.  1904, 
108  O.  G.  288. 

522.  Where  a  trade-mark  application  covers 
"railway  supplies,"  the  goods  being  described 
as  "car-doors,  their  trimmings  and  journal- 
bearings,"  Held,  that  the  application  is  not 
limited  to  goods  of  substantially  the  same  de- 
scriptive properties  and  that  the  examiner 
properly  required  amendment.  Ex  parte 
Camel  Company,  C.  D.  1904,  108  O.  G.  288. 

523.  A  requirement  for  the  division  of  a 
trade-mark  application  is  to  be  regarded  as  a 
refusal  of  registration  and  as  appealable.  It 
will  therefore  not  be  reviewed  upon  interlocu- 
tory petition.  Ex  parte  Harris,  C.  D.  1905, 
117  O.  G.  1164. 

524.  A  single  trade-mark  application  should 
not  include  merchandise  which  is  not  of  sub- 
stantially the  same  descriptive  properties.     Id. 

525.  A  requirement  for  the  division  of  a 
trade-mark  application  is  to  be  regarded  as 
a  refusal  of  registration  and  is  appealable. 
The  matter  will  not  be  reviewed  on  interlocu- 
tory petition.  Ex  parte  Hamilton  and  Ham- 
ilton, Jr.,  C.  D.  1905,  118  O.  G.  269. 

52G.  The  requirement  for  division  of  an  ap- 
plication, so  as  to  include  a  single  trade-mark 
right,  amounts  to  a  rejection  of  the  applica- 
tion and  is  not  reviewable  on  interlocutory 
petition.  Ex  parte  The  Dr.  Peter  Fahrney 
&  Sons  Co.,  C.  D.  1905,  119  O.  G.  1924. 

527.  Refusal  of  registration  on  the  ground 
that  the  application  covers  more  than  one 
trade-mark  right  is  appealable  and  will  not 
be    reviewed    on    interlocutory    petition.      Ex 


TRADE  MARKS,  XX,  XXI. 


559 


parte  The  Kingan  Packing  Association,  C.  D. 
1905,  119  O.  G.  2234. 

528.  The  question  of  division  of  an  appli- 
cation for  registration  of  a  trade-marl<  will 
not  be  reviewed  upon  petition.  It  must  be 
presented  by  appeal.  Ex  parte  E.  C.  Atkins 
&  Company,  C.  D.  1906,  124  O.  G.  1844. 

XX.  Drawings  of  Facsimiles. 

529.  The  drawing  of  a  trade-mark  applica- 
tion should  show  the  mark  as  actually  used, 
and  should  therefore  correspond  with  the 
specimens  filed.  Ex  parte  Listman  Mill  Com- 
pany. C.  D.  1905,  119  O.  G.  340. 

530.  Any  rule  of  the  patent  office  which 
would  require  the  drawing  filed  to  be  a  fac- 
simile of  the  sample  specimen  furnished  would 
be  invalid.  In  re  Standard  Underground 
Cable  Co.,  C.  D.  1906,  123  O.  G.  656. 

531.  Where  the  label  used  by  the  applicant 
has  the  word  "Eclipse"  printed  upon  a  dark 
background  representing  a  partial  solar 
eclipse,  together  with  descriptive  words  and 
the  name  and  address  of  the  applicant,  and 
the  application  drawing  shows  merely  the 
word  "Eclipse,"  Held,  that  registration  of  the 
mark  shown  upon  the  drawing  should  not  be 
refused  on  account  of  the  omission  from  the 
drawing  of  the  additional  matter  shown  in 
connection  with  that  mark  upon  the  label. 
*Id. 

532.  The  trade-mark  as  shown  by  the  draw- 
ing must  conform  strictly  to  that  shown  by 
the  specimens  in  so  far  as  the  drawing  pur- 
ports to  show  that  mark.  Ex  parte  Hoyt 
Brothers  &  Company,  C.  D.  1906,  124  O.  G. 
1523. 

533.  Where  in  an  application  for  registra- 
tion of  a  trade-mark  colors  are  indicated  in 
the  drawing  by  conventional  lining  in  accord- 
ance with  the  chart  for  draftsmen  on  page 
87  of  the  Rules  of  Practice  in  the  United 
States  patent  office.  Held,  that  if  color  forms 
a  material  feature  of  the  mark  the  colors 
should  be  described  in  order  to  comply  fully 
with  section  1  of  the  act  of  May  4,  1906,  while 
if  color  is  not  an  essential  feature  a  new 
drawing  omitting  the  conventional  lining  used 
to  express  color  should  be  filed.  Ex  parte 
M.  Zimmerman  Company,  C.  D.  1907,  127  O. 
G.  1991. 

534.  The  trade-mark  sought  to  be  register- 
ed, which  consists  of  the  word  "Acme,"  was 
shown  in  the  drawing  in  two  different  forms. 
Held,  that  the  requirement  that  one  of  these 


forms    be    canceled    was    proper.      Ex    parte 
Atsatt  Bros.,  C.  D.  1911,  163  O.  G.  231. 

535.  Where  the  application  states  that  the 
color  of  the  mark  is  not  claimed,  Held,  that 
the  examiner  properly  objected  to  the  lining 
of  the  drawing  so  as  to  indicate  color.  Ex 
parte  Austin,  Nichols  &  Co.,  C.  D.  1911,  167 
O.  G.  981. 

XXI.  Essential  Features. 

536.  The  essential  features  of  a  trade-mark 
are  those  which  serve  in  whole  or  in  part  to 
distinguish  the  goods  of  the  party  by  whom 
such  mark  is  adopted.  Ex  parte  Weil,  C.  D. 
1898,  83  O.  G.  1802. 

537.  The  statement  of  an  applicant  as  to 
what  are  the  essential  features  of  a  trade- 
mark does  not  make  them  so.  The  essential 
features  are  really  what  lend  character  to 
the  entire  mark,  and  should  be  so  considered. 
Ex  parte  Parker,  Holmes  &  Co.,  C.  D.  1898, 
8.5  O.  G.  287. 

538.  Where  the  applicant  sought  to  regis- 
ter a  trade-mark  the  essential  features  of 
which  are  stated  to  be  "the  representation  of 
a  shoe  and  the  words  "The  Greatest  Value  for 
the  Money,'  appearing  on  scrolls  placed  adja- 
cent to  the  said  representation  of  a  shoe," 
Held,  that  the  words  form  no  part  of  the  es- 
sential feature  of  the  mark,  and  the  mark 
should  therefore  not  be  registered.     Id. 

539.  Held,  further,  that  the  band  of  panel 
diagonally  crossing  the  flag  gives  to  it  a  dis- 
tinctive feature,  and  the  examiner  was  justi- 
fied in  holding  it  to  be  an  essential  feature  of 
the  applicants'  mark.  Ex  parte  Standard 
Fashion  Co.,  C.  D.  1899,  89  O.  G.  189. 

540.  Held,  further,  that  none  of  the  words 
can  properly  be  said  to  constitute  an  essen- 
tial feature  of  the  mark,  and  they  are  not  so 
claimed.    Id. 

541.  Held,  further,  that  the  concentric  cir- 
cles are  merely  accessories,  but  not  essential 
features,  and  to  insist  upon  their  being  in- 
cluded in  the  statement  of  essential  features 
might  tend  to  the  injury  of  applicant  and  the 
benefit  of  an  infringer.     Id. 

542.  The  essential  feature  of  a  trade-mark 
is  not  that  which  the  applicant  elects  to  desig- 
nate as  such,  but  that  which  would  strike  the 
public  mind  as  its  most  salient  feature.    Id. 

543.  When  it  is  stated  that  in  a  trade-mark 
shown  as  the  representation  of  a  maple-leaf 
with  the  words  "Maple  Leaf  Lard"  printed 
thereon  the  representation  of  a  maple-leaf  is  a 


560 


TRADE  MARKS,  XXV. 


non-essential  feature,  but  that  the  mark  is 
used  as  shown,  it  cannot  be  said  that  the  leaf 
is  not  an  essential  feature.  Ex  parte  Kingan 
and  Company,  Limited,  C.  D.  1901,  97  O.  G. 
2085. 

544.  The  essential  feature  of  a  trade-mark 
is  not  that  which  the  registrant  elects  to  des- 
ignate as  such,  but  that  which  would  strike 
the  public  mind  as  its  most  essential  feature. 
(Ex  parte  Metropolitan  Watch  Co.,  44  MS. 
Dec,  272.)     Id. 

545.  The  essential  features  of  a  trade-mark 
in  use  are  those  predominant  and  controlling 
features  which  would  be  impressed  upon  the 
minds  of  purchasers  and  by  which  they  would 
remember  and  identify  the  mark,  and  a  state- 
ment of  essential  features  in  the  application 
merely  calls  attention  to  those  features  with- 
out in  any  case  changing  that  which  in  fact 
constitutes  the  mark.  Ex  parte  Diamond  Ink 
Co.,  C.  D.  1902,  98  O.  G.  1483. 

546.  Since  the  rule  requires  a  statement  of 
the  essential  features  of  the  mark,  the  office 
should  exercise  care  in  requiring  a  statement 
of  all  of  those  features  of  the  mark  shown 
which  are  in  fact  essential.     Id. 

547.  If  a  party's  registration  is  intended  to 
be  limited  to  certain  features  which  have  been 
separately  used  as  a  trade-mark,  he  should 
show  only  those  features.     Id. 

548.  The  essential  features  of  a  trade-mark 
are  to  be  determined  from  an  inspection  there- 
of. Those  features  which  upon  inspection 
would  be  impressed  upon  the  minds  of  pur- 
chasers and  by  which  they  would  remember 
and  identify  the  marks  are  the  essential  fea- 
tures. (Citing  Ex  parte  Diamond  Ink  Co., 
ante,  45,  98  O.  G.  1483.)  Ex  parte  Hall,  C. 
D.  1902,  98  O.  G.  2174. 

549.  The  mere  fact  that  an  applicant  may 
choose  to  state  that  a  certain  feature  is  the 
essential  feature  does  not  make  it  in  fact  the 
only  essential  feature.    Id. 

550.  A  statement  which  omits  reference  to 
certain  features  of  the  mark  which  are  in  fact 
essential  is  defective,  since  it  seeks  to  cover 
something  different  from  the  mark  which  is 
in  actual  use,  as  shown  by  the  facsimile.    Id. 

551.  A  party  may  not  change  that  which  in 
fact  constitutes  his  mark  by  a  mere  statement 
that  one  feature  is  essential  and  another  is 
not  when  in  fact  both  are  essential  and  to- 
gether constitute  what  would  from  inspection 
be  impressed  upon  the  mind  as  the  mark.  Ex 
parte  Circle  Manufacturing  Co.,  C.  D.  1902, 
98  O.  G.  2365. 


552.  If  a  party  has  used  one  feature  sep- 
arately as  a  trade-mark  and  wishes  protection 
upon  it  as  such,  he  should  not  show  it  in 
connection  with  other  arbitrary  features  which 
would  inevitably  be  associated  with  it  in  the 
mind  of  the  person  inspecting  it.    Id. 

553.  A  party  cannot  register  as  his  trade- 
mark one  feature  of  the  mark  used,  upon  the 
theory  that  it  is  the  predominant  feature,  but 
must  register  the  mark  itself,  leaving  it  to  the 
courts  to  determine  what  is  the  predominant 
feature  and  what  would  infringe  his  rights. 
Ex  parte  Standard  Underground  Cable  Co., 
C.  D.   1905,  119  O.  G.   1925. 

554.  Where  it  is  stated  in  the  certificate  of 
registration  that  the  essential  features  of  the 
trade-mark  are  the  words  "Veritable  Bene- 
dictine," "D.  O.  M.,"  and  a  "cross,"  Held,  that 
the  registrant  having  limited  himself  in  the 
registration  to  a  mark  containing  these  fea- 
tures is  not  entitled  broadly  to  the  use  of  a 
cross  so  as  to  exclude  others  from  the  use 
of  the  same  regardless  of  the  similarity  of 
the  marks.  (Citing  Richter  v.  Reynolds,  et  al., 
C.  D.  1894,  260,  67  O.  G.  404,  59  Fed.  Rep., 
577.)  Gourd  v.  Charles  Jacquin  et  Cie,  Inc., 
C.  D.  1907,  130  O.  G.  665. 

555.  A  mark  is  not  registrable  unless  its 
controlling  features  are  registrable.  (In  re 
Hopkins,  C.  D.  1907,  549,  128  O.  G.  980,  29 
App.  D.  C.  118;  In  re  Crescent  Typewriter 
Supply  Company,  ante,  318,  133  O.  G.  231.) 
Ex  parte  Union  Carbide  Company,  C.  D.  1908, 
135  O.  G.  450. 

XXII.  Examination  of. 

556.  While  it  is  proper  for  an  applicant  to 
cite  previous  registration  for  the  purpose  of 
showing  that  his  mark  should  be  registered, 
it  is  not  necessary  for  the  examiner  of  trade- 
marks to  explain  why  these  marks  were  regis- 
tered. Ex  parte  Vance  Shoe  Company,  C.  D. 
1907,  131  O.  G.  942. 

557.  Where  the  examiner  required  that  the 
particular  description  of  his  merchandise 
stated  by  the  applicant  as  falling  in  Class  23 
be  limited  to  "Pliers  without  a  cutting  edge" 
or  that  the  class  stated  be  changed  to  Class 
20  and  the  particular  description  of  goods 
made  to  read  "Nippers  and  pliers  provided 
with  a  cutting  edge."  Held,  that  this  action  is 
in  effect  a  refusal  to  register  the  mark,  and 
the  applicant's  remedy  is  by  appeal  and  not 
by  petition.  Ex  parte  Utica  Drop  Forge  and 
Tool  Co.,  C.  D.  1907,  131  O.  G.  1164. 


TRADE  MARKS,  XXIII,  XXIV. 


561 


558.  The  action  of  the  examiner  of  trade- 
marks objecting  to  the  specimens  filed,  upon 
the  ground  that  they  do  not  show  the  use  of 
the  mark  claimed  as  a  trade-mark,  constitutes 
a  refusal  to  register  the  mark,  which  is  re- 
viewable upon  appeal  and  not  upon  petition. 
Ex  parte  Barclay  and  Barclay,  C.  D.  1908, 
134  O.   G.   ir)62. 

559.  An  action  by  the  examiner  of  trade- 
marks which  constitutes  a  rejection  of  an  ap- 
plication is  appealable  under  section  8  of  the 
act  of  1905  and  is  not  therefore  a  matter 
which  is  entitled  to  consideration  on  petition. 
Ex  parte  Barclay  &  Barclay,  C.  D.  1908,  135 
O.  G.  217. 

XXIII.  Foreign   and   Interstate   Commerce. 

560.  The  time  when  a  mark  was  used  in 
commerce  by  an  applicant  is  of  no  moment 
so  long  as  that  use  occurred  before  the  appli- 
cation for  registration  was  filed.  An  appli- 
cant having  a  valid  trade-mark  at  common 
law  cannot  be  deprived  of  it  by  the  fact  that 
one  later  to  adopt  and  use  the  mark  in  state 
or  interstate  commerce  was  earlier  to  use  it 
in  foreign  commerce.  Sleepy  Eye  Milling  Co. 
V.  C.  F.  Blanke  Tea  &  Coffee  Co.,  C.  D.  1898, 
85  O.  G.  1905. 

561.  Registered  trade-marks  are  by  the 
wording  of  the  law  strictly  limited  to  lawful 
commerce  with  foreign  nations  and  with  In- 
dian tribes,  and  such  mark  can  only  be  in- 
fringed when  used  in  that  commerce  without 
right  by  another  than  its  owner.  **Warner  v. 
Searl  &  Hereth  Co.,  C.  D.  1903,  107  O.  G. 
1974. 

562.  Where  diverse  citizenship  does  not  ex- 
ist and  the  statutory  amount  is  not  in  contro- 
versy, the  jurisdiction  of  the  federal  court  in 
the  matter  of  registered  trade-marks  can  only 
be  maintained  when  there  is  interference  with 
commerce  with  foreign  nations  or  Indian 
tribes.    **Id. 

5G3.  Where  it  is  sought  to  enjoin  the 
wrongful  use  of  a  registered  trade-mark,  it 
should  be  made  to  appear  that  the  trade-mark 
was  then  being  used  in  commerce  with  for- 
eign nations  or  Indian  tribes  and  that  such 
use  was  being  interfered  with  without  right 
by  defendant.    **Id. 

564.  Continuous   use  of  mark   in   interstate 
commerce   not   necessary   to   entitle   applicant 
to  register  the  mark.    Home  v.  Somers  &  Co., 
C.  D.   1907,   129  O.  G.  1609. 
36 


XXIV.  Foreign  Words. 

565.  The  words  "Gold  Label,"  which  are 
unregistrable  in  English  characters,  do  not 
become  registrable  when  produced  in  Hebrew 
characters,  although  there  may  be  no  words  in 
the  Hebrew  language  corresponding  to  these 
English  words.  Ex  parte  Stuhmer,  C.  D.  1899, 
86  O.  G.  181. 

566.  The  fact  that  the  English  words  "Gold 
Label"  are  produced  in  Hebrew  characters, 
which  may  be  illegible  to  the  majority  of 
English-speaking  people,  is  no  reason  why 
such  words  may  become  subject  to  adoption 
as  a  lawful  trade-mark.     Id. 

567.  The  mere  fact  that  the  words  used  as 
a  trade-mark  are  in  a  foreign  language  does 
not  of  itself  make  them  arbitrary  in  character. 
E.X  parte  Grocers  Specialty  Mfg.  Co.,  C.  D. 
1903,  102  O.  G.  465. 

568.  The  words  "The  Good"  cannot  be 
properly  registered  as  a  trade-mark,  because 
they  are  descriptive  of  quality  of  the  article  to 
which  they  are  applied,  and  it  follows  that  the 
words  "Le  Bon"  are  not  registrable.     Id. 

569.  Held,  that  as  the  words  "The  Good" 
may  be  adopted  in  general  by  all  persons  and 
cannot  become  the  exclusive  property  of  any 
one  person,  as  these  words  necessarily  mean 
that  the  merchandise  has  a  certain  quality  or 
characteristic,  it  follows  that  the  words  "Le 
Bon"  are  not  registrable  as  a  trade-mark  for 
baking-powder.     Id. 

570.  Held,  that  the  word  "Week"  is  regis- 
trable as  a  trade-mark  for  sterlizing  appara- 
tus, since  it  is  a  German  word  having  a  well- 
understood  meaning  which  is  arbitrary  when 
applied  to  a  sterilizing  apparatus.  Ex  parte 
Van  Eyck.  C.  D.  1903,  101  O.  G.  542. 

571.  It  is  well  settled  that  descriptive  words 
are  not  rendered  less  so  by  being  written  in  a 
foreign  language.  (Grocers  Specialty  Mfg. 
Co.,  C.  D.  1903,  10,  102  O.  G.  465 ;  Roncornoni 
V.  Gross  et  al.,  86  N.  Y.  Supp.  1112,  92  App. 
Div.  221.)     Ex  parte  Union  Fibre  Co.,  C.  D. 

1909,  141  O.  G.  285. 

572.  The  words  "Lait  De  Violettes"  as  ap- 
plied to  perfumery,  toilet  powders,  toilet 
waters,  face-tints,  and  hair-lotions  are  de- 
scriptive of  a  characteristic  or  quality  of  the 
goods,  and  registration  thereof  was  properly 
refused.     Ex    parte   F.    Bagot   &   Co.,    C.    D. 

1910,  1.50  O.  G.  1042. 

573.  It  is  well  settled  that  the  foreign  equiv- 
alent of  a  descriptive  word  is  not  registrable. 
(Ex  parte  Grocers   Specialty  Mfg.  Co.,  Lim- 


5<2 


TRADE  MARKS,  XXVI. 


ited,  102  O.  G.  465;  Dadirrian  v.  Yacubian  et 
al.,  72  Fed.  Rep.  lOlO;  Roncoroni  v.  Gross, 
86  N.  Y.  Supp.  1112,  92  App.  Div.  22.)  Ex 
parte  Julius  Wile  Sons  &  Co.,  C.  D.  1911,  168 
O.  G.  787. 

574.  The  Spanish  word  "Elegancia"  Held, 
not  registrable  as  a  trade-mark.     Id. 

575.  Esperanto  Held,  to  be  a  language  with- 
in the  meaning  of  the  ruling  that  the  equiva- 
lent in  a  foreign  language  of  a  descriptive 
word  is  unregistrable.  Ex  parte  Sanitary 
Knitting  Co.,  C.  D.  1911,  173  O.  G.  286. 

576.  The  word  "Saniga,"  which  is  the  Es- 
peranto word  for  sanitary,  Held,  unregis- 
trable as  a  trade-mark  for  underwear  and 
hosiery,  since  the  word  "sanitary"  is  descrip- 
tive of  such  goods.    Id. 

XXV.  Foreign  Applicant. 

577.  There  is  nothing  in  section  13  of  the 
trade-mark  act  which  takes  this  case  outside 
the  authorities  because  registration  is  desired 
for  the  purpose  of  registering  the  alleged 
trade-mark  in  a  foreign  country,  where  as  a 
condition  precedent  to  such  foreign  registra- 
tion prior  registration  in  the  home  country  of 
the  applicant  must  first  be  had.  Ex  parte 
Buffalo  Pitts  Co.,  C.  D.  1899,  89  O.  G.  2069. 

578.  No  additional  rights  are  conferred 
upon  citizens  and  residents  of  this  country 
under  section  13  of  the  trade-mark  act  which 
are  not  conferred  upon  them  under  the  other 
provisions  of  the  act.     Id. 

579.  A  foreigner  is  not  entitled  to  any  other 
or  further  rights  than  those  given  to  citizens 
of  the  United  States.  The  phrase  "as  is  above 
allowed  to  foreigners"  renders  section  13  of 
the  trade-mark  act  meaningless.    Id. 

580.  Congress  did  not  intend  to  permit  the 
registration  of  unlawful  trade-marks  simply 
for  the  purpose  of  permitting  the  owner  of 
such  unlawful  trade-marks  to  register  the 
same  in  a  foreign  country.     Id. 

581.  The  trade-mark  act  does  not  make  the 
patent  office  merely  a  registration  office  and 
compel  the  commissioner  to  register  a  trade- 
mark without  permitting  him  to  pass  upon  the 
lawfulness  of  the  trade-mark  presented  for 
registry.     Id. 

582.  An  applicant  who  is  a  resident  of  a 
foreign  country  which  by  treaty  affords  trade- 
mark protection  to  citizens  of  this  country 
is  not  entitled  to  register  his  trade-mark  here 
unless  he  uses  it  in  trade  between  this  coun- 


try and  a  foreign  nation  or  Indian  tribe.    Ex 
parte  Bishop,  C.  D.  1903,  107  O.  G.  1973. 

583.  The  trade-mark  law  gives  to  foreigners 
no  greater  privileges  in  the  matter  of  trade- 
mark registration  than  it  gives  to  citizens  of 
this  country,  and  in  all  cases  there  must  be 
trade  between  this  country  and  a  foreign 
country  or  Indian  tribe.     Id. 

584.  Congress  can  regulate  trade  only  be- 
tween this  country  and  foreign  nations  or 
Indian  tribes  or  between  the  several  states, 
and  therefore  the  trade-mark  law  is  not  to 
be  construed  as  applying  to  other  cases.    Id. 

585.  Section  3  of  the  trade-mark  act  does 
not  give  to  foreigners  greater  privileges  than 
are  given  by  the  particular  treaty  under  which 
registration  is  sought,  and  in  the  case  of  the 
International  Convention  for  the  Protection 
of  Industrial  Property  no  greater  privileges 
are  given  to  foreigners  than  to  citizens  of 
this  country.     Id. 

586.  The  treaty  of  June  11,  18S7,  between 
this  country  and  France  in  regard  to  trade- 
marks did  not  put  citizens  of  France  upon  a 
more  favorable  footing  than  our  own  citizens 
or  exempt  them  from  the  ordinary  defenses 
that  might  be  made  by  the  party  prosecuting. 
They  were  merely  entitled  to  sue  as  if  they 
were  citizens  of  this  country.  **La  Republi- 
que  Francaise  v.  Saratoga  Vichy  Spring  Co., 
C.  D.  1903,  105  O.  G.  977. 

587.  Where  application  is  made  by  a  for- 
eigner for  the  registration  of  a  trade-mark, 
on  the  ground  that  it  has  been  registered  in 
the  country  where  he  resides.  Held,  that  a  cer- 
tified copy  of  the  foreign  registration  should 
he  furnished.  Ex  parte  Beckett,  C.  D.  1905, 
119  O.  G.  340. 

588.  The  mere  allegation  of  the  applicant 
that  he  has  secured  foreign  registration  is 
insufficient,  since  the  question  of  identity  of 
marks  is  one  requiring  the  exercise  of  judg- 
ment, and  the  statute  requires  that  this  office 
shall  determine  the  right  to  registration.  It 
should  not  accept  without  question  the  ap- 
plicant's judgment,  but  should  call  for  the 
facts  upon  which  it  is  based.    Id. 

589.  Where  the  applicant  for  registration 
of  a  trade-mark  resides  in  a  foreign  country 
and  the  symbol  which  forms  the  mark  has 
been  registered  by  him  in  that  country  only 
as  a  trade-mark  for  different  goods  from 
those  for  which  the  registration  is  sought  in 
this  country.  Held,  that  the  registration  sought 
cannot  be  had  in  this  country.  Ex  parte  Daw- 


TRADE  MARKS,  XXVI. 


563 


son,   Halliwell   &   Company,   C.   D.   1906,   124 
O.  G.  628. 

590.  The  only  mark  which  a  foreign  appli- 
cant is  entitled  to  register  in  this  country  is 
the  mark  which  he  has  registered  in  the  coun- 
try in  which  he  is  located.  Such  mark  is 
presumably  that  set  forth  and  shown  in  the 
foreign  registration,  and  the  office  must  so 
assume  until  furnished  with  proofs  to  the 
contrary.  Ex  parte  Pietro.  C.  D.  1907,  127 
O.  G.  2394. 

591.  Where  a  foreigner  applies  for  regis- 
tration in  this  country,  his  registration  in  the 
country  in  which  he  is  located  will  be  pre- 
sumed to  set  forth  and  show  his  trade-mark, 
and  in  the  absence  of  proof  to  the  contrary  the 
drawing  of  his  application  for  registration 
in  this  country  will  be  required  to  conform 
to  such  foreign  registration.     Id. 

592.  The  requirement  that  a  foreigner  who 
applies  for  registration  shall  show  either  that 
the  mark  has  been  registered  in  the  country 
where  he  resides  or  is  located  or  that  he  has 
a  manufacturing  establishment  within  the  ter- 
ritory of  the  United  States  is  applicable  to 
those  cases  where  registration  is  sought  under 
the  "ten-year"  proviso  as  well  as  where  the 
mark  is  a  technical  trade-mark.  Ex  parte 
Actien-Gesellschaft  fur  Anilin-Fabrikation,  C. 
D.  1907,  129  O.  G.  2857. 

593.  Inasmuch  as  the  act  of  1881  did  not 
require  that  applicants  residing  in  a  foreign 
country  obtain  registration  in  that  country 
as  a  prerequisite  to  registration  in  this  coun- 
try and  since  the  laws  of  Great  Britain,  where 
the  applicant  resides,  provide  for  re-registra- 
tion of  marks.  Held,  that  in  the  absence  of 
proof  the  expiration  of  the  trade-mark  reg- 
istration under  section  5  of  the  act  of  1881 
will  not  be  presumed  merely  because  more 
than  fourteen  years,  the  period  of  registra- 
tion in  Great  Britain,  have  elapsed  since  reg- 
istration in  this  country.  Ex  parte  Collins,  C. 
D.  1907,  130  O.  G.  1485. 

594.  When  a  foreign  applicant  presents  for 
registration  a  mark  which  is  a  replica  of  the 
arbitrary  features  comprised  in  the  mark  reg- 
istered in  the  country  in  which  applicant  is 
located,  registration  should  not  be  refused 
merely  because  such  mark  differs  from  that 
registered  in  the  foreign  country  by  the  omis- 
sion of  matter  which  is  itself  non-registrable 
in  character.  (Ex  parte  Pietro,  C.  D.  1907, 
107,  127  O.  G.  2394,  modified.)  Ex  parte 
Soc."  Prod.ti  Chim.co  Farmac."  A.  Bertelli  & 
Co.,  C.  D.  1909,  144  O.  G.  817. 


595.  Where  a  foreigner  applies  for  registra- 
tion of  a  trade-mark,  it  is  not  sufficient  that  he 
merely  file  a  certified  copy  of  the  registra- 
tion of  such  trade-mark  in  the  country  in 
which  he  resides  or  is  located,  but  the  declara- 
tion must  set  forth  that  the  mark  was  regis- 
tered in  such  country  upon  the  date  shown  in 
the  certificate.  Ex  parte  Konigliches  Hof- 
brauamt  Munchen,  C.  D.  1909,  146  O.  G.  720. 

596.  For  many  years  the  Order  of  Carthu- 
sian Monks,  established  at  La  Grande  Chart- 
reuse, in  France,  made  and  sold  a  liqueur 
under  the  name  "Chartreuse,"  claimed  to  have 
been  made  by  a  secret  process.  Such  liqueur 
has  long  been  sold  and  has  become  well  known 
under  such  name  in  the  United  States,  where 
the  name  is  registered  as  a  trade-mark.  The 
order  having  been  expelled  from  France  by 
the  government,  a  liquidator  was  appointed 
who  took  possession  of  their  property,  includ- 
ing their  liqueur  factory.  Such  liquidator,  al- 
though having  no  knowledge  of  the  secret 
formula,  commenced  the  manufacture  of  a 
similar  liqueur,  which  he  sold  under  the  name 
"Chartreuse,"  using  the  same  bottles  and 
labels  as  had  been  used  by  the  monks.  In  the 
meantime  the  monks  established  a  factory  in 
Spain  and  continued  to  manufacture  the  liq- 
ueur in  accordince  with  the  original  formula, 
using,  however,  a  different  label  and  style  of 
package.  Held,  that  the  action  of  the  French 
government  and  court  did  not  affect  the  trade- 
mark rights  of  the  Carthusian  monks  in  the 
United  States ;  that  such  rights  were  not  de- 
pendent on  the  place  or  country  in  which  their 
business  was  conducted ;  that  the  receiver  did 
not  succeed  to  such  rights,  but  became  their 
competitor,  and  that  they  were  entitled  to  an 
injunction  restraining  the  sale  of  his  products 
in  this  country  in  competition  with  their  own 
under  their  trade-mark  and  dress  and  as  the 
original  and  genuine  Chartreuse.  **Pere  Al- 
fredo Luis  Baglin,  Superior  General  of  the 
Order  of  Carthusian  Monks,  C.  D.  1911,  169 
O.  G.  449. 

XXVI.  Fr.'VUD. 

597.  There  is  no  authority  to  justify  the 
consideration  in  a  trade-mark  interference 
that  by  reason  of  false  and  fraudulent  repre- 
sentation an  applicant  is  not  entitled  to  reg- 
ister a  trade-mark,  because  while  the  court 
may  refuse  to  grant  relief  to  the  owner  of  a 
mark  on  account  of  false  representation  it 
would  not  on  that  account  hold  that   an   al- 


564 


TRADE  MARKS,  XXVII,  XXVIII,   (a). 


leged  trade-mark  was  unlawful.     Sleepy  Eye 
Milling  Co.  V.  C.  F.  Blanke  Tea  &  Coffee  Co., 

C.  D.  1898,  85  O.  G.  1905. 

598.  A  symbol  or  label  claimed  as  a  trade- 
mark so  constituted  or  worded  as  to  make  or 
contain  a  distinct  assertion  which  is  false  will 
not  be  recognized,  nor  can  any  right  to  its 
exclusive  use  be  maintained.  **Holzapfers 
Compositions  Co.,  Ltd.,  v.  Rahtjen's  Amer- 
ican Composition  Co..  C.  D.  1901,  97  O.  C 
958. 

599.  Where  the  defendant  sold  a  medical 
preparation  named,  marked,  and  packed  in 
imitation  of  the  complainant's  medicine  for 
the  purpose  and  with  the  design  and  intent  of 
deceiving  purchasers  and  inducing  them  to 
buy  defendant's  preparation  instead  of  the 
complainant's,  Held,  that  an  injunction  would 
issue  if  it  were  not  for  the  fact  that  the  com- 
plainant has  so  fraudulently  represented  to 
the  public  the  nature  of  its  medical  prepara- 
tion that  it  is  not  entitled  to  equitable  relief. 
♦♦Clinton  E.  Worden  &  Co.,  v.  California  Fig 
Syrup  Co.,  C.  D.  190:i,  102  O.  G.  623. 

600.  In  the  absence  of  legislation  limiting 
and  controlling  traffic  in  so-called  "quack" 
medicines  prepared  by  others  than  .registered 
physicians,  Held,  that  the  courts  cannot  de- 
clare dealing  in  such  preparations  to  be  illegal 
nor  the  articles  themselves  to  be  not  entitled 
as  property  to  the  protection  of  the  law.    **Id. 

601.  Where  the  present  manufacturers  of 
the  liqueur  known  as  "Benedictine"  make  it 
at  the  same  place  and  by  the  same  secret 
formula.  Held,  that  no  deception  is  practiced 
on  the  public  by  failing  to  indicate  that  the 
present  manufacturers  are  not  those  who 
made  it  originally,  d  A.  Bauer  &  Co.  v.  La 
Societe  Anonyme  De  La  Distillerie  De  La 
Liquer  Benedictine  De  Labloise  de  Fecamp,  C. 

D.  190.^,  106  O.  G.  265. 

602.  Where  the  appellees'  goods  had  ac- 
quired a  world-wide  celebrity  as  ".■\ngostura 
Bitters"  long  before  the  appellant  commenced 
to  manufacture  its  goods,  Held,  that  the  ap- 
pellant w-ill  not  be  permitted  "dv  fraudulent 
imitation  to  deceive  the  public  and  wrong  the 
appellees  by  palming  off  its  goods  as  their 
goods,  d  A.  Bauer  &  Co.  v.  Liegert  et  al.,  C. 
D.   1903,  106  O.  G.  267. 

603.  Held,  that  an  injunction  was  properly 
granted  restraining  the  appellant  from  usurp- 
ing the  name  adopted  by  the  appellees  and 
from  dressing  its  goods  like  those  of  the  ap- 
pellees, and  thereby  defrauding  the  public. 
did. 


604.  The  word  "Chartreuse"  as  applied  to 
the  cordial  made  by  the  Carthusian  monks 
designates  at  once  the  inventor,  the  maker, 
and  the  place  of  manufacture  and  constitutes 
in  each  of  these  particulars  a  distinctive  mark 
which  could  not  truthfully  be  applied  by 
others  to  a  similar  or  analogous  product, 
d  A.  Bauer  &  Co.  v.  Order  of  Carthusian 
Monks  Convent  La  Grande  Chartreuse,  C.  D. 
1903,   106   O.   G.  545. 

605.  Where  the  Carthusian  monks  who  in- 
vented and  first  made  "Chartreuse"  were  in- 
corporated and  to-day  carry  on  the  business, 
Held,  that  there  is  no  deception  or  fraud 
practiced  upon  the  public  by  the  failure  to 
indicate  that  they  are  the  successors  of  the 
original  makers  and  that  the  person  who 
manages  the  business  has  changed,    d  Id. 

606.  Where  any  symbol  or  label  claimed  as 
a  trade-mark  is  so  worded  as  to  contain  a 
distinct  assertion  which  is  false,  no  property 
right  can  be  claimed,  nor  can  the  right  to  the 
exclusive  use  of  it  be  maintained  by  a  court 
of  equity.  Courts  of  equity  will  not  interfere 
by  injunction  where  there  is  any  lack  of 
proof  in  the  appellant's  case  or  any  misrepre- 
sentation in  his  trade-mark  or  label,  nor  will 
the  courts  uphold  in  any  one  a  privilege  of  de- 
ceiving the  public.  An  exclusive  privilege  to 
deceive  the  public  is  not  one  that  a  court  of 
equity  can  sanction  nor  one  which  the  com- 
missioner of  patents  should  aid.  *The  Schus- 
ter Co.  V.  Muller,  C.  D.  1907.  126  O.  G.  2192. 

607.  Evidence  submitted  by  a  party  to  a 
trade-mark  interference  tending  to  show  that 
the  mark  as  used  by  the  opposing  party  was 
deceptive  considered  and.  Held,  insufficient  to 
establish  the  fact.    *Id. 

608.  Slight  and  immaterial  changes  in  an 
article  to  which  a  trade-mark  is  applied  do 
not  render  the  use  of  said  mark  fraudulent. 
Luthy  &  Co.  V.  Peoria  Drill  &  Seeder  Co.,  C. 
D.    1907,  130  O.  G.  978. 

609.  The  use  of  the  words  "Pure  Old  Rye 
Whiskey"  on  labels  containing  the  trade-mark 
"Brookwood"  adopted  and  used  for  whiskey 
composed  of  rye  and  other  whiskies.  Held, 
not  such  deception  as  would  warrant  the  re- 
fusal of  registration,  there  apparently  being 
no  actual  intent  to  deceive.  L.  W.  Levy  & 
Co.  v.  Uri,  C.  D.  1907,  131  O.  G.  1687. 

610.  A  mark  containing  the  legend  "Guar- 
anteed under  the  Food  and  Drugs  Act  of 
June  30.  1906,"  Held,  deceptive,  since  the 
registration  of  such  a  mark  would  lead  the 
public    to    believe    that    the    government    had 


TRADE  MARKS,  XXVII,  XXVIII,  (a). 


565 


guaranteed  the  purity  of  the  article  upon 
which  the  mark  was  used.  Ex  parte  Alart 
and  McGuire,  C.  D.  1907,  131  O.  G.  2145. 

611.  It  is  believed  to  be  against  public  pol- 
icy to  register  a  mark  which  indicates  or  sug- 
gests that  the  government  has  given  its  offi- 
cial approval  of  the  character  or  quality  of 
the  merchandise  to  w-hich  such  mark  is  af- 
fixed.    Id. 

612.  The  use  of  the  words  "Pure  Old  Rye 
Whiskey"  in  connection  with  a  trade-mark 
on  labels  placed  on  bottles  containing  whiskey 
which  is  part  rye  and  part  bourbon  and  con- 
tains neutral  spirits  and  coloring-matter  is 
such  false  representation  as  will  disentitle  the 
user  of  the  mark  to  register  the  name.  *Levy 
&  Co.  V.  Uri  (N.  M.  Uri  &  Co.,  Substituted), 
C.  D.  1908,  133  O.  G.  1363. 

613.  It  was  the  purpose  of  the  trade-mark 
act  to  protect  manufacturers  and  dealers,  be- 
cause in  so  doing  the  public  would  in  turn  be 
protected.  It  was  not  the  purpose  of  the  act 
to  recognize  the  right  of  any  person,  firm,  or 
corporation  to  deceive  the  public  by  the  use 
of  a  deceptive  mark.    *Id. 

614.  The  words  "United  States  Standard" 
Held,  not  entitled  to  registration,  as  such 
registration  would  tend  to  indicate  that  the 
United  States  government  was  guaranteeing 
that  the  flour  on  which  the  mark  was  placed 
was  up  to  the  standard  required  by  the  pure 
food  and  drugs  act.  Hazel  Milling  Co.  v. 
Weraler.  C.  D.  1909,  138  O.  G.  2.58. 

615.  The  purpose  of  the  act  being  to  prevent 
and  not  to  promote  fraud  and  mistake,  we 
would  not  feel  inclined,  even  in  a  doubtful 
case,  to  grant  registration  to  a  claimant 
where  it  appeared,  as  here,  that  when  he 
adopted  the  mark  he  knew  of  its  prior  adop- 
tion and  use  by  another  firm  in  connection 
with  goods  of  the  same  general  character  and 
properties.  The  opportunity  for  selection  be- 
ing as  limitless  as  the  human  imagination,  we 
have  reason  to  question  the  motive  prompting 
the  adoption  by  one  dealer  of  a  mark  pre- 
viously applied  by  another  dealer  to  like  goods. 
♦Phoenix  Paint  and  Varnish  Co.  v.  John  T. 
Lewis  &  Bros.  Co.,  C.  D.  1909,  139  O.  G.  990. 

616.  The  words  "Ask  the  Revenue  Officer" 
a?  a  trade-mark  for  whiskey.  Held,  to  be  de- 
ceptive, and  therefore  not  registrable,  since 
the  registration  of  this  mark  w-ould  tend  to 
indicate  that  the  government  had  guaranteed 
the  quality  of  the  goods  upon  which  the  mark 
was  placed.  Ex  parte  R.  M.  Rose  Company, 
C.  D.  1909,  140  O.  G.  507. 


617.  A  mark  the  distinguishing  feature  of 
which  consists  of  the  word  "Government," 
for  loose-leaf  binders,  refused  registration 
on  the  ground  that,  in  association  with  the 
words  "Registered  in  the  United  States  Pat- 
ent Office"  or  an  abbreviation  thereof,  which 
the  law  requires  to  be  affixed  to  the  mark  to 
give  notice  of  the  registration,  it  would  tend 
to  mislead  the  public  into  the  belief  that  the 
goods  to  which  the  mark  is  affixed  have  re- 
ceived the  approval  of  the  United  States  gov- 
ernment Ex  parte  Sieber  &  Trussell  Manu- 
facturing Company,  C.  D.  1909,  145  O.  G.  1249. 

618.  The  word  "Copyright"  Held,  properly 
refused  registration  as  a  trade-mark,  since 
its  use  in  connection  with  the  words  "Regis- 
tered in  the  United  States  Patent  Office"  or 
their  equivalent  would  be  likely  to  convey  to 
the  mind  of  the  purchasing  public  the  im- 
pression that  the  merchandise  upon  which  the 
mark  is  used  had  received  the  official  appro- 
val of  the  United  States  government.  Ex 
parte  The  Blish  Milling  Co.,  C.  D.  1911,  165 
O.  G.  242. 

XXVII.  Good  Wili,. 

619.  One  does  not  lose  the  good-will  of  his 
trade  in  an  article  of  his  manufacture  by 
placing  upon  it  the  names  of  his  customers 
who  are  engaged  in  selling  it  nor  by  the  fact 
that  the  consumers  know  only  the  name  and 
excellence  of  the  article  and  neither  know 
nor  care  who  makes  it.  d  Shaver  et  al.  v. 
Heller  and  Merz  Co.,  C.  D.  1901,  424,  96  O. 
G.  2229. 

XXVIII.  Goods  of   S.^me  DEscpiprme   Prop- 
erties. 

(a)  In  General. 

620.  While  it  is  difficult  to  lay  down  any 
hard  and  fast  rule  on  the  subject  of  division 
in  trade-mark  cases,  yet  each  certificate  of 
registration  should  be  confined  to  commer- 
cial classification — such,  for  instance,  as  gro- 
ceries, hardware,  drygoods,  etc. — and  the  de- 
termination of  what  particular  description  of 
goods  is  comprised  in  that  class,  together 
with  the  lines  of  classification,  should  be  left 
in  the  first  instance  to  the  discretion  of  the 
examiner  of  trade-marks.  Ex  parte  China 
and  Japan  Trading  Company,  Limited,  C.  D. 
1900,  92   O.   G.  2508. 

621.  Trade-mark  applications  must  be  lim- 
ited to  a  single  class  of  goods,  and  this  means 


566 


TRADE  MARKS,  XXVIII,  (a). 


goods  of  substantially  the  same  descriptive 
properties.  Ex  parte  Faxon,  C.  D.  1903,  103 
O.  G.  891. 

622.  A  particular  symbol  may  be  used  upon 
different  classes  of  goods  without  a  conflict 
of  rights,  and  when  so  used  independent  trade- 
mark rights  are  created.     Id. 

623.  Where  a  mark  is  used  upon  two  kinds 
of  goods  which  are  not  of  "substantially  the 
same  descriptive  properties,"  the  trade-mark 
right  acquired  is  not  single.     Id. 

624.  The  scope  of  a  registered  trade-mark 
extends  no  further  than  the  remedy  provided 
for  its  infringement,  and  this  includes  only 
use  of  the  symbol  upon  "merchandise  of  sub- 
stantially the  same  descriptive  properties."  Id. 

625.  The  trade-mark  right  originated  in  the 
application  of  a  particular  mark  to  a  particu- 
lar description  of  goods,  and  the  purpose  of 
the  trade-mark  law  is  to  protect  the  use  of 
the  particular  mark  m  connection  with  the 
particular  goods.     Id. 

626.  The  "class  of  merchandise"  required 
to  be  stated  in  the  application  is  merely  a 
description  of  the  field  within  which  will  be 
found  the  particular  description  of  goods  to 
which  the  mark  has  been  appropriated.     Id. 

627.  Trade-mark  registrations  cannot  cover 
great  "commercial  classes"  of  goods  or  classes 
brought  together  by  the  custom  of  commerce, 
but  only  those  classified  by  identity  of  intrin- 
sic properties.     Id. 

628.  Held,  that  a  single  trade-mark  regis- 
tiation  cannot  be  permitted  to  cover  the  great 
number  of  different  articles  mentioned  in  this 
case  merely  because  they  are  all  made  in 
whole  or  in  part  of  rubber  and  are  made  and 
sold  by  one  company.  Ex  parte  Tallmadge, 
C.   D.   1903,   104  O.  G.  2443. 

629.  The  question  whether  goods  are  of 
substantially  the  same  descriptive  properties 
and  may  be  covered  by  one  registration  de- 
pends not  merely  upon  the  substance  of  which 
they  are  made,  but  also  upon  the  character 
and  use  of  the  articles.     Id. 

630.  The  extent  of  the  right  obtained  by 
registration  as  to  the  character  of  goods  upon 
which  the  mark  may  be  used  is  the  same 
under  the  act  of  1905  as  under  the  act  of 
1881.  Ex  parte  Harris,  C.  D.  1905,  117  O.  G. 
1164. 

631.  Where  the  examiner  rules  that  the 
class  of  goods  to  which  the  trade-mark  has 
applied  is  stated  so  broadly  as  to  include 
more  than  one  trade-mark  right  and  requires 
amendment.  Held,  that  his  action  amounts  to 


a  rejection  and  is  appealable.  It  will  not  be 
reviewed  on  interlocutory  petition  without 
fee.  Ex  parte  Pfister  &  Vogel  Leather  Com- 
pany, C.  D.  1905,  118  O.  G.  2250. 

632.  Held,  that  registration  was  properly 
refused  where  the  application  described  the 
mark  as  applied  to  various  articles  which  are 
not  of  substantially  the  same  descriptive 
properties.  Ex  parte  The  Chas.  H.  Phillips 
Chemical  Co.,  C.  D.  1905,  119  O.  G.  652. 

633.  The  act  of  February  20,  1905,  does  not 
contemplate  that  a  single  trade-mark  regis- 
tration shall  include  goods  which  are  not  of 
substantiallv  the  same  descriptive  properties. 
Id. 

634.  According  to  the  position  relating  to 
infringement  a  single  trade-mark  right  ex- 
tends no  further  than  to  "merchandise  of 
substantially  the  same  descriptive  properties," 
and  there  is  nothing  to  show  an  intent  to  per- 
mit a  single  registration  to  include  more  than 
one  trade-mark  right.     Id. 

635.  The  act  of  1905  contains  the  same 
provisions  and  has  the  same  meaning  as  the 
act  of  1881  in  so  far  as  the  limitation  to 
goods  of  substantially  the  same  descriptive 
properties  is  concerned.  Ex  parte  A.  G. 
Spaulding  &  Bros.,  C.  D.  1906,  120  O.  G.  325. 

636.  Where  the  description  of  the  goods 
upon  which  the  mark  has  been  used  is  in  such 
broad  and  general  terms  as  to  include  goods 
which  are  not  of  substantially  the  same  de- 
scriptive properties,  registration  must  be  re- 
fused on  the  ground  that  the  application  is 
not  limited  to  a  single  trade-mark  right.     Id. 

637.  A  single  trade-mark  registration  should 
include  only  a  single  trade-mark  right,  and  a 
single  right  extends  no  further  than  to  mer- 
chandise having  substantially  the  same  de- 
scriptive properties.     Id. 

638.  Only  one  trade-mark  right  should  be 
covered  by  a  single  registration,  and  where 
the  statement  of  the  goods  to  which  the  mark 
has  been  applied  is  so  broad  as  to  include 
goods  which  are  not  of  substantially  the  same 
descriptive  properties  registration  will  be  re- 
fused. Ex  parte  The  Kingan  Packing  Asso- 
ciation, C.  D.  1906,  120  O.  G.  1165. 

639.  Where  the  merchandise  upon  which  a 
trade-mark  is  used  is  stated  in  the  registra- 
tion of  such  mark  to  be  "wines  and  liquors," 
if  is  doubtful  whether  the  registrant  meant 
by  this  statement  that  his  mark  had  been  used 
upon  beer,  and  in  the  absence  of  more  con- 
vincing evidence  that  it  was  used  upon  beer, 
and  not  merely  upon  wines  and  distillates,  the 


TRADE  MARKS,  XXVIII,  (b). 


567 


registration  should  not  be  held  to  anticipate 
an  application  for  the  registration  of  a  sim- 
ilar mark  for  beer.  Anheuser-Busch  Brew- 
ing Association  v.  D.  G.  Yuengling  &  Son  et 
al.,  C.  D.   1907,  129  O.  G.  2501. 

640.  The  question  whether  the  goods  to 
which  a  mark  forming  the  issue  of  an  inter- 
ference has  been  applied  by  the  respective 
parties  are  of  the  same  descriptive  properties 
is  a  question  which  may  be  decided  by  the 
examiner  of  interferences  at  final  hearing. 
Lewis  and  Bros.  Co.  v.  Phoenix  Paint  and 
Varnish  Co.,  C.  D.  1907,  131  O.  G.  361. 

641.  A  party  who  has  not  used  a  mark  as 
a  trade-mark  upon  goods  of  a  like  descrip- 
tion to  applicant's  can  suffer  no  damage  from 
its  registration  by  the  latter  (Mcllhenny's 
Son  V.  New  Iberia  Extract  of  Tabasco  Pep- 
per Co.,  ante,  32.5,  133  O.  G.  995),  and  a  no- 
tice of  opposition  which  alleges  merely  that 
the  opponent  used  the  mark  in  its  advertising 
matter  is  demurrable.  *Battle  Creek  Sani- 
tarium Co.,  Ltd.,  V.  Fuller,  C.  D.  1908,  134  O. 
G.  471. 

642.  For  the  purpose  of  registration  a  fer- 
mented malt  liquor  which  is  advertised  as  a 
"pleasing,  tasteful,  invigorating  tonic  as  well 
as  a  pleasant  beverage,  for  strengthening  and 
building  up  the  system  recommended  for  con- 
valscents  and  nursing  mothers  by  all  leading 
physicians,"  must  be  considered  as  goods  of 
the  same  descriptive  properties  as  a  non- 
alcoholic viscous  syrup  sold  as  a  medicine  and 
tonic,  notwithstanding  the  fact  that  in  the 
application  for  registration  the  former  is  des- 
ignated as  lager-beer.  *The  Peter  Schoen- 
hofen  Brewing  Company  v.  The  Maltine  Com- 
pany, C.  D.  1903,  134  O.  G.  1S05. 

643.  The  use  by  the  applicant  for  cancella- 
tion of  a  mark  on  a  dyspepsia  remedy  fur- 
nishes no  ground  for  cancelling  the  registra- 
tion of  substantially  the  same  mark  for  tooth- 
powder,  since  these  articles  are  manifestly 
of  different  descriptive  properties.  Graves  v. 
Gunder,  C.  D.  1908,  136  O.  G.  227. 

644.  While  the  owner  of  a  trade-mark  is 
entitled  to  protection  against  the  registration 
of  the  same  or  a  similar  mark  by  another 
upon  goods  adapted  to  similar  use,  he  is  not 
entitled  by  reason  of  its  use  on  one  article  to 
a  monopoly  of  the  mark  for  all  goods  which 
may  be  included  in  a  broad  class  established 
by  the  patent  office.  B.  Fischer  &  Co.  v.  A. 
F.  Beckman  &  Co.,  C.  D.  1909,  149  O.  G. 
1130 


(b)  Held  Same. 

645.  Where  the  complainant  has  acquired 
the  exclusive  right  to  the  use  of  the  trade- 
mark on  soda  and  saleratus  and  the  de- 
fendants admit  using  it  upon  baking  powder. 
Held,  that  soda  and  baking  powder  belong 
to  the  same  class  of  goods,  since  they  are 
handled  by  the  same  class  of  dealers,  are  pur- 
chased by  the  same  class  of  customers,  and 
are  used  indifferently  to  accomplish  the  same 
object,  and  therefore  the  defendants  are  guilty 
of  infringement,  c  Church  &  Dwight  Com- 
pany v.  Russ  et  aL,  C.  D.  1900,  91  O.  G.  228. 

646.  Held,  that  the  machines  sold  by  the 
parties  belong  to  "the  same  class  of  merchan- 
dise" within  the  meaning  of  the  trade-mark 
law,  although  they  contain  certain  specified 
differences.  They  are  both  sewing-machines 
and  belong  to  the  same  class  of  sewing-ma- 
chines. Carey  v.  New  Home  Sewing  Machine 
Co.,  C.  D.   1901,  96  O.  G.   1429. 

647.  Substantially  the  same  mark  cannot 
be  registered  to  two  parties  for  two  classes 
of  goods  which  are  so  closely  related  that 
when  bearing  the  same  mark  the  public  would 
be  deceived  and  suppose  that  they  were  the 
product  of  the  same  manufacturer.  Held, 
that  shoes  for  men,  women  and  children  are 
so  closely  related.  B.  A.  Corbin  &  Son  Co.  v. 
Miller,  Kohlhepp,  Giese  &  Co.,  C.  D.  1902,  98 
O.  G.  1485. 

648.  After  a  trade-mark  has  been  registered 
for  goods  of  a  certain  particular  description 
no  other  person  can  register  or  use  the  same 
or  substantially  the  same  mark  on  goods  of 
the  same  class  as  those  described  in  the  regis- 
tration when  such  use  would  result  in  the 
deception  of  the  public  in  the  purchase  of 
the  goods.  Ex  parte  Crown  Distilleries  Com- 
pany, C.  D.  1902,  98  O.  G.  2590. 

649.  In  the  statute  relating  to  the  registra- 
tion of  trade-marks  the  word  "class"  means 
that  genus  which  includes  as  species  such 
goods  as,  if  exposed  to  the  purchasing  public 
side  by  side  with  the  "particular"  goods  to 
which  the  trade-mark  has  been  applied,  will 
result  in  the  deception  mentioned  in  section 
8  of  the  statute,  and  the  public,  misled  by  the 
apphcation  of  a  single  title  to  the  various 
"particular"  goods,  will  conclude  that  they 
have  originated  from  the  same  source.    Id. 

650.  Held,  that  although  between  fruit- 
brandy  and  whiskey  there  are  certain  well- 
recognized  distinctions,  yet  they  are  both 
comprised  in  the  class  of  distilled  spirituous 


568 


TRADE  MARKS,  XXVIII,  (b). 


liquors,  and  that  the  purchasing  public  seeing 
both  with  the  same  trade-mark  would  con- 
clude that  they  were  produced  by  the  same 
maker.     Id. 

651.  The  words  "Old  Government"  refused 
registration  as  a  trade-mark  for  fruit-brandy 
in  view  of  the  prior  registration  of  the  same 
words  as  a  trade-mark  for  whiskey.     Id. 

652.  A  trade-mark  for  gas  or  vaporizing 
lamps,  except  bicycle-lamps,  refused  registra- 
tion in  view  of  substantially  the  same  mark 
registered  for  bicycle-lamps,  since  the  goods 
are  of  the  same  class  and  the  use  of  the  same 
mark  by  different  owners  will  mislead  the 
purchasing  public  Ex  parte  Aladdin  Gas 
Light   Company,  C.   D.   1902,   100  O.  G.  450. 

653.  Where  a  mark  has  been  used  upon  one 
form  of  liver  medicine.  Held,  that  it  cannot 
be  registered  to  another  party  for  a  different 
form  of  liver  medicine.  The  class  of  goods 
is  the  same.  Ex  parte  Ins  Medicine  Co.,  C. 
D.  1902,  101  O.  G.  887. 

654.  The  use  of  a  mark  by  one  person  upon 
laundry  soap  will  prevent  the  subsequent  reg- 
istration of  that  mark  to  another  upon  toilet 
soap  since  there  is  no  clear  line  of  distinction 
between  the  two  kinds  of  soap.  Ex  parte 
Willard  Chemical  Co.,  C.  D.  1903,  107  O.  G. 
1972. 

655.  Where  one  party  used  the  trade-mark 
upon  gin  and  the  other  upon  "Holland  Schie- 
dam Geneva,"  Held,  that  the  goods  are  sub- 
stantially the  same  and  that  the  first  to  adopt 
the  mark  is  entitled  to  registration.  Vanden- 
bergh  &  Co.  v.  Blankenheym  &  Nolet,  C.  D. 
1904,   108   O.   G.  563. 

656.  Timothy-seed  and  clover-seed  are  goods 
of  the  same  descriptive  properties,  so  that  the 
use  of  a  mark  by  a  party  upon  the  former  ex- 
cludes the  right  of  other  parties  to  use  the 
same  mark  upon  the  latter.  Conklin  and  Son 
v.  The  Albert  Dickinson  Company,  C.  D. 
1906,   122   O.  G.   139S. 

657.  Held,  that  horn  hair-pins  are  goods  of 
the  same  descriptive  properties  as  combs,  hair- 
pins, and  other  hair  ornaments.  Rice  &  Harp- 
ster  V.  Fishel,  Nessler  &  Co.,  C.  D.  1906,  123 
O.  G.  997. 

658.  Ready-mixed  paints  and  paste  paints 
Held,  to  be  goods  of  the  same  descriptive 
properties.  John  T.  Lewis  &  Bros.  Company 
V.  Phoenix  Paint  &  Varnish  Company,  C.  D. 
1908,  134  O.  G.  1049. 

659.  Held,  that  an  application  for  registra- 
tion of  a  trade-mark  for  whiskey  is  not  re- 


stricted to  corn  whiskey.    J.  C.  Somers  &  Co. 
V.  Newman.  C.  D.  1908,  134  O.  G.  2031. 

660.  Gasolene  and  vapor  stoves  are  used 
for  the  same  purpose  as  coal  and  wood  stoves 
and  belong  to  the  same  genus.  One  who 
adopts  the  word  "Jewel"  as  a  trade-mark  for 
gasolene  and  vapor  stoves  with  full  knowledge 
of  the  use  at  that  time  of  the  same  word  for 
coal  and  wood  stoves  is  not  entitled  to  regis- 
tration. *American  Stove  Co.  v.  Detroit  Stove 
Co.,  C.  D.  1908,  134  O.  G.  2245. 

661.  According  to  general  knowledge  and 
observation  coffee  and  cocoa  are  goods  of 
the  same  descriptive  properties,  and  so  far 
as  there  is  any  question  of  fact  involved  in 
this  point  it  should  not  be  decided  on  demur- 
rer, but  should  be  left  for  submission  of 
proof.  Walter  Baker  &  Co.,  Ltd.  v.  Harrison, 
C.  D.  1909,  138  O.  G.  770. 

662.  Things  may  be  said  to  possess  the  same 
descriptive  properties  when  they  can  be  ap- 
plied to  the  same  general  use.  Coffee  and 
cocoa  when  used  as  beverages  are  at  once 
associated  as  belonging  to  the  class  of  bever- 
ages in  general  domestic  use.  They  belong  to 
the  class  of  beverages  universally  used  on  the 
table  and  sold  in  prepared  packages  for  that 
purpose.    *Id. 

663.  A  mark  should  be  denied  not  only  when 
used  on  goods  of  the  same  descriptive  prop- 
erties as  a  similar  registered  mark,  but  when 
used  on  goods  belonging  to  the  same  general 
class.    *Id. 

664.  Two  trade-marks  may  be  said  to  be 
appropriated  to  merchandise  of  the  same  de- 
scriptive properties  in  the  sense  meant  by 
the  statute  when  the  general  and  essential 
characteristics  are  the  same,  the  test  being 
whether  there  is  such  sameness  in  the  distin- 
guishing characteristics  of  the  goods  as  to  be 
likely  to  mislead  the  public.  *Phoenix  Paint 
&  \'arnish  Company  v.  John  T.  Lewis  &  Bros. 
Company,  C.  D.  1009,  139  O.  G.  990. 

665.  Paste  paints  and  ready-mixed  paints 
are  goods  of  the  same  descriptive  properties 
within  the  meaning  of  the  trade-mark  act. 
»Id. 

666.  Saws,  tools,  and  files  are  goods  of  the 
same  descriptive  properties  as  hammers  and 
hatchets.  Ex  parte  Bindley  Hardware  Com- 
pany, C.  D.  1909,  141  O.  G.  285. 

667.  Cigars  Held,  to  be  merchandise  of  the 
same  descriptive  properties  as  smoking  and 
chewing  tobacco.  Ex  parte  Penn  Tobacco  Co., 
C.  D.  1909,  144  O.  G.  275. 


TRADE   MARKS,  XXVIII,    (e). 


569 


668.  Hydrolithic  or  waterproof  cement, 
Held,  to  be  of  the  same  descriptive  properties 
as  Portland  cement.  Ex  parte  The  Water- 
proofing Co.,  C.  D.  1909,  145  O.  G.  255. 

669.  Whiskey  and  gin  are  goods  of  the  same 
descriptive  properties  (the  decision  in  Van- 
den  Bergh  &  Company  v.  Belmont  Distillery 
Co.,  C.  D.  1903,  496,  107  O.  G.  2235,  over- 
ruled.) P.  J.  Bowlin  Liquor  Company  v.  J. 
and  J.  Eager  Company,  C.  D.  1909,  148  O.  G. 
571. 

670.  "Straight"  whiskey,  "blended"  whiskey, 
and  "compound"  whiskey  are  goods  of  the 
same  descriptive  properties  within  the  mean- 
ing of  the  trade-mark  act.  *In  re  Wright  & 
Taylor  et  al.,  C.  D.  1909,  148  O.  G.  834. 

671.  Wood  fillers  and  white  lead  are  goods 
of  the  same  descriptive  properties  within  the 
meaning  of  the  trade-mark  act  of  February 
20,  1905.  The  Warren  Paint  Co.  v.  Reeve  & 
Co.  V.  Davidson  &  Knowles  Co.,  C.  D.  1909, 
148  O.  G.  1345. 

672.  Held,  that  "work-shirts"  and  "flannel 
shirts"  are  goods  of  the  same  descriptive 
properties.  Ex  parte  The  Ohio  Garment  Co., 
C.  D.  1910,  153  O.  G.  821. 

673.  Held,  that  "overalls"  and  "trousers" 
are  goods  of  the  same  descriptive  properties. 
Id. 

674.  A  beverage  brewed  from  malt  and  hops 
and  a  beverage  made  from  a  mixture  of  a 
so-called  "Beerine"  compound  and  beer  di- 
luted and  charged  with  carbonic-acid  gas, 
each  beverage  containing  less  than  1  per  cent 
of  alcohol,  Held,  to  constitute  goods  of  the 
same  descriptive  properties.  Gerst  v.  Streh- 
low,  C.  D.  1910,  157  O.  G.  999. 

675.  A  "family  liniment"  and  crude  oil  to 
be  used  as  a  "remedy  for  skin  diseases"  Held, 
to  constitute  merchandise  of  the  same  descrip- 
tive properties.  Ex  parte  Boving,  C.  D.  1910, 
159  O.  G.  490. 

676.  A  powder  designed  to  be  used  in  the 
"treatment  of  rheumatism,  neuralgia,  and  lum- 
bago," and  a  liniment.  Held,  to  constitute 
goods  of  the  same  descriptive  properties.  Ex 
parte  Nicolaus,  C.  D.  1910,  161  O.  G.  268. 

677.  "Syrups,  syrup  compounds  and  syrup 
substitutes"  Held,  to  be  goods  of  the  same 
descriptive  properties  as  "A  Harmless  Vege- 
table Compound  to  Impart  a  Flavor  Similar 
to  Maple  for  Syrups,  etc."  Ex  parte  Price 
Flavoring  Extract  Co.,  C.  D.  1911,  163  O.  G. 
728. 

678.  Olive-oil  and  cotton-seed  oil  for  cul- 
inary purposes  Held,  to  be  goods  of  the  same 


descriptive  properties.     Ex  parte  Fortuna  and 
Magro,  C.  D.  1911,  165  O.  G.  473. 

679.  A  trade-mark  for  coffee  Held,  prop- 
erly refused  registration  in  view  of  a  mark 
so  similar  thereto  as  to  be  liable  to  cause  con- 
fusion which  had  been  previously  registered 
for  cocoa,  since  these  are  goods  of  the  same 
descriptive  properties  (citing  Walter  Baker  & 
Company  v.  Harrison,  138  O.  G.  770,  32  App. 
D.  C.  272).  Ex  parte  Austin,  Nichols  &  Co., 
C.  D.  1911,  167  O.  G.  981. 

680.  Beer  and  a  beverage  "prepared  in  part 
from  malt  and  containing  less  than  one-half 
of  one  per  cent,  of  alcohol,"  Held,  to  be  goods 
of  the  same  descriptive  properties  within  the 
meaning  of  section  5  of  the  trade-mark  act. 
Ex  parte  Independent  Breweries  Co.,  C.  D. 
1911,  172  O.  G.  833. 

681.  "Wood-wool"  used  as  a  medicinal 
preparation.  Held,  to  constitute  goods  of  the 
same  descriptive  properties  as  "paper-wool" 
used  for  bandages,  etc.  Ex  parte  Seabury  & 
Johnson,  C.  D.  1911,  173  O.  G.  865. 

(c)  Not  Held  Same. 

682.  There  is  a  well-defined  difference  be- 
tween cigars  and  cigarettes,  as  the  terms  are 
ordinarily  used.  A  purchaser  calling  for 
"Carmencita"  cigars  would  not  be  apt  to  ac- 
cept through  inadvertence  or  mistake  a  pack- 
age of  "Carmen"  cigarettes ;  nor  would  the 
cigarette  devotee  accept  a  "Carmencita"  cigar 
under  the  impression  that  it  was  his  favorite 
brand  of  cigarettes.  Held,  therefore,  that 
applicant  is  entitled  to  register  the  word  "Car- 
men" as  a  trade-mark  for  cigarettes,  notwith- 
standing the  prior  registration  of  the  word 
"Carmencita"  as  a  trade-mark  for  cigars.  Ex 
parte  Egyptian  Tobacco  Co.,  C.  D.  1S98,  85 
O.  G.  1741. 

683.  Prior  registration  of  the  words  "La 
Norma"  as  a  trade-mark  for  cigar-boxes  does 
not  preclude  the  registration  of  the  word 
"Norma"  as  a  trade-mark  for  cigarettes,  for 
the  reason  that  cigar-boxes  and  cigarettes  be- 
long to  essentially  different  classes,  the  one  to 
the  class  of  receptacles  and  the  other  to  the 
class  of  manufactured  tobacco.  Ex  parte 
Egyptian  Tobacco  Company,  C.  D.  1898,  85  O. 
G.  1905. 

684.  Held,  that  a  trade-mark  for  chamois- 
skins  for  polishing  purposes  should  not  be  re- 
fused registration  upon  a  prior  registration 
of  a  similar  mark  for  glazed  kid,  since  the 
goods  are  not  of  substantially  the  same  de- 


570 


TRADE  MARKS,  XXIX. 


scriptive  properties  and  do  not  therefore  be- 
long to  the  same  class.  Ex  parte  Keystone 
Chamois  Company,  C.  D.  1902,  101  O.  G. 
3109. 

685.  To  constitute  infringement  or  antici- 
pation, the  marks  must  not  only  resemble  each 
other,  but  must  be  placed  on  merchandise  of 
substantially  the  same  descriptive  properties. 
Id. 

686.  The  right  conferred  by  a  single  trade- 
mark registration  does  not  extend  beyond  the 
remedy  provided  by  law,  and  that  under  sec- 
tion 7  of  the  act  includes  only  its  use  upon 
merchandise  of  substantially  the  same  de- 
scriptive properties.     Id. 

687.  The  statement  of  the  class  of  goods 
under  section  1  of  the  act  does  not  expand 
the  right  acquired  beyond  merchandise  of 
substantially  the  same  descriptive  properties 
as  the  particular  goods  upon  which  the  regis- 
trant has  used  the  mark.     Id. 

688.  Held,  that  a  single  trade-mark  regis- 
tration may  not  include  the  various  articles 
coming  under  the  general  class  of  plumbers' 
supplies,  since  they  are  not  goods  of  substan- 
tially the  same  descriptive  properties.  Ex 
parte  Peck  Brothers  Company,  C.  D.  1903, 
106  O.  G.  769. 

689.  The  words  "substantially  the  same  de- 
scriptive properties"  mean  that  the  articles  are 
so  nearly  alike  in  characteristics  and  use  that 
the  purchasing  public  seeing  them  sold  under 
the  same  mark  would  naturally  suppose  that 
they  were  made  by  the  same  manufacturer. 
Id. 

690.  Where  the  issue  is  a  trade-mark  for 
whiskey  and  it  appears  that  Vanden  Bergh  & 
Company  have  used  it  only  on  gin.  Held, 
that  the  decision  must  be  in  favor  of  the 
Belmont  Distillery  Company.  Vanden  Bergh 
&  Company  v.  Belmont  Distillery  Company, 
C.  D.  1903,  107  O.  G.  2235. 

691.  Gin  and  whiskey  are  not  goods  of  sub- 
stantially the  same  descriptive  properties,  and 
a  single  trade-mark  right  does  not  include  the 
use  of  the  mark  upon  both.     Id. 

692.  Whiskey  and  gin  are  liquids  of  sub- 
stantially similar  alcoholic  contents,  but  they 
differ  in  the  properties  of  taste  and  odor,  and 
in  this  class  of  merchandise  the  qualities  of 
taste  and  odor  rise  into  such  great  importance 
that  they  are  the  foundation  of  values.    Id. 

693.  Where  M.  is  the  registrant  of  a  mark 
for  suspenders,  which  mark  he  has  applied 
only  to  suspenders  for  trousers,  and  F.  and 
G.  prove  prior  adoption  of  the  same  mark  for 


garters  for  men's  half -hose.  Held,  that  the 
word  "suspenders"  in  M.'s  registration  is  spe- 
cific to  suspenders  for  trousers,  that  sus- 
penders for  trousers  and  garters  for  men's 
half-hose  are  goods  of  different  descriptive 
properties,  and  that  F.  and  G.  have  therefore 
failed  to  overcome  the  (irima  facie  case  made 
by  M.'s  registration.  Frank  &  Gutmann  v. 
Macwilliam,  C.  D.  1905,  117  O.  G.  1165. 

694.  A  single  trade-mark  registration  can 
not  include  the  mark  applied  to  paints,  driers, 
white  lead,  stove-polish,  stove  and  furnace 
cement,  and  roofing-cement,  since  the  goods 
are  not  of  substantially  the  same  descriptive 
properties.  Ex  parte  The  William  Connors 
Paint  Mfg.  Company,  C.  D.  1905,  119  O.  G. 
2522. 

695.  White  lead  and  calcimine.  Held,  not 
to  be  goods  of  the  same  descriptive  proper- 
ties. *The  Muralo  Co.  v.  National  Lead  Co., 
C.  D.  1911,  165  O.  G.  475. 

696.  "The  question  of  confusion  in  trade 
between  sales  of  white  lead  and  calcimine 
cannot  arise  out  of  the  difficulty  in  telling 
whether  a  given  wall  has  been  painted  with 
oil-paint  comprising  white  lead,  or  with  cal- 
cimine dissolved  in  water.  The  real  question 
is  whether  the  use  of  the  figure  of  a  Dutch 
boy  on  one  package  and  that  of  a  Dutchman 
on  the  other  is  calculated  to  mislead  an  ordi- 
nary person  seeking  to  buy  white  lead,  into 
buying  a  package  of  calcimine.  Bearing  in 
mind  the  essential  differences  between  the  two 
articles  we  think  it  impossible  that  such 
should  be  the  case.    *Id. 

XXIX.  Infringement. 

697.  It  is  not  necessary  to  constitute  in- 
fringement that  every  word  of  a  trade-mark 
should  be  appropriated.  It  is  sufficient  that 
enough  be  taken  to  deceive  the  public  in  the 
purchase  of  a  protected  article.  **Saxlehner 
V.  Mendelson  Co.,  C.  D.  1900,  93  O.  G.  940. 

698.  Where  the  infringement  of  a  trade- 
mark registered  under  the  act  of  congress 
was  charged.  Held,  that  the  court  had  juris- 
diction on  the  ground  that  the  case  arose 
under  a  law  of  the  United  States  and  that 
there  was  a  right  of  appeal  to  the  supreme 
court.  **Warner  v.  Searle  and  Hereth  Com- 
pany, C.  D.  1903,  107  O.  G.  1974. 

699.  Where,  pending  a  suit  for  infringement 
of  a  registered  trade-mark,  the  respondent  in 
that  suit  files  an  application  for  cancellation 
of  such  mark.  Held,  that  the  cancellation  pro- 


TRADE   MARKS.   XXX,    (a). 


571 


ceeding  will  be  suspended  pending  the  de- 
termination of  the  suit  for  infringement.  Pal- 
estine Hebrew  Wine  Co.  v.  Carmel  Wine  Co., 
C.  D.  1909,  142  O.  G.  287. 

XXX.  Interfkrence. 
(a)   In  General. 

700.  Where  a  party's  statement  of  the  date 
of  use  of  his  mark  does  not  overcome  the  date 
of  another  party's  registration,  Held,  that  he 
is  not  entitled  to  an  interference.  Ex  parte 
Ino  Medicine  Co.,  C.  D.  1902,  101  O.  G.  887. 

701.  Where  the  interference  relates  to 
"President"  for  suspenders  and  it  is  alleged 
in  affidavits  filed  that  F.  and  G.  have  never 
used  the  mark  upon  suspenders,  but  only  upon 
hose-supporters.  Held,  that  the  office  cannot 
found  judgment  upon  c.v  parte  affidavits  even 
if  it  were  conceded  that  suspenders  and  hose- 
supporters  were  not  goods  of  substantially  the 
same  descriptive  properties.  Frank  and  Gut- 
man  V.  Macwilliam,  C.  D.  1904,  108  O.  G.  291. 

702.  Where  an  applicant  for  registration 
of  a  trade-mark  which  has  been  registered  by 
another  files  affidavits  making  out  a  prima 
facie  case  of  abandonment  of  the  mark  by 
the  registrant.  Held,  that  an  interference 
should  be  declared  to  determine  the  question 
of  abandonment  and  the  present  ownership  of 
the  mark.  Ex  parte  Gill  Brothers  Company, 
C.  D.  1904,  109  O.  G.  188.5. 

703.  Where  H.  claims  the  word  "Satinette" 
as  a  trade-mark  and  W.  claims  "Satin"  and  it 
is  admitted  by  H.  that  W.  acquired  the  right 
to  the  words  "Satin  Skin"  before  his  date 
of  use,  Held,  that  priority  must  be  awarded 
to  W.,  since  the  three  marks  are  substantially 
the  same.  Wood  v.  Hinchman,  C.  D.  1904, 
110  O.  G.  600. 

704.  Where  the  testimony  introduced  in 
behalf  of  the  applicant  for  registration  seeking 
to  establish  prior  adoption  and  use  is  far  from 
satisfactory.  Held,  that  a  second  trade-mark 
for  the  same  class  of  goods  will  not  be  reg- 
istered until  the  applicant  has  proved  his  com- 
mon law  right  to  the  trade-mark  in  a  court  of 
competent  jurisdiction.  Auerbach  &  Sons  v. 
Hall,  &  Hayward  Co.,  C.  D.  1904,  lU  O.  G. 
806. 

705.  A  trade-mark  interference  is  to  be  de- 
clared only  where  there  are  conflicting  claims 
made  to  the  same  trade-mark  right  which  is 
regarded  as  registrable,  and  the  question  to 
be  determined  is  which  of  the  parties  has  title 


and  is  entitled  to  registration.  The  only  con- 
flict is  as  to  title,  and  the  only  thing  to  be 
decided  as  between  the  parties  is  title.  The 
Robert  Smith  Ale  Brewing  Co.  v.  Beadleston 
&  Woerz,  C.  D.  1905,  119  O.  G.  :i41. 

708.  Where  applications  for  registration  are 
involved  in  an  interference  proceeding  and 
a  registration  of  the  same  mark  by  another 
party  is  found  which  is  prior  in  date  to  the 
dates  of  use  alleged  in  the  applications,  con- 
stituting a  prima  facie  bar  against  registra- 
tion upon  the  applications.  Held,  that  these 
applications  should  not  be  continued  in  the 
interference  until  the  apparent  bar  has  been 
overcome  by  such  proof  as  may  be  made  in 
the  ex  parte  prosecution  of  the  applications. 
Philadelphia  Watch  Case  Co.  v.  The  Dueber 
Watch  Case  Mfg.  Co.,  C.  D.  1906,  122  O.  G. 
1725. 

707.  Where  appellants  do  not  claim  to  be 
the  first  to  adopt  and  use  the  mark,  but  con- 
tend that  they  have  as  good  a  right  to  the 
mark  as  their  opponent  and  that  the  mark 
should  be  registered  to  both  parties  or  refused 
to  both,  Held,  that  this  contention  is  incon- 
sistent with  the  provisions  of  section  7  of 
the  act  of  February  20,  1905.  The  Casey- 
Swasey  Co.  v.  Rosenthal  Bros.  &  Co.,  C.  D. 
1907,  126  O.  G.  2590. 

708.  Where  in  an  interference  between  an 
applicant  and  a  registrant  the  latter  takes  no 
testimony  and  the  former  establishes  a  date 
of  adoption  and  use  prior  to  the  date  of  regis- 
tration, it  is  unnecessary  to  consider  whether 
there  is  an  interference  in  fact  or  whether 
the  testimony  shows  actual  conflict  in  trade. 
Dunlevy  &  Brother  v.  Nelson  Morris  &  Co., 
C.  D.  1908,  132  O.  G.  1588. 

709.  "In  a  trade-mark  interference  proceed- 
ing the  issue,  which  the  commissioner  is  called 
upon  to  determine,  is  not  merely  one  of  prior- 
ity as  in  a  patent  interference  proceeding,  but 
involves  any  question  that  might  be  raised  in 
an  ex  parte  case."  *In  re  Herbst,  C.  D.  1909, 
141  O.  G.  286. 

710.  Before  an  alleged  successor  to  the  busi- 
ness and  trade-mark  rights  of  a  registrant 
will  be  recognized  in  an  interference  proceed- 
ing such  successor  must  either  have  an  as- 
signment from  the  registrant  of  record  in 
this  office  or  he  must  file  an  application  in 
his  own  name.  (Frank  &  Gutmann  v.  Mac- 
william, C.  D.  1905,  17,  114  O.  G.  542.)  Yon- 
kers  Brewers  v.  Her  &  Berweger,  C.  D.  1909, 
14:t  O.  G.  258. 


578 


TRADE  MARKS,  XXX,  (b). 


711.  The  declaration  of  an  interference  be- 
tween two  trade-marks  is  a  matter  within  the 
discretion  of  the  examiner  of  trade-marks, 
and  his  decision  refusing  to  declare  an  inter- 
ference will  not  be  reviewed  on  appeal  except 
where  it  appears  that  such  discretion  has  been 
abused.    Id. 

712.  Where  in  an  interference  between  an 
applicant  and  a  registrant  the  examiner  of 
interferences  decides  that  the  applicant  is  not 
entitled  to  registration  by  reason  of  the  man- 
ner in  which  the  mark  was  used.  Held,  that 
the  application  will  not  be  returned  to  the 
examiner  of  trade-marks  for  a  further  con- 
sideration of  that  question  ex  I'arle.  since  in 
a  trade-mark  interference  it  is  within  the 
jurisdiction  of  the  examiner  of  interferences 
to  decide  the  right  of  a  party  to  registration, 
and  applicant's  remedy  is  either  by  appeal  or 
motion  to  reopen  the  interference.  Mathy 
V.  The  Republic  Metalware  Company,  C.  D. 
1909,  145  O.  G.  312. 

713.  Where  in  an  interference  between  an 
application  and  a  registration  the  applicant 
files  a  sworn  statement  of  facts  tending  to 
show  that  the  registrant  does  not  use  or  has 
abandoned  the  mark  in  issue,  it  is  proper  to 
require  that  the  registrant  file  a  sworn  state- 
ment in  reply  or  in  event  of  the  failure  to 
file  such  statement  that  a  judgment  by  default 
be  rendered  against  him.  The  Ozo  Remedy 
Company  v.  Carnrick  &  Co.,  Ltd..  C.  D.  1909, 
146  O.  G.  9.i9. 

714.  Where  in  a  trade-mark  interference  a 
decision  was  rendered  that  neither  party  was 
entitled  to  registration  and  only  one  of  the 
parties  took  an  appeal.  Held,  that  as  to  the 
other  party  the  question  of  its  right  to  regis- 
tration is  res  adjudicata,  and  neither  it  nor 
its  successors  in  business  is  entitled  to  fur- 
ther consideration  therein.  Ex  parte  The 
Safety  Remedy  Co.,  C.  D.  1910,  1.50  O.  G.  266. 

715.  Where  the  marks  involved  in  an  in- 
terference were  the  words  "Black  Caps"  and 
"Black  Capsules,"  a  final  decision  that  one  of 
the  parties  did  not  use  these  words  alone  as 
a  trade-mark,  but  in  connection  with  other 
words,  affords  no  ground  for  holding  that  the 
other  party  is  entitled  to  register  these  words 
under  the  ten-year  proviso  of  the  trade-mark 
act.     Id. 

716.  The  only  purpose  of  a  trade-mark  in- 
terference is  to  determine  the  question  of 
priority  of  adoption  and  use  (citing  Giles 
Remedy  Co.  v.  Giles,  C.  D.  1906,  552,  120  O. 
G.    1826,    26    App.    D.    C.    375,    distinguishing 


from  In  re  Herbst,  C.  D.  1909,  sn,  141  O.  G. 
287,  32  App.  D.  C.  269).  *Mathy  v.  The  Re- 
public Metalware  Company,  C.  D.  1910,  154 
O.  G.  1109. 

717.  Where  in  a  trade-mark  interference 
proof  is  offered  that  the  mark  in  issue  or  one 
substantially  identical  therewith  had  been 
used  by  a  third  party  prior  to  the  date  of 
adoption  proven  by  one  of  the  parties  to  the 
interference,  Held,  that  with  respect  to  that 
applicant's  right  to  registration  it  is  imma- 
terial that  the  mark  had  not  been  registered 
by  such  third  party  or  that  the  use  by  him  was 
unknown  to  the  applicant.  *Justin  Seubert, 
Inc.  v.  A.  Santaella  &  Co.,  C.  D.  1911,  166  O. 
G.  987. 

(b)  Appeal. 

718.  Held,  further,  that  there  is  no  appeal 
from  a  favorable  decision  by  the  e-xaminer  of 
trade-marks  as  to  the  registrability  of  a  trade- 
mark, and  his  action  will  not  be  reviewed  and 
reversed  except  in  a  clear  case.  Broderick  & 
Basiom  Rope  Co.  v.  Leschen  &  Sons  Rope  Co., 
C.  D.  1901,  96  O.  G.  1647. 

719.  No  appeal  lies  from  a  decision  of  the 
examiner  of  trade-marks  holding  that  a  party 
is  entitled  to  the  registration  of  a  trade- 
mark. Sibley  Soap  Company  v.  Lambert 
Pharmacal  Company,  C.  D.  1903.  103  O.  G. 
2177. 

720.  In  a  trade-mark  interference  the  com- 
missioner held  that  none  of  the  parties  there- 
to were  entitled  to  registration.  No  appeal 
was  taken  from  his  decision,  but  thereafter  H. 
applied  to  the  examiner  of  trade-marks  for 
allowance  of  his  original  application,  and 
from  refusal  of  the  examiner  appeals  were 
presented  to  the  commissioner  and  the  court 
of  appeals.  Held,  that  if  H.  was  aggrieved 
by  the  decision  of  the  commissioner  in  the 
interference  his  remedy  was  by  way  of  ap- 
peal from  that  decision,  and  when  the  time 
within  which  such  an  appeal  might  have  been 
taken  expired  the  decision  became  final  and 
was  res  adjudicata.  *In  re  Herbst,  C.  D. 
1909,  141  O.  G.  287. 

721.  Where  in  an  interference  between  an 
application  and  a  registered  mark  the  regis- 
trant does  not  appear,  but  others  claiming  as 
successors  to  the  business  and  trade-mark 
rights  of  the  registrant  appear  and  seek  to 
be  made  parties  to  the  interference  by  filing 
a  new  application,  which,  however,  the  exam- 
iner of  trade-marks  holds  does  not  interfere 


TRADE  MARKS,  XXX,  (c),  (d),  (e),  (f). 


573 


with  the  trade-mark  claimed  by  the  other  ap- 
plicant, and  the  examiner  of  interferences 
renders  judgment  of  priority  against  the  reg- 
istrant, Held,  that  an  appeal  to  the  commis- 
sioner by  the  alleged  successors  is  irregular, 
as  they  are  not  parties  to  the  proceeding. 
Yonkers  Brewery  v.  Her  and  Bergweger,  C. 
D.  1909,  143  O.  G.  258. 

722.  Where  the  circumstances  of  the  case 
indicate  a  fixed  policy  of  delay  by  a  party  to 
opposition  and  interference  proceedings  and 
his  appeal  is  filed  outside  the  limit  set,  a  mo- 
tion to  extend  the  limit  to  include  the  appeal 
will  be  denied  and  the  appeal  dismissed.  Cal- 
ifornia Fruit  Canners  .\ssociation  v.  Ratcliff- 
Sanders  Grocer  Co.,  C.  D.  1909.  146  O.  G. 
958. 

723.  From  a  refusal  of  the  examiner  of  in- 
terferences to  reopen  the  case  for  the  purpose 
of  extending  the  times  to  take  testimony  no 
appeal  lies  (citing  Goodfellow  v.  Jolly,  C.  D., 
1905,  105,  115  O.  G.  1064.  and  others).     Id. 

(c)  Burden  of  Proof. 

724.  Since  a  trade-mark  registration  is 
prima  facie  evidence  of  ownership,  an  appli- 
cant in  interference  with  a  prior  registrant 
has  the  burden  of  overcoming  the  presump- 
tion in  favor  of  his  opponent.  Goldsmith  v. 
United  States  Vest  Company,  C.  D.  1905,  119 
p.  G.  1261. 

725.  .\n  applicant  in  interference  with  a 
registrant  must  show  that  he  was  the  first  to 
adopt  and  use  the  mark  or  that  the  registrant 
is  not  now  the  owner  by  reason  of  his  aban- 
donment of  the  mark.     Id. 

(d)  Date  of  Adol'tioii  and  Use. 

726.  In  trade-mark  interferences  the  state- 
ments in  the  applications  as  to  the  dates  of 
adoption  and  use  correspond  to  preliminary 
statements  in  patent  interferences,  and  there- 
fore no  additional  preliminary  statements  are 
required.  The  Gem  Cutlery  Co.  v.  Leach.  C. 
D.  1905,  114  O.  G.  2089. 

727.  A  trade-mark  applicant  or  registrant 
is  not  prevented  from  proving  an  earlier  date 
of  adoption  and  use  than  that  alleged  in  his 
statement  filed  with  his  application ;  but  to 
avail  him  such  proof  must  be  clear  and  con- 
vincing.    Id. 

728.  The  date  of  adoption  and  use  of  ap- 
plicant's mark  means  the  whole  mark  pre- 
sented for   registration,  and   it  is  not  appar- 


ent that  any  useful  purpose  can  be  subserved 
by  a  statement  as  to  the  date  of  use  of  the 
various  features  of  the  mark.  Ex  parte  Pitts- 
burgh Valve  Foundry  and  Construction  Co., 

C.  D.  1907,  128  O.  G.  887. 

(e)  Declaration. 

729.  Where  the  declaration  forming  a  part 
of  an  application  for  registration  of  a  trade- 
mark stated  that  the  mark  had  been  register- 
ed in  a  foreign  country  on  a  certain  date, 
which  was,  however,  the  date  upon  which  the 
application  for  registration  was  filed.  Held. 
that  a  new  declaration  was  properly  required. 
Ex  parte  Felten  &  Guilleaume-Lahmeyerwerke 
Actien-Gesellschaft.  C.  D.  1910,  1.50  O.  G. 
569. 

730.  Since  the  trade-mark  act  and  the  rules 
require  that  the  declaration  forming  part  of 
an  application  for  the  registration  of  a  trade- 
mark shall  be  verified,  the  patent  office  has 
no  power  to  change  such  a  declaration.    Id. 

731.  The  inclusion  in  the  declaration  of  an 
allegation  necessary  for  registration  of  a  mark 
under  the  ten-years  proviso  does  not  preclude 
its  registration  as  a  technical  mark  if  it  is 
found  to  be  such  (citing  Lecy  &  Co.  v.  Uri,  C. 

D.  1907,  386.  131  O.  G.  1687,  and  Robertson, 
Sanderson  &  Co.,  Ltd.  v.  Charles  Dennehy  & 
Co..  C.  D.  1908,  117,  134  O.  G.  513).  Inter- 
national Food  Company  v.  Price  Baking  Pow- 
der Company,  C.  D.  1910,  150  O.  G.  827. 

(f)  Dissoliitioii. 

732.  Where  an  interference  was  declared 
between  an  application  of  B.  for  the  registry 
of  the  words  "American  Volunteer"  for  men's 
boots  and  shoes  and  an  application  of  R.  for 
the  registry  of  the  word  "Volunteer"  for 
overshoes,  the  issue  being  stated  to  be  "The 
word  'Volunteer,'  for  overshoes,"  Held,  that 
the  issue  in  respect  to  the  class  of  goods  is 
narrower  than  the  class  of  goods  upon  which 
B.  uses  his  mark,  and  under  the  rule  in  Hern- 
sheim  et  al.  v.  Hargrave  et  al.  (C.  D.  1897, 
784,  81  O.  G.  503)  there  has  been  such  irreg- 
ularity in  declaring  the  interference  that  it 
should  be  dissolved.  Joseph  Bannigan  Rub- 
ber Company  v.  Bloomingdale,  C.  D.  1899,  89 
O.  G.  1670. 

733.  Held,  further,  that  as  the  parties  have 
taken  testimony  and  the  case  has  been  sub- 
mitted on  final  hearing,  and  as  there  is  no  dis- 
pute as  to  the  facts  disclosed  by  the  record, 


574 


TRADE  MARKS,  XXX,  (f). 


no  good  purpose  would  be  subserved  by  di- 
recting the  examiner  to  re-declare  the  inter- 
ference ;  but  it  is  decided  that  as  B.  has  used 
the  words  "American  Volunteer"  in  connec- 
tion with  men's  shoes  before  R.  used  the  word 
"Volunteer"  in  connectirn  with  overshoes  he 
is  entitled  as  between  the  two  to  have  the 
mark  registered.     Id. 

734.  Held,  further,  that  whether  or  not  R. 
is  entitled  to  have  his  mark  "Volunteer"  reg- 
istered in  connection  with  overshoes  is  an  ex 
parte  question  to  be  determined  in  the  first 
instance  by  the  examiner.     Id. 

735.  Where  one  of  the  parties  has  register- 
ed the  mark  of  the  issue  and  his  application 
sets  out  a  certain  date  of  adoption  and  use, 
which  date  is  subsequent  to  that  set  out  by 
his  opponent,  and  such  party  has  pending  a 
generic  application  for  the  same  mark  alleg- 
ing a  date  of  adoption  and  use  anterior  to 
the  date  of  his  opponent,  but  such  aiiplica- 
tion  does  not  mention  the  particular  goods 
to  which  the  mark  of  the  issue  is  applied. 
Held,  there  was  no  irregularity  in  failing  to 
include  the  generic  application  of  the  inter- 
ference. Sibley  Soap  Co.  v.  Lambert  Phar- 
macal  Co.,  C.  D.  1903,  103  O.  G.  2177. 

736.  Where  it  appears  that  the  same  party 
is  the  owner  of  the  trade-mark  set  forth  in 
each  of  the  applications  in  interference  and 
is  the  real  applicant  in  each  case.  Held,  that 
no  question  of  priority  exists  and  that  the 
interference  should  be  dissolved.  Taussig  v. 
Taussig,  C.  D.  190.1,  118  O.  G.  2251. 

737.  Motions  to  dissolve  trade-mark  inter- 
ferences should  be  heard  and  determined  by 
the  examiner  of  trade-marks  and  not  by  the 
examiner  of  interferences.  The  Robert  Smith 
Ale  Brewing  Company  v.  Beadleston  &  Woerz, 
C.  D.  190.5,  119  O.  G.  341. 

738.  A  motion  to  dissolve  an  interference 
is,  in  effect,  a  request  for  reconsideration  in 
the  light  of  argument  of  the  action  declaring 
the  interference,  and  therefore  it  should  be 
heard  and  determined  by  the  examiner  who 
declared  the  interference.    Id. 

739.  There  is  nothing  in  the  act  of  Febru- 
ary 20,  1905,  which  requires  that  the  exam- 
iner of  interferences  determine  anything  in 
trade-mark  interferences  e.xcept  the  conflict- 
ing claim  of  title  between  the  two  parties  in- 
volved. He  is  therefore  not  required  to  de- 
termine motions  for  dissolution.     Id. 

740.  Where  two  trade-marks  are  so  nearly 
alike  as  to  deceive  purchasers,  the  interfer- 
ence   will    not    be    dissolved    merely    because 


neither  party  opposes  dissolution.  Kops  Bros, 
v.  Royal  Worcester  Corset  Co.,  C.  D.  1905, 
119  O.  G.  1584. 

741.  An  interference  will  not  be  dissolved 
merely  because  the  parties  are  apparently  will- 
ing where  this  office  regards  the  marks  as 
substantially  the  same.  Wright  &  Taylor  v. 
niumenlhal  &  Bickart  v.  Moyer  Sons  &  Co. 
V.  Cushman  &  Co.,  C.  D.  1905,  119  O.  G.  2234. 

742.  Where  the  trade-marks  involved  in  an 
interference  include  as  their  dominating  fea- 
ture the  same  name  by  which  the  goods  would 
be  known,  it  is  immaterial  that  there  are  dif- 
ferences in  the  appearance  of  the  actual  labels, 
and  a  motion  to  dissolve  the  interference  on 
the  ground  of  non-interference  in  fact  must 
be  denied,  notwithstanding  both  parties  con- 
sent to  it.  The  Windsor  Milling  and  Elevator 
Company  v.  Brunncr,  C.  D.  1906,  121  O.  G. 
1676. 

743.  Where  an  interference  declared  be- 
tween two  applications  for  the  registration 
of  a  trade-mark  was  dissolved  on  reference 
to  a  mark  registered  by  a  third  party  on 
March  14,  1871,  Held,  that  the  registration 
under  the  act  of  1870,  and  over  thirty  years 
ago,  is  a  proper  reference  until  overcome  in 
some  way  by  the  applicant.  Schneider  v. 
The  Union  Distilling  Co.,  C.  D.  1906.  121  O. 
G.  1676. 

744.  Where  reference  is  made  to  an  expired 
registration  applicant's  remedy  is  not  by  an 
interference  proceeding  with  the  registered 
mark,  since  interferences  can  be  declared  only 
as  to  applications  and  existing  marks,  but  by 
a  showing  in  the  form  of  affidavits  to  over- 
come the  presumption  that  this  registrant 
under  the  act  of  1870  is  still  the  owner  of 
the  mark.    Id. 

745.  Where  in  a  trade-mark  interference  a 
refercflce  is  found  in  the  form  of  an  expired 
registration  under  the  act  of  1870,  Held,  that 
if  a  showing  is  made  overcoming  the  presump- 
tion of  ownership  raised  by  the  reference  the 
interference  should  continue.     Id. 

746.  Where  the  trade-marks  in  interference 
include  the  words  "Walnut  Hill"  and  "Wal- 
nut Creek,"  respectively,  but  are  entirely  dif- 
ferent in  appearance,  and  the  parties  to  the 
proceeding  join  in  the  request  for  dissolution. 
Held,  that  doubts,  if  any  exist,  should  be  re- 
solved in  favor  of  their  contentions.  The  Ull- 
man  Einstein  Company  v.  C.  H.  Graves  & 
Sons,  C.  D.  1906,  121  O.  G.  1978. 

747.  Questions  cannot  be  urged  on  appeal 
which  have  not  been  raised  in  the  motion  and 


TRADE  MARKS,  XXX,  (g). 


575 


passed  on  below  except  under  circumstances 
which  would  warrant  supervisory  action  being 
taken.  Larkin  Co.  v.  Pacific  Coast  Borax  Co., 
C.  D.  1908,  132  O.  G.  679. 

748.  The  question  of  the  right  of  an  appli- 
cant for  registration  of  a  trade-mark  to  de- 
mand an  interference  with  another  party  be- 
cause of  his  failure  for  more  than  two  years 
to  file  a  notice  of  opposition  to  the  registra- 
tion of  the  mark  of  such  party  is  a  question 
for  the  determination  of  the  examiner  of  in- 
terferences at  final  hearing  after  opportunity 
has  been  had  for  the  presentation  of  testimony 
and  is  not  a  proper  question  for  transmission 
to  the  examiner  of  trade-marks  on  a  motion 
to  dissolve.  Graham  Paper  Co.  v.  National 
Blank  Book  Co.,  C.  D.  1908,  133  O.  G.  1187. 

749.  Rule  48  of  the  trade-mark  rules  of 
practice  does  not  provide  for  the  filing  of 
motions,  and  a  motion  purporting  to  be  filed 
thereunder  submitting  a  motion  to  dissolve 
the  interference  and  requesting  its  transmis- 
sion to  the  examiner  of  trade-marks  may 
properly  be  dismissed.  The  William  Lea  & 
Sons  Company  v.  H.  C.  Cole  &  Company,  C. 
D.  1908,  137  O.  G.  1713. 

750.  The  facts  adduced  during  the  taking 
of  testimony  in  a  trade-mark  interference 
tending  to  show  a  misbranding  under  the  food 
and  drugs  act  by  the  opposing  party  does  not 
form  a  proper  basis  for  a  motion  to  dissolve. 
Id. 

751.  A  motion  to  dissolve  a  trade-mark  in- 
terference based  on  the  ground  that  the  labels 
introduced  during  the  taking  of  testimony  con- 
tain certain  deceptive  statements  should  be 
denied  transmission.  Falk  Tobacco  Company 
v.  Kinney  Tobacco  Company,  C.  D.  1909,  142 
O.   G.   .567. 

752.  Appeal  lies  to  the  commissioner  from 
the  decision  of  the  examiner  of  trade-marks 
on  a  motion  to  dissolve  alleging  no  interfer- 
ence in  fact.  Columbia  Drug  Company  v. 
The  Lester  H.  Greene  Company  v.  Jehu  R. 
Smith  v.  Scott  and  Bowne,  C.  D.  1910,  l.->2  O. 
G.  836. 

753.  Where  on  a  motion  to  dissolve  it  is 
urged  that  the  mark  sought  to  be  registered 
by  one  of  the  parties  is  not  in  fact  the  mark 
actually  used,  but  only  a  part  thereof,  Held, 
that  this  question  cannot  be  decided  on  a  mo- 
tion to  dissolve,  but  must  be  deferred  until 
final  hearing.    Id. 

754.  Where  the  examiner  of  trade-marks 
renders  a  decision  on  a  motion  to  dissolve  an 
interference  on  the  ground  of  non-interference 


in  fact,  appeal  can  be  taken  from  that  deci- 
sion only  upon  payment  of  the  fee  required 
by  Rule  69  of  the  Rules  Relating  to  Trade- 
Marks.  The  Seamless  Rubber  Company  v. 
The  Star  Rubber  Co.,  C.  D.  1910,  1.52  O.  G. 
9.57. 

755.  The  fact  that  in  C.'s  application  for 
registration  of  a  trade-mark  the  particular 
description  of  the  goods  is  given  as  "canned 
fruits  and  canned  vegetables"  Held,  to  con- 
stitute no  ground  for  dissolving  an  interfer- 
ence between  this  application  and  an  applica- 
tion for  the  registration  of  a  trade-mark  for 
"flavoring  extracts  and  canned  tomatoes,"  es- 
pecially as  the  labels  filed  by  C.  show  that 
the  mark  was  used  on  "canned  tomatoes." 
California  Fruit  Canners  Association  v.  Fos- 
ter, Calderara  &  Co.,  C.  D.  1911,  162  O.  G. 
.539. 

756.  Where  in  considering  a  motion  to  dis- 
solve an  interference  the  examiner  of  trade- 
marks holds  that  the  question  raised  is  not 
one  which  can  be  decided  on  such  a  motion, 
he  should  dismiss  the  motion  and  not  set  a 
limit  of  appeal.  Wm.  A.  Coombs  Milling  Co.  v. 
Barber  Milling  Co.,  C.  D.  1911,  163  O.  G.  729. 

757.  The  question  whether  there  has  been 
such  a  deceptive  use  of  the  mark  by  one  of 
the  parties  as  to  bar  his  right  to  registration 
is  not  one  to  be  determined  on  a  motion  for 
dissolution.     Id. 

758.  The  examiner  of  interferences  should 
take  cognizance  of  the  merits  of  motions  to 
dissolve  sufficiently  to  enable  him  to  refuse 
transmission  to  motions  which  are  wholly 
groundless.  Stollwerck  Bros..  Inc.  v.  Lucerna 
Anglo-Swiss  Milk  Chocolate  Co.  v.  Hoffmann, 
C.  D.  1911,  171  O.  G.  214. 

759.  A  motion  to  dissolve  an  interference 
on  the  ground  that  coffee  and  cocoa  are  goods 
of  different  descriptive  properties,  Held,  prop- 
erly refused  transmission  in  view  of  the  rul- 
ing of  the  court  of  appeals  of  the  District  of 
Columbia  in  the  case  of  Walter  Baker  &  Co., 
Ltd.  v.  Harrison  (138  O.  G.  770,  32  App.  D. 
C.  272).     Id. 

(g)  Evidence. 

760.  An  exhibit  consisting  of  an  opinion  of 
counsel  given  prior  to  the  proceeding  that  the 
mark  in  issue  would  not  infringe  a  certain 
registration  is  irrelevant  and  incompetent  and 
should  be  struck  from  the  record.  Worcester 
Brewing  Corporation  v.  Renter  &  Company, 
C.  D.  1906,  124  O.  G.  2534. 


576 


TRADE  MARKS,  XXX,   (h),    (i). 


761.  An  exhibit  of  a  state  registration  by 
the  applicants  which  included  the  word  now 
in  issue  and  a  statement  that  this  word  was 
not  essential  to  the  mark  there  registered  is 
proper  rebuttal  evidence  for  the  opposer  where 
the  applicants  asserted  the  mark  so  registered 
as  evidence  of  their  right  to  register  the  mark 
in  issue.    Id. 

762.  In  determining  the  question  of  prior- 
ity of  adoption  and  use  of  a  trade-mark  for 
bitters  made  from  certain  roots  and  barks  and 
bottled,  evidence  of  the  use  of  such  mark  on 
a  package  containing  a  mixture  of  ground 
roots  and  bark  with  directions  how  to  make 
the  bitters  by  steeping  them  in  Holland  gin 
may  be  properly  considered,  the  goods  being 
of  the  same  descriptive  properties.  *The 
Schuster  Co.  v.  Muller,  C.  D.  1907,  126  O. 
G.  2192. 

763.  The  appellants  took  no  testimony,  but 
contend  that  the  rights  of  the  respective  par- 
ties are  res  adjudicata  by  reason  of  a  decision 
of  the  appellate  court  of  Kentucky.  This  de- 
cision, however,  is  not  of  record  in  this  case. 
The  judgment  of  the  court  was  neither  plead- 
ed nor  proved,  and  no  certified  copy  of  the  de- 
cision has  been  placed  in  evidence.  A  differ- 
ent record  from  that  filed  in  this  proceeding 
was  before  the  court.  The  Casey-Swasey 
Company  v.  Rosenfield  Brothers  &  Company, 
C.  D.  1907,  126  O.  G.  2390. 

764.  Where  upon  motion  to  suppress  evi- 
dence on  the  ground  that  it  is  irrelevant  the 
examiner  of  interferences  postpones  consid- 
eration of  the  question  until  final  hearing,  his 
decision  will  not  be  reviewed  and  reversed 
upon  appeal  prior  to  final  hearing  except  in  a 
clear  case  of  abuse  of  discretion.  (Royce  v. 
Kempshall,  C.  D.  1905,  461,  119  O.  G.  338.) 
Greene,  Tweed  &  Co.  v.  Manufacturers'  Belt 
Hook  Co.,  C.  D.  1908,  132  O.  G.  680. 

765.  That  a  particular  brand  of  cards  was 
known  to  the  trade  as  "Stage"  cards  does  not 
prove  use  of  the  name  "Stage"  as  a  trade- 
mark to  indicate  origin  and  ownership.  ♦Unit- 
ed States  Playing  Card  Co.  v.  C.  M.  Clark 
Publishing  Co.,  C.  D.  1908,  132  O.  G.  681. 

766.  Evidence  considered  and  held  to  show 
that  the  ace  of  spades  bearing  a  conventional 
figure  of  Columbia  was  adopted,  used,  and 
advertised  as  a  trade-mark  for  playing-cards 
and  that  the  word  "Stage"  was  used  in  addi- 
tion thereto  merely  for  the  purpose  of  indi- 
cating style,  class,  and  grade.  (Manufactur- 
ing Co.  V.  Trainer,  C.  D.  1880,  464,  17  O.  G. 
1217,  101  U.  S.   51,  54;  Columbia  Mill  Co.  v. 


Alcorn,  C.  D.  1893,  672,  65  O.  G.  1916,  150  U. 
S.  460,  463;  Burton  v.  Stratton,  12  Fed.  Rep. 
676,  700.)     *Id. 

767.  In  an  interference  proceeding  relating 
to  a  trade-mark  for  toilet  powder  where  it 
clearly  appears  from  the  evidence  that  a  large 
number  of  cans  bearing  the  trade-mark  were 
made  and  delivered  to  the  junior  party  (a 
corporation)  prior  to  the  date  which  can  be 
accorded  to  the  senior  party  and  from  that 
time  on  cans  were  made  and  delivered  to  the 
junior  party  bearing  the  same  mark,  the  gen- 
eral testimony  of  an  officer  of  the  corporation 
that  these  cans  were  filled  with  powder  and 
sold  to  the  drug  trade  through  the  regular 
channels,  without  specifying  any  particular 
persons  or  firms  to  whom  it  was  sold,  in  con- 
nection with  the  testimony  of  a  witness  that 
he  saw  some  of  the  cans  filled  with  powder, 
is  sufficient  to  establish  priority  of  use  of 
the  mark  by  the  junior  party.  The  continu- 
ous purchase  of  cans  bearing  the  mark  is  not 
sufficient  alone  to  prove  actual  sales;  but  it  is 
such  a  strong  circumstance  that  very  little 
additional  proof  is  necessary.  *Johnson  & 
Johnson  v.  Whelan,  C.  D.  1909,  142  O.  G.  569. 

(h)  Final  Hearing. 

768.  Where  an  interference  involves  a  reg- 
istration and  an  application  for  registration, 
the  question  of  the  deceptive  use  of  the  mark 
by  the  registrant  is  one  that  can  be  raised  at 
final  hearing  in  the  interference.  (In  re  J. 
Fred  Wilcox  &  Co.,  162  O.  G.  539,  construed.) 
Wm.  A.  Coombs  Milling  Co.  v.  Barber  Mill- 
ing Co.,  C.   D.  1911,  165  O.  G.  729. 

(i)  Issue. 

769.  The  issue  in  a  trade-mark  interfer- 
ence must  comprise  the  esesntial  features  of 
the  mark  as  applied  to  the  same  class  of 
goods,  and  what  constitutes  the  essential  fea- 
tures is  not  to  be  decided  from  the  applicant's 
statement,  but  is  one  of  fact.  B.  A.  Corbin  & 
Son  Co.  v.  Miller,  Kohlhepp,  Giese  &  Co.,  C. 
D.   1902,  98   O.   G.    1485. 

770.  Where  the  issue  of  a  trade-mark  in- 
terference is  declared  to  be  for  "mixed 
paints,"  it  should  not  be  re-formed  so  as  to 
read  "ready-mixed  paints"  when  one  of  the 
parties  does  not  use  the  words  "ready-mixed 
paints"  to  define  the  goods  upon  which  the 
mark  is  used.  Lewis  and  Bros.  Company  v. 
Phoenix  Paint  and  Varnish  Company,  C.  D. 
1907,  131  O.  G.  361. 


TRADE  MARKS,  XXX,  (j),   (k). 


577 


771.  Where  the  testimony  clearly  established 
that  a  gun  embodying  the  issue  was  made  and 
tested,  shipped  to  the  government  proving- 
grounds,  there  tested,  adopted  by  the  govern- 
ment as  a  type,  returned  to  the  navy-yard,  and 
adopted  as  a  model  for  other  guns  made  by 
the  government,  Held,  that  this  testimony  es- 
tablishes a  reduction  to  practice  of  the  inven- 
tion in  issue,  although  the  inventor  was  the 
only  witness  who  was  present  at  the  tests. 
(For  Commissioners'  decision  see  162  O.  G. 
269.)  *Schneider  v.  Druggs,  C.  D.  1911,  163 
O.  G.  1000. 

(j)   Judgment  on  the  Record. 

772.  Where  motion  for  judgment  on  the 
record  is  denied  by  the  examiner  of  interfer- 
ences, Held,  that  there  is  no  appeal.  The 
question  presented  by  such  motion  may  be 
reviewed  on  appeal  from  the  final  judgment 
when  one  is  entered,  but  not  from  a  refusal 
to  enter  judgment.  The  Gem  Cutlery  Co.  v. 
Leach,  C.  D.  1905,  114  O.  G.  2089. 

773.  Where  one  party  to  a  trade-mark  in- 
terference moved  for  judgment  on  the  ground 
that  the  opposing  party  had  assigned  his  trade- 
mark and  was  no  longer  the  owner,  Held, 
that  the  motion  was  properly  denied.     Id. 

774.  The  assignment  of  a  trade-mark  does 
not  extinguish  the  right,  but  it  continues  in 
the  assignee,  who  is  the  successor  in  business, 
and  therefore  such  assignment  does  not  en- 
title the  opposing  party  in  the  interference  to 
judgment  as  the  real  owner  of  the  mark.    Id. 

(k)   Priority. 

775.  After  an  examination  of  the  record, 
Held,  that  the  Sleepy  Eye  Milling  Company 
being  the  first  to  adopt  and  use  the  trade- 
mark in  controversy  and  having  done  nothing 
of  which  this  office  can  take  cognizance  which 
would  justify  a  refusal  to  award  priority,  pri- 
ority should  be  awarded  to  it.  Sleepy  Eye 
Milling  Co.  v.  C.  F.  Blanke  Tea  &  Coffee  Co., 
C.  n.   1898,  85  O.  G.  1905. 

776.  As  the  proofs  do  not  show  beyond  a 
reasonable  doubt  that  Sherwood  was  the  first 
to  adopt  and  use  the  word  "Royal"  as  a  trade- 
mark for  salad-dressing,  the  decision  of  the 
e.\aminer  of  interferences  in  awarding  prior- 
ity to  him  is  reversed.  Sherwood  v.  Horton 
Cato  &  Co.,  C.  D.  1898,  84  O.  G.  2018. 

777.  In  an  interference  between  a  registrant 
and  an  applicant,  the  latter  being  the  last  to 
adopt  and  use  the  trade-mark  in  the  United 

37 


States,  although  having  adopted  and  used  it 
in  a  foreign  country  prior  to  the  adoption  and 
use  by  the  registrant  in  the  United  States, 
Held,  that  priority  of  adoption  and  use  must 
be  awarded  to  the  registrant  in  the  absence 
of  any  proof  of  fraud  on  his  part.  Leprince 
V   Her  &  Morris,  C.  D.  1900,  92  O.  G.  189. 

778.  I.  &  M.,  registrants,  filed  their  appli- 
cation on  June  2,  1885,  and  a  certificate  of  reg- 
istration was  issued  to  them  on  July  14,  1885. 
L.,  an  applicant  and  junior  party,  filed  his  ap- 
plication on  November  30,  1898,  and  proved 
adoption  and  use  of  the  mark  in  France  about 
January  1,  1880.  He  did  not  use  the  mark 
in  the  United  States  prior  to  June  2,  1885. 
Held,  that  I.  &  M.,  on  this  state  of  facts,  are 
entitled  to  an  award  of  priority.     Id. 

779.  Where  L.  insists  that  he  is  the  lawful 
owner  of  the  trade-mark  in  France,  and  that 
he  is  entitled,  under  the  treaty  relating  to 
trade-marks  existing  between  France  and  the 
United  States,  to  an  award  of  priority  and 
to  receive  the  same  privileges  in  this  country 
as  in  France,  Held,  that  he  is  entitled  to  no 
other  or  further  rights  because  he  is  a  citi- 
zen of  France  than  if  he  were  a  citizen  of  the 
United  States,  and  a  citizen  of  the  United 
States  is  not  entitled  to  avail  himself  of  for- 
eign adoption  and  use  over  another  party  who 
has  adopted  and  used  the  mark  in  this  coun- 
try.   Id. 

780.  Where  it  is  contended  in  a  trade-mark 
interference  that  one  party  before  filing  his 
application  transferred  the  business  and  mark 
to  a  third  party,  Held,  that  this  relates  to  own- 
ership and  has  nothing  to  do  with  priority. 
Sroufe  &  Company  v.  Crown  Distilleries  Com- 
pany, C.  D.  1901,  97  O.  G.  1836. 

781.  In  a  trade-mark  interference  the  party 
first  to  adopt  and  use  the  mark  is  entitled  to 
the  decision  on  priority,  leaving  the  question 
of  ownership  and  right  to  the  mark  for  ex 
parte  consideration  after  the  interference  is 
settled.  The  suggestion  that  some  third  party 
owns  the  mark  is  no  more  reason  for  decid- 
ing in  favor  of  one  party  than  in  favor  of  the 
other.    Id. 

782.  Where  the  issue  is  a  trade-mark  for 
spirituous  liquors  broadly  and  a  party  proves 
prior  use  upon  one  form  of  spirituous  liquor, 
Held,  that  he  is  entitled  to  the  decision  on 
priority.     Id. 

783.  Where  in  a  trade-mark  interference  it 
is  admitted  that  the  junior  party  was  the  first 
to  use  the  mark,  but  it  is  contended  that  in 
such  use  it  merely  acted  as  agent  in  a  par- 


578 


TRADE  MARKS,  XXX,    (k). 


ticular  locality  for  some  third  company,  Held, 
that  this  question  relates  to  the  ownership 
of  the  mark  and  not  to  priority.    Id. 

784.  The  question  of  priority  in  a  trade- 
mark interference  is  not  affected  in  any  way 
by  testimony  that  some  third  party  was  the 
first  to  use  the  mark.  Carey  v.  New  Home 
Sewing  Machine  Company,  C.  D.  1902,  101  O. 

■     448. 

785.  The  question  whether  some  third  party 
is  the  owner  of  the  mark  will  not  be  consid- 
ered in  the  interference,  but  is  an  ex  parte 
matter  for  subsequent  determination.     Id. 

786.  Where  it  does  not  appear  from  the 
testimony  that  the  junior  party  has  used  the 
trade-mark  in  issue  to  actually  identify  goods 
either  as  to  origin  or  ownership,  though  he 
may  have  used  it  for  other  purposes,  he  has 
not  acquired  such  a  right  in  the  mark  as 
the  patent  office  can  take  cognizance  of  under 
its  jurisdiction  relating  to  the  registration  of 
trade-marks,  and  priority  must  be  given  to 
the  senior  party.  Hartshorn  v.  Philbrick,  C. 
D.   1902,   101  O.  G.  2077. 

787.  Where  it  is  admitted  that  the  senior 
party  was  a  manufacturer  of  sewing-machines 
bearing  several  trade-marks,  one  of  which 
is  the  mark  in  issue,  continuously  since  a  cer- 
tain date,  proof  to  the  eflfect  that  the  junior 
party  has  some  interest  in  the  machines  bear- 
ing the  mark  in  issue  is  not  sufficient  to  estab- 
lish the  fact  that  the  use  of  the  mark  resulted 
from  the  adoption  of  it  by  the  junior  party. 
Lea  V.  New  Home  Sewing  Machine  Company, 
C.  D.  1903,  107  0.  G.  2529. 

788.  Held,  that  V.  B.  &  Co.  adopted  the 
mark  for  gin  before  B.  &  N.  adopted  it  for 
geneva,  and  therefore  priority  awarded  to  V. 
B.  &  Co.  Vanden  Bergh  &  Company  v.  Blank- 
enheym  &  Nolet,  C.  D.  1904,  108  O.  G.  563. 

789.  Held,  that  registration  is,  under  the 
law,  prima  facie  evidence  that  the  registrant 
was  the  owner  of  the  mark  at  its  date;  but  it 
cannot  be  taken  as  establishing  any  earlier 
date  of  use  of  the  mark  for  him.  Canepa  v. 
Boehm,  C.  D.  1905,  117  O.  G.  2089. 

790.  Where  one  party  took  no  testimony, 
but  rested  upon  the  prima  facie  case  establish- 
ed by  the  registration  of  the  trade-mark  in 
issue,  and  his  opponent  produced  several  wit- 
nesses testifying  to  prior  use  of  the  mark  by 
him.  Held,  that  the  prima  facie  case  is  over- 
come and  that  the  opponent  is  entitled  to  reg- 
istration.    Id. 

791.  The  registration  of  a  trade-mark  is 
prima  facie  evidence  of  ownership,  and,  there- 


fore, the  burden  of  proof  is  upon  the  op- 
posing applicant  in  an  interference.  Giles 
Remedy  Co.  v.  Giles,  C.  D.  1905,  117  O.  G. 
2034. 

792.  .^n  applicant  for  the  registration  of  a 
trade-mark  in  interference  with  a  registrant 
cannot  prevail  by  showing  that  the  registrant 
has  parted  with  the  ownership  of  the  mark, 
but  only  by  showing  that  he,  the  applicant,  is 
the  owner.     Id. 

793.  Where  the  registrant  shows  that  he 
was  the  first  to  adopt  and  use  the  trade-mark 
and  the  opposing  applicant  for  registration 
fails  to  show  that  he  derived  title  from  the 
registrant,  Held,  that  the  decision  must  be  in 
favor  of  the  registrant.     Id. 

794.  Where  it  appears  that  Sanford  Giles 
first  adopted  and  used  the  trade-mark  and 
secured  registration  thereof  and  subsequently 
the  mark  was  used  by  him  and  by  Daniel 
Giles  at  a  single  place  of  business  under  the 
name  of  the  Giles  Remedy  Company  until  a 
disagreement  between  them  which  resulted  in 
their  separation.  Held,  that  Sanford  Giles 
was  the  owner  of  the  mark  and  that  judgment 
of  priority  must  be  in  his  favor.  *Giles  Rem- 
edy Co.  v.  Giles,  C.  D.  1906,   120  O.  G.   1826. 

795.  Where  a  trade-mark  registrant  is 
shown  to  have  been  the  first  to  adopt  and  use 
the  mark  and  to  have  been  the  owner  at  the 
time  he  secured  the  registration,  he  is  not  to 
be  defeated  in  an  interference  by  showing  that 
his  opponent  subsequently  acquired  title  to 
the  mark  from  him.  Such  showing  might  in 
appropriate  proceedings  justify  compelling  the 
transfer  of  the  certificate  of  registration  ;  but 
it  does  not  justify  the  holding  that  the  later 
applicant  was  the  first  to  adopt  and  use  the 
mark.     *Id. 

796.  Whether  the  party  named  in  an  ap- 
plication for  registration  is  the  real  owner  of 
the  rights  represented  by  that  application  will 
not  be  considered  in  connection  with  priority, 
as  the  question  is  one  for  ex  parte  determina- 
tion by  the  examiner  of  trade-marks  after  the 
question  of  priority  has  been  finally  settled. 
Conklin  &  Son  v.  The  Albert  Dickinson  Co., 
C.  D.  1906,  122  O.  G.  1398. 

797.  Parties  are  not  entitled  to  have  con- 
sidered as  a  matter  of  right  in  connection 
with  the  question  of  priority  the  registrabil- 
ity of  the  mark  or  the  conformity  of  a  mark 
with  the  limitations  of  the  issue.  Rice  & 
Rochester  v.  Fishel,  Nessler  &  Co.,  C.  D.  1906, 
123  O.  G.  997. 


TRADE  MARKS,  XXX,  (1). 


579 


798.  Held,  that  in  determining  the  question 
of  priority  of  adoption  and  use  of  a  trade- 
mark a  verbal  transfer  of  trade-mark  rights 
should  be  regarded  as  effective  and  valid  and 
capable  of  proof  by  testimony  to  the  fact  or 
to  other  facts  which  support  an  inference  of 
sufficient  strength  that  such  transfer  was 
made.  The  Wolf  Brothers  and  Company  v. 
Hamilton  Brown  Shoe  Company,  C.  D.  1906, 
125  O.  G.  667. 

799.  Where  the  claim  of  Bigbie  Brothers 
&  Co.  to  ownership  of  the  mark  of  the  issue 
through  transfer  from  Joseph  Lawson  &  Son 
in  1887  is  questioned,  but  neither  of  the  other 
parties  to  the  interference  claims  title  from 
the  Lawsons,  Held,  that  said  other  parties' 
claims  to  registration  are  defeated  by  the  use 
of  the  mark  in  issue  by  Bigbie  Brothers  & 
Co.  in  1887,  and  subsequently,  irrespective  of 
whether  Bigbie  Brothers  &  Co.'s  use  was 
based  upon  ownership,  and  that  Lawson's 
right  to  the  mark  after  the  transfer  in  1887 
is  only  of  consequence,  therefore,  in  determin- 
ing whether  Bigbie  Brothers  &  Co.  shall  be 
denied  registration,  notwithstanding  their  po- 
sition as  the  first  to  adopt  and  use  the  mark 
among  those  before  the  office  seeking  regis- 
tration. Bigbie  Brothers  &  Co.  v.  Bluthen- 
thal  &  Bickart  v.  The  J.  &  H.  Butler  Company, 
C.   D.  1907,  126  O.  G.  1063. 

800.  Where  Rosenbush  in  his  application  al- 
leges adoption  in  1891,  but  the  earliest  date 
mentioned  in  his  testimony  is  the  "spring  of 
1895,"  and  his  testimony  is  only  supported  by 
that  of  a  former  partner,  who  fixes  the  date 
as  "about  a  year  and  a  half"  after  August  1, 
1894,  when  the  firm  commenced  business. 
Held,  insufficient  to  prevail  over  The  Rose 
Shoe  Manufacturing  Company,  which  presents 
the  testimony  of  several  credible  witnesses 
who  clearly  trace  the  use  of  the  trade-mark 
by  The  Rose  Shoe  Manufacturing  Company 
and  its  predecessors  in  business  from  the  year 
1894.  *The  Rose  Shoe  Manufacturing  Com- 
pany V.  A.  A.  Rosenbush  &  Co.,  C.  D.  1907, 
127  O.  G.  394. 

801.  Where  several  successive  firms  manu- 
facturing ladies'  shoes  are  shown  to  have  oc- 
cupied the  same  factory,  it  is  reasonable  to 
suppose  that  once  having  adopted  a  trade- 
name they  would  continue  its  use  notwith- 
standing a  reorganization  of  the  firm.    *Id. 

802.  The  evidence  reviewed  and  Held,  to  es- 
tablish that  M.  &  Co.  were  the  first  to  adopt 
and   use    the    word    "Eureka"    as   trade-mark 


for  press-boards.  Case  Brothers  v.  E.  W. 
Murphey  &  Company,  C.  D.  1908,  136  O.  G. 
225. 

803.  In  a  trade-mark  interference  which  in- 
volves only  applications  for  registration  if  no 
testimony  is  taken  priority  of  adoption  and 
use  will  be  rendered  in  favor  of  the  senior 
party.  Lowden  v.  Allen  Brothers  Company, 
C.  D.  1908,  137  O.  G.  979. 

804.  Where  A.  decided  to  adopt  a  mark  in 
November,  1905,  but  did  not  ship  from  the 
factory  goods  bearing  this  mark  until  June  23, 
1906,  and  B.  had  shipped  from  his  factory  to 
purchasers  goods  bearing  the  same  mark  on 
June  4,  1906,  Held,  that  priority  was  properly 
awarded  to  B.  *lllinois  Match  Company  v. 
Broomall,  C.  D.  1910,  153  O.  G.  548. 

805.  Where  the  mark  in  interference  is  a 
triangle  inclosing  the  letters  "P.  P.  P."  and 
an  antedating  registration  to  one  of  the  par- 
ties is  in  evidence,  consisting  of  a  triangle 
inclosing  the  letters  "P.  P.  P."  and  the  words 
"Scott's  Emulsion,"  Held,  in  the  absence  of 
other  testimony,  that  the  evidence  is  sufficient 
to  establish  priority  of  adoption  and  use  for 
that  party,  inasmuch  as  the  marks  differ  only 
by  the  presence  of  the  descriptive  words 
"Scott's  Emulsion"  in  one,  and  are  therefore 
the  same  in  substance.  The  Lester  H.  Greene 
Company  v.  Scott  &  Bowne,  C.  D.  1910,  159 
O.  G.  242. 

80G.  "If  it  be  once  granted  that  the  first  to 
adopt  and  use  a  trade-mark  is  the  owner 
thereof,  a  second  party  who  adopts  a  trade- 
mark so  nearly  identical  therewith  as  to  be 
likely  to  cause  confusion  in  the  mind  of  the 
public  cannot  acquire  a  right  to  register  that 
trade-mark  to  the  exclusion  of  the  first  to 
adopt  the  mark."     Id. 

807.  Held,  that  the  fact  that  an  applicant 
may  use  upon  his  label  or  wrapper  other 
trade-marks  than  the  one  he  is  seeking  to 
register  is  immaterial  to  the  question  of  pri- 
ority, and  that  his  failure  to  file  the  complete 
wrapper  or  the  failure  of  the  office  to  require 
it  constitutes  no  error,  as  it  is  well  established 
that  a  party  may  use  several  trade-marks  upon 
a  single  article  if  he  so  desires.    Id. 

(1)  Reopening. 

808.  After  a  decision  of  the  commissioner 
refusing  to  register  a  trade-mark  has  been 
affirmed  by  the  court  of  appeals  of  the  Dis- 
trict of  Columbia  an  amendment  will  not  be 


580 


TRADE  MARKS,  XXX,  (m),   (n). 


admitted  and  the  case  reopened  for  further 
prosecution.  Ex  parte  Herbst,  C.  D.  1909,  146 
O.  G.  957. 

(m)  Suspension. 

809.  The  decision  of  the  examiner  of  inter- 
ferences refusing  to  suspend  proceedings 
pending  a  determination  of  contempt  pro- 
ceedings brought  in  a  United  States  circuit 
court  for  faihire  of  witnesses  to  appear  and 
testify  in  response  to  subpoena  will  not  be 
disturbed  where  it  does  not  appear  that  great 
hardship  will  otherwise  ensue.  Outcault  v. 
The  New  York  Herald  Company,  C.  D.  1907, 
126  O.  G.  757. 

810.  Where  after  the  filing  of  a  notice  of 
opposition  to  the  registration  of  a  trade-mark 
by  the  owner  of  a  registered  trade-mark  an 
interference  is  declared  between  the  registra- 
tion of  the  opposer  and  the  application,  Held, 
that  the  interference  should  not  be  suspended 
pending  the  final  determination  of  the  opposi- 
tion except  by  consent  of  the  parties.  Wm. 
A.  Coombs  Milling  Co.  v.  Barber  Milling  Co., 
C.  D.  1911,  163  O.  G.  727. 

(n)   Testimony. 

811.  A  party  is  bound  in  interference  pro- 
ceedings by  the  statement  in  a  trade-mark 
application  as  to  the  date  of  adoption  and 
use  and  cannot  under  this  statement  prove 
adoption  and  use  prior  to  the  date  set  up 
therein  either  by  himself  or  by  others  from 
•whom  he  may  have  derived  title.  Empire 
Cycle  Company  v.  Monarch  Cycle  Manufac- 
turing Company  v.  Meacham  Arms  Company, 
C.  D.  1898,  82  O.  G.  1689. 

812.  Where  the  Monarch  Company  failed 
to  take  any  testimony  during  the  time  set  for 
taking  testimony  and  thereafter  the  Meacham 
Company  during  its  own  time  for  taking 
testimony  introduced  evidence  to  prove 
the  right  of  the  Monarch  Company  to  the 
trade-mark.  Held,  that  since  such  testimony 
did  not  tend  to  prove  directly  or  indirectly 
the  case  of  the  Meacham  Company  it  was 
not  proper  rebuttal  testimony  for  that  com- 
pany and  could  not  be  considered  in  so  far 
as  the  case  of  the  Monarch  Company  was 
concerned.     Id. 

813.  Where  a  party's  time  for  taking  testi- 
mony has  expired  and  he  no  longer  has  the 
right  to  introduce  testimony  to  prove  his  own 
case.  Held,  that  another  party  to  the  interfer- 
ence should  not  be  allowed  to  introduce  for 


him  the  testimony  which  he  would  not  be 
permitted  to  introduce  on  his  own  behalf.    Id. 

814.  Where  the  requirements  of  the  rules 
as  to  the  facts  which  should  be  stated  in  the 
notice  of  taking  testimony  were  not  complied 
with.  Held,  that  the  notice  was  not  sufficient, 
and  the  testimony  must  be  disregarded.    Id. 

816.  Where  a  registrant  sets  up  in  his 
statement  that  he  has  used  a  trade-mark  from 
a  certain  date  and  the  testimony  offered  in 
an  interference  proceeding  shows  an  earlier 
date.  Held,  that  such  testimony  may  be  con- 
sidered and  such  weight  given  to  it  as  may 
he  proper  under  the  circumstances  of  the  case. 
Sherwood  v.  Horton,  Cato  &  Company,  C.  D. 
1898,    84    O.    G.    2018. 

816.  Where  a  certain  date  of  adoption  and 
use  of  a  trade-mark  is  set  up  in  the  statement 
and  declaration  filed  with  an  application  for 
registration  and  the  testimony  offered  in  the 
interference  proceeding  shows  an  earlier  date. 
Held,  that  such  testimony  may  be  considered 
and  such  weight  given  to  it  as  may  be  proper 
under  the  circumstances  of  the  case.  Broder- 
ick  and  Bascom  Rope  Company  v.  A.  Leschen 
and  Sons  Rope  Company,  D.  D.  1902,  100  O. 
G.  .3012. 

817.  A  motion  during  the  progress  of  a 
trade-mark  interference  to  amend  the  state- 
ment in  the  application  as  to  the  date  of  adop- 
tion and  use  is  unnecessary  and  will  be  de- 
nied. Amendment  may  be  made  after  the  con- 
clusion of  the  interference.     Id. 

818.  A  party  to  a  trade-mark  interference 
is  not  restricted  to  the  date  of  adoption  and 
use  set  up  in  the  application  or  registered 
mark  directly  included  in  the  interference,  but 
he  may  introduce  testimony  to  show  a  date  of 
adoption  and  use  prior  thereto.  Sibley  Soap 
Co.  v.  Lambert  Pharmacal  Co.,  C.  D.  1903,  103 
O.  G.  2177. 

819.  Where  one  party  to  an  interference 
calls  as  his  witness  the  opposing  party.  Held, 
that  he  is  bound  by  the  testimony  of  the  wit- 
ness unless  it  is  overcome  by  stronger  evi- 
dence to  the  contrary.  The  rule  that  the  un- 
suported  testimony  of  a  party  is  insufficient 
does  not  apply.  Goldsmith  v.  United  Shirt 
Vest  Co.,  C.  D.  1905,  119  O.  G.  1261. 

820.  Where  the  senior  party  takes  no  testi- 
mony, the  junior  party  cannot  take  testimony 
in  the  time  allotted  to  him  for  rebuttal,  since 
there  is  nothing  to  rebut.  Testimony  so  taken 
in  this  case  for  the  purpose  of  strengthening 
the  direct  proofs  refused   consideration.     Id. 


TRADE   MARKS,   XXX,    (n). 


581 


821.  Where  a  party  alleges  in  his  applica- 
tion an  adoption  of  his  mark  in  1899  and  in 
his  testimony  claims  adoption  late  in  1894  or 
early  in  1895,  Held,  that  the  discrepancy  is 
suspicious  and  calls  for  a  close  scrutiny  of 
the  testimony  on  his  behalf  seeking  to  prove 
the  earlier  date.  Rozenzweig  v.  Forbes,  C.  D. 
1906,  121  O.  G.  2667. 

822.  Where  in  support  of  a  motion  for  leave 
to  take  surrebuttal  testimony  surprise  is  al- 
leged but  the  testimony  which  is  alleged  to 
have  caused  surprise  relates  to  facts  which 
could  well  have  been  investigated  and  disposed 
of  by  the  party  bringing  the  motion  in  the 
original  preparation  of  his  case  or  when  tak- 
ing his  testimony-in-chief.  Held,  that  surre- 
buttal testimony  will  not  be  authorized  merely 
that  a  party  may  strengthen  his  case  upon 
finding  that  the  case  made  out  against  him  in 
his  opponent's  rebuttal  testimony  is  stronger 
than  he  anticipated.  Herbst  v.  Records  and 
Goldsborough  v.  The  Rothenberg  Company,  C. 
D.  1906,  123  O.  G.  2311. 

823.  Where  a  party  wishes  to  take  surre- 
buttal testimony.  Held,  that  so  far  as  the  spe- 
cific allegations  of  fact  appearing  in  the  re- 
buttal testimony  of  the  opposite  party  may  be 
false  there  could  have  been  no  anticipation, 
and  surrebuttal  testimony  to  contradict  the 
same  should  be  authorized  upon  a  sufficient 
showing;  but  this  showing  should  be  clear 
and  specific  in  order  that  it  may  be  determined 
whether  the  proposed  additional  testimony  is 
of  the  character  which  may  properly  be  ad- 
mitted.   Id. 

824.  Held,  that  in  interference  proceedings 
instituted  under  the  Trade-Mark  Act  of  Feb- 
ruary 20,  1905,  testimony  relative  to  the  rights 
of  parties  not  involved  in  the  interference 
may  be  admitted  and  considered  for  the  pur- 
pose of  determining  whether  either  of  the 
parties  to  the  interference  is  entitled  to  reg- 
istration. Golden  &  Company  v.  Heitz  & 
Company.  D.  C.  1906,  125  O.  G.  989. 

825.  Where  the  testimony  presented  in  be- 
half of  both  the  opposing  parties  is  subject  to 
uncertainty,  the  testimony  of  Rosenbush  con- 
cerning the  adoption  of  the  mark  in  1895,  or 
1896,  which  is  supported  by  the  testimony  of 
his  former  partner,  Levie,  is  entitled  to  as 
great  weight  as  the  testimony  of  a  single  dis- 
interested witness  testifying  from  his  unaided 
memory  concerning  the  adoption  of  the  mark 
by  The  Rose  Shoe  Manufacturing  Company 
nearly  eight  years  after  the  event.  A.  A. 
Rosenbush    &    Company    v.    The    Rose    Shoe 


Manufacturing  Company,  C.  D.  1907,  127  O.  G. 
391. 

826.  Rebuttal  testimony  taken  for  the  pur- 
pose of  establishing  facts  not  alleged  in  the 
notice  of  opposition  or  which  should  have 
been  offered  as  part  of  the  testimony-in-chief 
is  improper  rebuttal,  and  a  motion  to  sup- 
press the  same  will  be  granted.  Underwood 
Typewriter  Company  v.  A.  B.  Dick  Company, 
C.  D.  1907,  130  O.  G.  1690. 

827.  Where  the  motion  to  suppress  was 
granted  after  the  testimony  was  printed,  it 
will  be  a  sufficient  compliance  with  the  ruling 
in  Marconi  v.  Shoemaker  v.  Fessenden  (C.  D. 

1906,  149;  121  O.  G.  2664)  for  the  docket 
clerk  to  indicate  in  the  usual  manner  in  the 
printed  record  the  matter  which  has  been  ex- 
punged.    Id. 

828.  The  fact  that  the  witnesses  testifying  in 
behalf  of  a  corporation  were  officers  of  the 
corporation  furnishes  no  sufficient  reason  for 
disregarding  their  depositions.  Bay  State 
Belting  Co.  v.  Kelton-Bruce  Mfg.  Co.,  C.  D. 

1907,  131   O.  G.  2146. 

829.  An  objection  that  "the  proceedings 
about  to  be  taken  are  contrary  to  the  statutes 
and  the  rules  in  these  cases  made  and  pro- 
vided," Held,  too  indefinite  to  warrant  sup- 
pressing testimony  where  no  other  notice  of 
the  real  ground  of  objection  was  given  prior 
to  the  hearing  on  the  motion.  Deitsch 
Brothers  v.  Loonen,  C.  D.  1907,  131  O.  G.  2146. 

830.  The  printing  or  reproduction  of  paper 
exhibits  will  not  be  required,  since  if  the  case 
should  be  appealed  to  the  Court  of  Appeals 
of  the  District  of  Columbia  these  exhibits 
can  be  sent  to  the  court  as  physical  exhibits. 
Id. 

831.  An  appeal  from  a  decision  of  the  Ex- 
aminer of  Interferences  to  which  no  limit  of 
appeal  was  set  will  not  be  dismissed  because 
the  appellant  did  not  first  ask  leave  of  the 
Commissioner  to  file  such  appeal.     Id. 

832.  Appeals  will  not  hereafter  be  allowed 
from  a  decision  of  the  Examiner  of  Interfer- 
ences denying  a  motion  to  strike  out  testi- 
mony or  a  motion  to  require  the  printing  of 
exhibits  prior  to  the  appeal  from  the  decision 
on  the  merits  rendered  after  final  hearing.    Id. 

833.  Testimony  tending  to  show  use  of  the 
mark  in  issue  by  parties  other  than  the  par- 
ties to  the  controversy.  Held,  to  be  improper 
rebuttal.  Whittemore  Bros.  &  Co.  v.  Hawtha- 
way  &  Sons,  Inc.,  C.  D.  1908,  132  O.  G.  233. 

834.  The  fact  that  the  opposer  built  ma- 
chines to  produce  shredded  whole  wheat  and 


582 


TRADE  MARKS,  XXXI,  (a),  (b). 


actually  produced  and  sold  such  an  article  is 
sufficient  corroboration  of  his  testimony  that 
the  boxes  in  which  the  product  was  packed 
-were  marked  "Shredded  Whole  Wheat."  The 
Natural  Food  Co.  v.  Williams,  C.  D.  1908, 
133  O.  G.  233. 

835.  In  a  trade-mark  interference  involv- 
ing the  word  "Jewel"  for  stoves  the  court  ob- 
served that,  had  the  testimony  established 
with  certainty  the  manufacture  of  stoves 
bearing  the  mark  in  question,  the  sales  of 
such  stoves  would  have  been  assumed.  ♦Amer- 
ican Stove  Co.  V.  Detroit  Stove  Co.,  C.  D. 
1908,  IM  O.   G.   2245. 

836.  The  indefinite  oral  testimony  given 
more  than  thirty  years  after  the  events  to 
which  the  testimony  relates,  will  not  be  ac- 
cepted as  sufficient  where  it  appears  that  rec- 
ords were  in  existence  which  would  have 
proved  the  facts  desired  to  be  proved  beyond 
peradventure,  had  they  been  consulted.     Id. 

837.  Where  a  witness  testifies  that  the  firm 
with  which  he  was  connected  purchased  dur- 
ing a  period  of  two  years  labels  and  boxes 
having  a  certain  trade-mark  thereon.  Held, 
that  it  would  be  unreasonable  to  assume  that 
they  were  not  used.  *Wm.  Wrigley,  Jr.,  Co.  v. 
Norris,  C.  D.  1910,  152  O.  G.  488. 

838.  Where  an  application  for  registration 
of  a  trade-mark  is  regular  in  form,  the  ap- 
plicant is,  prima  facie,  entitled  to  registration; 
but  where,  in  an  opposition  proceeding,  testi- 
mony has  been  introduced  overcoming  the 
prima  facie  case  it  is  incumbent  upon  the  ap- 
plicant to  establish  his  right  to  registration  by 
a  fair  preponderance  of  testimony.     Id. 

XXXI.  Interference  in  Fact. 
(See  Trade-M.\rks — Similarity  of  Marks.) 

(a)  7)1   General. 

839.  The  question  of  interference  in  fact 
should  be  raised  before  the  Examiner  of  In- 
terferences in  accordance  with  the  require- 
ments of  Rule  49  of  the  Trade-Mark  Rules 
within  the  time  stated  therein.  It  will  not  be 
determined  on  appeal  when  not  properly 
raised  below.  *].  C.  Somers  Co.  v.  Neuman, 
executor  of  J.  F.  Horn,  C.  D.  1908,  134  O. 
G.  2031. 

(b)  Marks   Held  Similar. 

840.  Held,  that  there  is  an  interference  in 
fact   between    the   mark    "National"   and    the 


mark  "New  National,"  since  the  prefix  "New" 
would  merely  convey  the  idea  that  it  was  an 
improved  model  or  new  machine  put  on  the 
market  by  the  same  company.  Carey  v.  New 
Home  Sewing  Machine  Company,  C.  D.  1901, 
96  O.  G.  1429. 

841.  Where  one  party  states  that  it  uses 
an  orange-colored  strand  in  the  rope  and  the 
other  party  uses  a  red  strand,  but  each  de- 
scribes the  essential  feature  of  his  mark  as 
consisting  broadly  in  a  "streak  of  distinctive 
color  produced  in  or  applied  to  a  wire  rope," 
Held,  that  there  is  an  interference  in  fact. 
Broderick  &  Bascom  Rope  Company  v.  Lesch- 
en  &  Sons  Rope  Company,  C.  D.  1901,  96  O. 
G.   1647. 

842.  Where  one  party  uses  the  picture  of 
an  owl  and  the  words  "We  Never  Sleep"  as 
a  trade-mark  on  ladies'  and  children's  shoes 
and  the  other  uses  a  picture  of  the  head  and 
upper  part  of  an  owl  with  the  words  "Owl 
Shoe"  as  a  trade-mark  for  men's  and  boys' 
shoes.  Held,  that  the  essential  feature  of  each 
is  the  owl  and  that  there  is  an  interference  in 
fact.  B.  A.  Corbin  &  Son  Company  v.  Miller, 
Kohlhepp,  Giese  &  Co.,  C.  D.  1902,  98  O.  G. 
I48r.. 

843.  Where  one  party's  trade-mark  applica- 
tion includes  the  word  "Terrabout"  and  the 
picture  of  two  tigers  and  the  other  party's  in- 
cludes the  same  picture  and  the  word  "Tiger," 
Held,  that  the  picture  is  the  essential  feature 
and  that  there  is  an  interference  in  fact. 
Morris  v.  J.  M.  Robinson,  Norton  and  Com- 
pany, C.   D.  1902,  101   O.  G.  2.-.70. 

844.  Where  the  two  marks  of  the  parties 
are  such  that  if  both  were  used  in  trade  by 
different  parties  on  the  same  class  of  goods 
the  public  would  be  confused,  Held,  that  there 
is  an  interference  in  fact.     Id. 

845.  There  is  an  interference  in  fact  be- 
tween the  words  "Charter  Oak,"  "Old  Char- 
ter," and  "Royal  Charter,"  used  as  trade- 
marks upon  the  same  class  of  goods.  Wright 
&  Taylor  v.  Blumenthall  &  Bickhart  v.  Mayer, 
Sons  &  Company  v.  Cushman  &  Company,  C. 
D.  190.'),   119  O.  G.  2234. 

846.  The  marks  "Crystal  Lake,"  "Crystal 
Run,"  "Crystal  Glen,"  and  "Crystal  Spring" 
for  whisky  are  so  similar  as  to  leave  no  room 
for  doubt  that  they  are  likely  to  deceive  pur- 
chasers, and  an  interference  including  them 
should  not  be  dissolved.  E.r  parte  Thayer, 
C.  D.  1906,  122  O.  G.  1724. 

847.  The  words  "Silveroid"  and  "Silver- 
ode"  are  so  similar  that  an  interference  based 


TRADE  MARKS,  XXXI,   (c). 


583 


thereon  should  continue,  notwithstanding  affi- 
davits alleging  that  no  confusion  has  resulted 
from  the  use  of  both  marks.  Philadelphia 
Watch  Case  Co.  v.  The  Dueber  Watch  Case 
Manufacturing  Company,  et  al.,  C.  D.  1906, 
122  O.  G.  1725. 

848.  Held,  that  the  words  "Mill  Springs," 
"Mill  Stream,"  "Mill  View,"  and  "Mill  Brook" 
as  trade-marks  for  whisky  interfere.  The  D. 
Kelly  Company  v.  The  Theobald  &  Son  Co. 
et  al.,  C.  D.  1906,  122  O.  G.  3011 

849.  The  words  "Kroupol,"  "Croupine," 
"Crouplene,"  and  "Croupaline"  so  closely  re- 
semble each  other,  especially  in  sound,  as  to 
be  likely  to  cause  confusion  or  mistake  in  the 
mind  of  the  public  or  to  deceive  purchasers. 
The  Smoot  Drug  Company  v.  Pittsburg  Phar- 
macal  Company  v.  Gertzen  v.  Griswold,  C.  D. 
1906,   12.i    O.   G.   2767. 

850.  Where  the  registrant's  mark  comprised 
the  picture  of  the  head  of  a  bull  and  the 
words  "Doherty's  Short  Horn,"  and  the  ap- 
phcant's  mark  presented  for  registration  con- 
sisted only  of  a  full-length  picture  of  a  bull, 
although  the  words  "Old  Durham  Rye"  ap- 
pear on  the  label,  Held,  that  inasmuch  as  it  is 
probable  that  the  goods  of  both  parties  would 
be  known  as  "bull"  whisky  interference  in  fact 
existed.  (Coleman  v.  Crump,  70  N.  Y.  573, 
580,  cited.)  The  Ellison-Harvey  Co.  v.  Mon- 
arch, C.   D.   1907,  128  O.  G.  2530. 

851.  Where  one  of  the  interfering  marks 
consists  of  a  composite  mark  which  includes 
the  mark  claimed  by  the  other  party  and  the 
question  of  interference  in  fact  is  not  free 
from  doubt,  the  interference  should  not  be 
dissolved,  since  the  testimony  may  throw  ad- 
ditional light  upon  this  question.  Tilly  v. 
Holland  Medicine  Company,  C.  D.  1907,  129 
O.  G.  1268. 

852.  The  question  of  interference  in  fact 
will  not  be  considered  upon  an  appeal  on  pri- 
ority. Home  v.  Somers  &  Company,  C.  D. 
1907,  129  O.  G.  1609. 

853.  In  determining  the  question  of  inter- 
ference in  fact  between  two  trade-marks 
which  are  presented  for  registration  only  the 
marks  disclosed  in  the  applications  of  the  re- 
spective parties  are  to  be  considered.  Planten 
v.  Canton  Pharmacy  Company,  C.  D.  1907, 
130  O.  G.  1484. 

854.  Held,  that  interference  in  fact  exists 
between  the  words  "Black  Caps"  written  in 
script  on  a  black  rectangular  background  and 
a   mark   comprising   the   words   "Black    Cap- 


sules" printed  in   roman   letters  on  a  similar 
background.     Id. 

855.  An  interference  in  fact  exists  between 
the  words  "Boraxine"  and  "Boraxaid,"  since 
they  look  alike  and  sound  alike.  Larkin  Com- 
pany V.  Pacific  Coast  Borax  Company,  C.  D. 
1908,    122    O.   G.   679. 

856.  An  interference  in  fact  exists  between 
the  marks  "F  F  F"  and  "F  F  F  G,"  since 
there  is  not  enough  difference  between  the 
two  marks  to  prevent  the  ordinary  buyer  from 
being  deceived.  *The  William  Lea  &  Sons 
Company  v.  H.  C.  Cole  &  Company,  C.  D. 
1908,  135  O.  G.  893. 

857.  Held,  that  a  trade-mark  consisting  of  a 
six-pointed  star  with  the  letters  "G  E"  in- 
scribed in  monogram  in  the  center  so  nearly 
resembles  the  trade-mark  consisting  of  a  six- 
pointed  star  surrounded  by  two  circles,  hav- 
ing inscribed  between  the  inner  and  outer  cir- 
cles the  words  "The  Celebrated  Star  Lager 
Beer,"  as  to  cause  confusion  in  the  mind  of 
the  public  and  deceive  purchasers.  *Ehret  v. 
Star  Brewery  Company,  C.  D.  1908,  136  O.  G. 
1533. 

858.  There  is  conflict  between  a  mark  con- 
sisting of  the  word  "Quaker"  with  the  picture 
of  a  woman  wearing  a  cap  and  apron  and  car- 
rying a  tray  with  a  cup  on  it  and  a  mark 
consisting  of  the  picture  of  a  woman  wearing 
a  cap  and  apron  of  the  same  style  and  carry- 
ing a  tray  with  cups  upon  it  which  may  be 
at  once  recognized  as  that  of  a  Quaker  lady. 
♦Walter  Baker  &  Company,  Limited  v.  Har- 
rison,  C.   D.   1909,  138  O.  G.   770. 

859.  Held,  that  an  interference  in  fact  ex- 
ists between  the  words  "Arkoma"  and  "Ar- 
mona"  used  as  trade-marks  for  goods  of  the 
same  descriptive  properties.  California  Fruit 
Canners  Association  v.  Foster,  Caldarug  & 
Co.,  C.  D.  1911,  162  O.  G.  539. 

(c)  Marks  Not  Held  Sitnilar. 

860.  There  is  no  interference  in  fact  be- 
tween the  words  "Ma-Le-Na"  and  "Man-A- 
Lin,"  used  as  trade-marks  for  medicines  since 
they  are  unlike  in  appearance  and  in  sound. 
York  V.  Hartman.  C.  D.  1905,  119  O.  G.  1921. 

861.  Held,  that  the  word  "Zodenta"  as  a 
trade-mark  for  toilet  preparations  does  not 
so  nearly  resemble  the  word  "Zozodont"  as 
to  be  likely  to  cause  confusion  or  mistake  in 
the  mind  of  the  public.  Hall  and  Ruckel  v. 
Ingram,  C.  D.  1906,  123  O.  G.  2312. 


584 


TRADE  MARKS,  XXXII-XXXIV. 


862.  The  marks  of  the  parties  consist,  re- 
spectively, of  the  words  "Raven"  and  "Crow" 
accompanied  in  each  case  by  a  representation 
of  a  black  bird  perched  on  a  branch  of  a  tree. 
Held,  there  is  no  interference  between  the 
words  "Raven"  and  "Crow,"  and  although 
there  is  a  certain  similarity  in  the  represen- 
tations of  the  birds,  taking  the  marks  as  a 
whole  there  is  no  such  resemblance  as  would 
be  likely  to  cause  confusion  or  mistake  in  the 
mind  of  the  public  or  deceive  purchasers. 
The  United  States  Graphite  Company  v.  Bom- 
hard,  C.  D.  1907,  127  O.  G.  3215. 

863.  Held,  that  a  trade-mark  comprising 
the  letters  "X  L  C  R"  pierced  by  an  arrow, 
the  whole  being  enclosed  in  a  diamond-shaped 
figure,  docs  not  so  nearly  resemble  a  trade- 
mark for  the  same  merchandise  which  com- 
prises the  letter  "B"  pierced  by  an  arrow  as 
to  cause  confusion  in  the  mind  of  the  public. 
The  W.  Bingham  Company  v.  G.  W.  Brad- 
ley's Sons,  C.  D.  1907,  131  O.  G.  1421. 

864.  Where  the  words  are  alike  in  appear- 
ance or  where  the  common  features  of  a  mark 
are  of  sufficient  prominence  as  to  cause  the 
merchandise  of  both  parties  to  become  known 
by  a  common  name,  the  interference  should 
be  continued  in  order  that  the  office  may  have 
the  benefit  of  testimony  showing  whether  con- 
fusion in  trade  has  actually  occurred ;  but 
where  there  is  so  marked  a  difference  in  ap- 
pearance and  significance  of  the  marks  when 
considered  as  a  whole  that  no  likelihood  of 
confusion  in  trade  is  apparent  the  interfer- 
ence should  be  dissolved.     Id. 

865.  Held,  that  there  is  no  interference  in 
fact  between  two  trade-marks  consisting,  re- 
spectively, of  the  picture  of  a  swan  and  the 
words  "Swan's  Down."  S.  S.  Pierce  Co.  v. 
Church  &  Dwight  Company,  C.  D.  1910,  150 
O.  G.  265. 

XXXII.  Jurisdiction. 

866.  The  fact  that  the  word  "Elgin"  had 
acquired  that  signification  might  be  forceful 
if  the  word  were  shown  to  be  used  to  palm 
off  the  goods  of  one  as  the  goods  of  another, 
which,  coupled  with  other  evidence  evincing 
intent  to  mislead  and  defraud,  would  be  oper- 
ative to  move  a  court  of  equity  to  prevent 
the  wrong,  and  the  federal  court  would  not 
have  jurisdiction  in  such  case  unless  there 
exist  and  appear  from  the  record  the  neces- 
sary diverse  citizenship  of  the  parties.  The 
remedy  for   fraud  existed  before  the  statute 


relating  to  trade-marks  and  was  not  given  by 
it,  but  recognizing  the  invalidity  of  the  trade- 
mark was  applied  for  the  prevention  of  fraud. 
d  Illinois  Watch  Case  Co.  v.  Elgin  Watch  Co., 
C.  D.  1899,  87  O.  G.  2323. 

867.  The  courts  of  the  state  furnish  ample 
remedy  for  the  wrong,  if  any,  under  which 
the  appellee  suffers,  and  the  federal  courts 
have  no  right  to  redress  or  prevent  trespass 
upon  the  common-law  rights  of  the  appellee, 
the  citizenship  of  the  parties  forbidding  jur- 
isdiction. If  it  were  allowable  to  a  federal 
court  to  assume  jurisdiction  to  grant  equitable 
relief  upon  the  ground  of  fraud,  the  relief 
could  only  extend  in  restraint  of  the  wrong 
so  far  as  it  affected  foreign  commerce  and 
commerce  with  the  Indian  tribes,     d  Id. 

XXXIII.  Laches. 

868.  Where  the  party  who  originally  adopt- 
the  trade-mark  "Hunyadi"  was  inactive  and 
permitted  the  use  of  the  word  by  numerous 
other  importers  for  twenty  years,  Held,  that 
it  is  now  too  late  to  resurrect  the  original  title 
which  has  been  lost  by  laches.  **Saxlchnerr 
Mendclson  Co.,  C.  D.   1900,  93  O.  G.  940. 

869.  Where  the  defendants  adopted  the 
shape  of  complainant's  bottle  and  also  his 
label  with  intent  to  deceive.  Held,  that  they 
are  restrained  from  further  use  thereof,  al- 
though the  plaintiff  delayed  for  several  years 
from  bringing  suit  against  them.     ♦*Id. 

870.  In  an  interference  proceeding  where 
the  only  question  involved  is  whether  the  right 
of  registration  will  be  accorded  either  or  both 
parties  to  the  proceeding  the  question  of 
laches  is  immaterial.  Phoenix  Paint  and  Var- 
nish Co.  V.  John  T.  Lewis  &  Bros.  Co.,  C.  D. 
1909,  139  O.  G.  990. 

XXXIV.  Mandamus. 

871.  Where  the  commissioner  refused  to 
register  the  words  "Ever-Ready"  on  the 
ground  that  they  are  descriptive  simply  of 
the  qualities  or  characteristics  of  the  articles 
manufactured  and  do  not  constitute  a  lawful 
trade-mark.  Held,  that  his  action  involves  the 
exercise  of  discretion  vested  in  him  by  law, 
and  therefore  a  mandamus  will  not  lie  to 
control  his  action.  *United  States  of  Amer- 
ica, ex  rel.  Bronson  Company  et  al.  v.  Duell, 
Commissioner  of  Patents,  C.  D.  1901,  95  O. 
G.  229. 

872.  It  is  the  duty  of  the  commissioner  in 
considering    an    application     for    registration 


TRADE  MARKS,  XXXV. 


585 


to  determine  whether  or  not  the  mark  is  a 
lawful  trade-mark,  and  the  performance  of 
this  duty  involves  discretion.  The  decision 
below  dismissing  a  petition  for  mandamus 
controlling  his  action  in  such  a  matter  aflRrm- 
ed.     *Id. 

XXV.  Name  of  Patented  Article. 

873.  The  word  "Gilson,"  being  the  name  of 
a  patented  album  known  as  the  "Gilson  Al- 
bum," refused  registration  as  a  trade-mark 
for  photograph-albums  and  photographic  expo- 
sure-tables on  the  ground  that  the  name  of 
an  inventor  which  has  become  the  generic 
name  of  the  thing  patented  passes  to  the  pub- 
lic when  the  monopoly  created  by  the  patent 
expires.  Ex  parte  F.  H.  Gilson  Co.,  C.  D. 
1898,  83   O.  G.   1992. 

874.  The  word  "Velvril"  refused  registra- 
tion as  a  trade-mark  for  a  nitrocellulose  com- 
pound, as  it  is  the  name  of  a  patented  com- 
pound which  will  become  public  property  at 
the  expiration  of  the  patent.  Ex  parte  Vel- 
vril Company,  Limited,  C.  D.  1898,  84  O.  G. 
807. 

875.  In  view  of  the  fact  that  under  the 
trade-mark  act  of  1881  a  certificate  of  regis- 
try remains  in  force  for  thirty  years  from  its 
date  (with  certain  exceptions),  Held,  that  the 
patent  office  should  not  register  trade-marks 
which,  though  lawful  trade-marks  at  the  date 
when  registry  is  sought,  will  become  public 
property  before  the  expiration  of  the  thirty 
years.     Id. 

878.  Held,  that  the  respondents  have  no 
right  to  the  exclusive  use  in  the  United  States 
of  the  words  "Rahtjen's  Composition"  as  a 
trade-mark  for  paints,  and  therefore  the  de- 
cision of  the  court  of  appeals  (101  Fed.  Rep. 
257)  reversed.  **Holzapfers  Compositions 
Company,  Limited  v.  Rahtjen's  American 
Composition  Company,  C.  D.  1901,  97  O.  G. 
958. 

877.  Where  before  obtaining  a  patent  in 
England,  during  the  life  of  the  patent,  and 
after  it  expired  the  paint  was  sold  under  the 
name  of  "Rahtjen's  Composition''  and  that 
was  the  only  name  by  which  it  was  possible 
to  describe  it,  Held,  that  the  name  was  neces- 
sarily descriptive  and  did  not  designate  the 
manufacturers.     **Id. 

878.  Where  a  party  claims  as  a  trade-mark 
in  this  country  words  used  to  describe  a  com- 
position patented  in  England,  Held,  that  when 
the  patent  expires  the  right  to  make  the  com- 


position and  describe  it  by  that  name  is  open 
to  the  public.  The  principles  involved  in 
Singer  Mfg.  Co.  v.  June  Mfg.  Co.  (C.  D. 
189G,  687,  75  O.  G.  1703,  163  U.  S.  169)  apply 
notwithstanding  the  fact  that  the  patent  is  a 
foreign  one.     **Id. 

879.  Where  a  party  claims  a  trade-mark 
right  to  words  used  to  describe  a  composition 
the  patent  on  which  has  e.xpired  upon  the 
ground  that  the  mark  was  used  before  the 
patent  was  granted  and  it  appears  that  in 
such  use  the  mark  was  associated  with  words 
conveying  the  false  impression  that  the  com- 
position was  patented,  Held,  that  the  claim 
cannot  be  sustained.    **Id. 

880.  No  right  to  a  trade-mark  which  in- 
cludes the  word  "patent"  and  which  describes 
the  article  as  "patented"  can  arise  when  there 
is  and  has  been  no  patent,  nor  is  the  claim  a 
valid  one  for  the  other  words  used  where  it 
is  based  upon  their  use  in  connection  with 
that  word  **Id. 

881.  The  word  "Holophane"  alone  is  not 
registrable  as  a  trade-mark  for  prismatic 
glass,  for  the  reason  that  it  is  the  name  of 
the  patented  article  in  connection  with  which 
the  mark  is  used  and  for  the  further  reason 
that  the  word  is  shown  to  have  been  used  as 
the  name  of  the  article  long  prior  to  any  date 
of  use  which  is  set  up  by  the  present  appli- 
cant. Ex  parte  Holophane  Glass  Company, 
C.  D.  1902,  100  O.  G.  450. 

882.  Held,  that  the  word  "Yale"  is  regis- 
trable as  a  trade-mark  for  locks  and  latches 
under  the  ten-year  proviso  of  section  5  of  the 
act  of  1905,  although  it  is  the  name  of  a  pat- 
ented article.  Ex  parte  The  Yale  &  Towne 
Manufacturing  Company,  C.  D.  1907,  127  O. 
G.  3641. 

883.  The  function  of  the  name  of  a  pat- 
ented article  is  twofold:  (1)  It  designates  or 
identifies  the  thing  patented,  and  (2)  it  indi- 
cates the  original  source  of  manufacture  of 
the  article.  Where  a  word  or  name  which 
has  been  applied  to  a  patented  article  has  in 
addition  to  its  descriptive  significance  also 
become  indicative  of  the  origin  of  that  article, 
a  limited  right  remains  in  the  original  maker 
after  the  expiration  of  the  patent  to  exclude 
others  from  such  unqualified  use  of  the  word 
or  name  as  would  deceive  a  careful  public 
into  the  belief  that  their  articles  arc  those  of 
the  original  maker.  This  right  to  exclude,  it 
is  believed,  satisfies  the  requirement  of  "ex- 
clusive use"  stated  in  the  ten-year  proviso  of 
the  act  of  February  20,  1905,    Id. 


586 


TRADE  MARKS,  XXXVI. 


884.  Applicant  adopted  as  a  trade-mark  for 
injectors  the  word  "Monitor."  These  injec- 
tors were  of  the  type  shown  in  the  Gresham 
patent,  which  had  expired  prior  to  that  time, 
and  also  embodied  the  features  of  the  Woh- 
lers  patent,  which  was  of  limited  scope.  Later 
other  styles  of  injectors  were  made  and  des- 
ignated by  various  names,  of  which  "Moni- 
tor" was  a  part.  None  of  these  injectors  em- 
bodied the  features  of  the  Wohlers  patent. 
fJeld,  that  these  facts  do  not  bring  the  case 
within  the  ruling  of  Singer  Mfg.  Co.  v.  June 
(C.  D.  1806,  687,  7.5  O.  G.  1703,  163  U.  S.  169), 
and  applicant  is  entitled  to  register  the  mark. 
♦The  Edna  Smelting  &  Refining  Company  v. 
Nathan  Manufacturing  Co.,  C.  D.  1908,  135  O. 
O.  664. 

885.  Where  a  trade-mark  had  been  applied 
to  an  article  prior  to  the  adoption  of  features 
covered  by  a  patent,  the  e.xpiration  of  the  pat- 
ent does  not  terminate  the  exclusive  right 
to  the  use  of  the  mark.  (Becbelder  v.  Thom- 
sen,  93  F.  R.  660.)     *Id. 

886.  The  decision  of  the  commissioner  of 
patents  refusing  to  register  as  a  trade-mark 
for  men's  undergarments  the  representation 
of  a  buff-colored  strip  of  knitted  material  in- 
terposed lengthwise  thereof  on  the  ground 
that  the  registration  would  extend  the  monop- 
oly enjoyed  by  applicant  under  the  Brown 
patent,  which  purported  to  cover  such  an  in- 
serted strip  and  which  expired  in  1898,  Held, 
to  be  founded  in  reason  and  sustained  by  au- 
thority. *J.  A.  Scriven  Co.  v.  The  W.  H. 
Towles  Mfg.  Co.,  C.  D.  1909,  140  O.  G.  .510. 

887.  Between  1870  and  1884  several  patents 
for  improvements  in  step-ladders  were  issued 
to  C.  G.  Udell,  the  predecessor  in  business 
of  The  Udell  Works.  Udell  adopted  as  his 
trade-mark  the  word  "Excelsior."  The  Excel- 
sior ladder  embodied  features  of  several,  but 
not  all,  of  the  patents.  Six  other  styles  of 
ladders  were  manufactured,  some  of  which 
closely  resembled  the  Excelsior  ladder  and 
all  of  which  embodied  features  of  the  Udell 
patents.  Held,  that  the  word  "Excelsior"  did 
not  become  during  the  life  of  the  Udell  pat- 
ents the  generic  designation  of  ladders  manu- 
factured thereunder.  *Udell-Predock  Manu- 
facturing Company  v.  The  Udell  Works,  C. 
D.   1909,  140  O.  G.  1002. 

888.  While  care  should  be  taken  lest  a  mo- 
nopoly be  continued  beyond  the  life  of  a  pat- 
ent through  the  agency  of  a  trade-name  which 
lias  come  to  indicate  to  the  public  the  pat- 
ented  article,  the  patent  office  would   not  be 


justified  in  presuming  that  a  trade-mark  was 
generic.  In  the  present  case  the  appellee  com- 
pany has  built  up  a  trade  in  ladders  because 
of  the  superior  excellence  of  the  product  and 
the  fair  dealings  of  the  company.  Manifestly 
it  would  be  unjust  to  deny  the  company  the 
benefit  of  its  reputation  unless  convinced  that 
to  do  so  would  prolong  a  monopoly.    *Id. 

889.  The  name  by  which  an  article  covered 
by  a  design  patent  is  known  is  not  registrable 
as  a  trade-mark.  Ex  parte  The  Craftsman's 
Guild,  C.  D.  1009,  143  O.  G.  257. 

XXXVI.  OprosiTioN. 

890.  The  notice  of  opposition  to  the  regis- 
tration of  a  trade-mark  must  be  signed  and 
sworn  to  by  the  one  who  would  be  damaged 
by  the  registration.  Martin  v.  Martin  & 
Bowne  Company,  C.  D.  1905,  119  O.  G.  902. 

891.  The  notice  of  opposition  to  the  regis- 
tration of  a  trade-mark  cannot  be  signed  and 
sworn  to  by  the  attorney  for  the  party  who 
would  be  damaged,  since  the  statute  requires 
the  personal  oath  of  the  party  himself.     Id. 

892.  Where  notice  of  opposition  to  the  reg- 
istration of  a  trade-mark  was  filed  by  the  at- 
torney, and  after  the  thirty  days  allowed  by 
the  statute  the  principal  filed  a  paper  attempt- 
ing to  ratify  the  attorney's  acts.  Held,  that 
the  opposition  will  be  dismissed.     Id. 

893.  This  office  has  no  jurisdiction  to  ex- 
tend the  thirty  days  allowed  by  statute  for  op- 
positions to  the  registration  of  trade-marks, 
and  therefore  excuses  for  delay  beyond  that 
period  are  of  no  effect.     Id. 

894.  Where  the  notice  of  opposition  alleges 
adoption  and  use  of  the  mark  before  the  ap- 
plicant company  was  incorporated  and  alleges 
that  the  mark  has  not  been  abandoned  and 
that  the  opposer  is  still  the  owner.  Held,  suffi- 
cient in  substance  to  call  for  an  answer  by 
the  applicant.     Id. 

895.  Where  exception  taken  to  applicant's 
answer  on  ground  of  impertinence  was  over- 
ruled by  examiner  of  interferences.  Held,  that 
no  appeal  from  this  action  would  be  enter- 
tained. Whittingham  v.  Automatic  Switch 
Company,  C.  D.  1906,  120  O.  G.  659. 

896.  In  overruling  the  exceptions  to  the  an- 
swer the  examiner  of  interferences  denied  to 
opponent  no  substantial  rights,  nor  is  it  un- 
derstood wherein  opponent  would  be  subject- 
ed to  hardships  by  erroneous  decisions  of  the 
examiner  overruling  such  exceptions  suffi- 
cient to  justify  the  general  hardship  in  delay, 


TRADE  MARKS,  XXXVI. 


587 


labor,  and  expense  which  would  be  imposed 
upon  parties  by  permitting  interlocutory  ap- 
peals in  these  cases.     Id. 

897.  The  examiner  may  refuse  registration 
after  the  publication  of  a  trade-mark  under 
section  6  of  the  trade-mark  act  even  where 
no  notice  of  opposition  is  filed.  Ex  parte 
Chiett,  Pcabody  &  Company,  C.  D.  1900,  120 
O.  G.  002. 

898.  The  provision  in  section  6  of  the  act 
that  the  commissioner  "shall  issue  a  certifi- 
cate of  registration"  in  case  no  notice  of  op- 
position is  filed  is  permissive  and  is  not  man- 
datory.   Id. 

899.  Section  6  was  intended  to  provide  an 
additional  means  for  determining  the  right  of 
the  applicant  to  registration,  and  not  for  the 
purpose  of  cutting  off  the  right  of  the  of- 
fice to  consider  and  act  upon  any  and  all  le- 
gitimate questions  as  to  the  applicant's  right. 
Id. 

900.  It  was  not  the  intent  of  section  6  that 
this  office  should  reject  an  applicant  upon  evi- 
dence presented  by  one  opposing  and  disre- 
gard the  same  evidence  if  discovered  by  its 
own  efforts.    Id. 

901.  Where  opposition  is  made  to  the  reg- 
istration of  a  trade-mark  and  the  applicant  is 
called  upon  to  make  answer  within  a  certain 
time  and  he  does  within  that  time  file  a  paper 
entitled  a  demurrer,  setting  forth  reasons 
which  the  office  regards  as  sufficient  for  dis- 
missing the  opposition,  Held,  that  he  has 
complied  with  the  office  requirement  for  an 
answer.  W.  A.  Gaines  &  Co.  v.  C.  A.  Knecht 
&  Son,  C.  D.  1906,  120  O.  G.  1163. 

902.  Technical  and  refined  objections  to  the 
form  of  pleadings  in  trade-mark  oppositions 
will  not  be  sustained.  It  is  sufficient  if  the 
parties  present  to  the  office  the  material  which 
will  enable  it  to  properly  dispose  of  the  case 
on  its  merits,  and  it  is  not  necessary  to  in- 
sist upon  technical  forms.     Id. 

903.  This  office  has  no  authority  to  enter- 
tain a  notice  of  opposition  to  the  registration 
of  a  trade-mark  filed  more  than  thirty  days 
after  the  publication  of  the  mark.  Winand 
V.  P.  J.  Drury  Company,  C.  D.  1906,  120  O.  G. 
2126. 

904.  Where  opposition  is  made  to  the  regis- 
tration of  a  mark  and  it  appears  that  the  mark 
has  been  registered,  the  opposition  will  be 
dismissed  as  raising  a  moot  question.     Id. 

905.  The  fee  constitutes  a  necessary  part  of 
the  notice  of  opposition,  since  it  is  required 
to  be  paid  on  filing  such  notice.     .\n  effective 


date  cannot  be  given  to  an  opposition  earlier 
than  that  upon  which  the  fee  was  paid.  John 
Wagner  &  Sons  v.  Thixton,  Millett  &  Co., 
C.  D.   1906,  121  O.  G.  690. 

906.  The  office  has  no  authority  to  extend 
in  any  case  the  period  allowed  by  law  for  op- 
positions, and  where  the  fee  was  paid  more 
than  thirty  days  after  publication.  Held,  that 
the  opposition  came  too  late  to  be  entitled  to 
consideration.     Id. 

907.  Where  the  notice  of  opposition  to  the 
registration  of  a  trade-mark  was  filed  one  day 
after  the  expiration  of  the  thirty  days  allowed 
by  law.  Held,  that  said  notice  is  of  no  force 
or  effect.  Bass,  Ratcliff  &  Gretton,  Lim.  v. 
Hartmann  Brewing  Company,  C.  D.  1906,  121 
O.  G.  232S. 

908.  Where  a  notice  of  opposition  is  filed 
in  behalf  of  a  corporation.  Held,  that  the  oath 
should  be  furnished  by  one  of  the  executive 
officers  of  said  corporation,  together  with  a 
statement  of  his  authority  to  act  as  the  agent 
of  the  corporation.     Id. 

909.  Where  a  notice  of  opposition  filed  in 
behalf  of  a  corporation  was  made  by  its  at- 
torney. Held,  that  there  is  no  more  authority 
for  accepting  the  notice  of  opposition  and 
oath  of  an  attorney  for  a  corporation  than 
for  accepting  a  corresponding  notice  and  oath 
for  an  individual,  and  the  examiner  was  right 
in  dismissing  the  opposition.     Id. 

910.  Section  6  of  the  trade-mark  act  of 
February  20,  190r),  providing  that  the  affidavit 
in  support  of  the  notice  of  opposition  shall 
be  made  by  the  person  who  would  be  dam- 
aged by  the  registration,  is  not  satisfied  by 
the  affidavit  of  the  attorney  or  agent  of  such 
party.  *Martin  v.  Martin  and  Bowne  Com- 
pany, C.  D.  1906,  122  O.  G.  734. 

911.  Where  the  owner  of  a  trade-mark  is 
deprived  of  his  right  to  oppose  registration 
thereof  by  another  by  the  enforcement  of 
the  letter  of  the  statute  he  is  not  thereby 
deprived  of  his  right  of  property  in  the  trade- 
mark. Aside  from  the  usual  remedies  at  law 
and  in  equity  for  the  protection  or  recovery 
of  property  rights,  he  may  possibly  obtain  a 
remedy  through  a  declaration  of  interference 
under  section  7  or  by  a  cancellation  under  sec- 
tion 13.    *Id. 

912.  Held,  that  there  is  no  right  of  appeal 
from  the  decision  of  the  examiner  of  inter- 
ferences overruling  a  demurrer  to  the  notice 
of  opposition  to  the  registration  of  a  trade- 
mark.     Drevet    Manufacturing    Company    v. 


588 


TRADE  MARKS,  XXXVI. 


Liquozone   Company,    C.    D.    1006,   122   O.   G. 
3014. 

913.  No  exception  to  the  rule  that  there  is 
no  right  of  appeal  from  the  decision  of  the 
examiner  of  interferences  overruling  a  demur- 
rer in  trade-mark  opposition  will  be  made 
where  the  circumstances  are  not  of  such  an 
unusual  or  extreme  character  as  will  justify 
extraordinary  action.     Id. 

914.  Where  printed  testimony  was  not  filed 
until  twenty-one  days  after  the  date  of  final 
hearing  and  no  satisfactory  excuse  is  pre- 
sented for  the  delay,  Held,  that  the  decision 
of  the  examiner  of  interferences  dismissing 
the  opposition  should  be  affirmed.  McLough- 
lin  Brothers  v.  Flinch  Card  Co..  C.  D.  1906, 
123  O.  G.  996. 

915.  Where  the  opposer  firm  was  originally 
composed  of  two  members  and  subsequently 
another  member  was  admitted  and  there  is 
no  direct  evidence  of  transfer  of  title  from 
the  old  firm  to  the  new.  Held,  that  the  facts 
proved  raise  a  presumption  of  continuous 
ownership  of  the  mark  by  the  present  oppo- 
nents from  a  date  prior  to  that  of  the  appli- 
cant's filing  date,  and  this  is  sufficient  to  sus- 
tain an  opposition  or  an  award  of  priority. 
Rice  &  Hochster  v.  Fishel,  Nessler  &  Co.,  C. 
D.  1906,  123  O.  G.  997. 

916.  It  is  not  necessary  in  order  to  sustain 
an  opposition  or  a  judgment  of  priority  that 
sales  by  the  successful  party  shall  be  made 
outside  of  a  single  state.     Id. 

917.  Held,  that  the  verification  required  by 
section  6  of  the  act  of  February  20.  1905,  is 
the  affidavit  of  the  person  filing  the  notice  of 
opposition.  William  H.  Baker,  Syracuse,  Inc. 
v.  Walter  Baker  and  Company,  C.  D.  1906,  124 
O.  G.  000. 

918.  Held,  that  a  notice  of  opposition  un- 
accompanied by  the  required  verification  is 
ineffectual,  and  if  the  verification  is  not  filed 
within  the  period  of  thirty  days  mentioned  in 
section  6  of  the  act  of  February  20,  190.'),  the 
result  is  the  same  as  though  no  notice  of  op- 
position had  been  filed.    Id. 

919.  Held,  that  the  complete  notice  of  op- 
position must  be  filed  within  thirty  days  of 
the  date  of  publication  of  the  trade-mark  and 
that  the  failure  to  file  a  verification  within 
that  period  cannot  be  cured  by  filing  such 
verification  subsequently.     Id. 

920.  Where  the  opposer  made  drawings  to 
which  he  applied  the  words  "Buster"  and 
"Buster  Brown"  and  sold  them  to  The  New 
York    Herald    Company   and   the   latter   pub- 


lished the  drawings.  Held,  that  the  opposi- 
tion should  not  be  dismissed  on  demurrer,  as 
the  rights  of  the  parties  may  depend  upon 
facts  not  available  for  the  purpose  of  such 
a  decision,  such  facts,  for  example,  as  the 
manner  in  which  the  mark  was  applied  by 
The  New  York  Herald  Company  and  the  re- 
lations between  the  parties  at  the  time  the 
mark  was  adopted.  Outcault  v.  The  New 
York  Herald  Company,  C.  D.  1906,  124  O.  G. 
1S44. 

921.  The  granting  of  a  preliminary  injunc- 
tion in  the  case  of  New  York  Herald  Com- 
pany V.  The  Star  Company,  Held,  not  to  gov- 
ern the  present  case,  for  the  reason  that  the 
affidavits  upon  which  that  decision  was  based 
would  not,  even  if  properly  in  the  record  of 
this  case,  form  a  proper  basis  for  dismissing 
the  opposition.     Id. 

922.  Where  notice  of  opposition  was  filed 
within  the  thirty  days  allowed  for  that  pur- 
pose and  such  notice  alleges  use  of  certain 
marks  by  the  opposer  for  several  years,  Held, 
that  an  amended  notice  setting  forth  the  spe- 
cific dates  determining  the  period  which  was 
referred  to  in  the  original  notice  may  be  filed 
through  the  thirty  days  allowed  for  filing 
original  notice  have  passed.  Hawley  and 
Hoops  V.  D.  Auerbach  &  Sons,  C.  D.  1906, 
124  O.  G.  2901. 

923.  Where  the  mark  of  the  applicant  is 
so  similar  to  that  of  the  opposer  as  to  be 
likely  to  cause  confusion,  probable  injury  to 
opposer  will  be  presumed.  The  Wolf  Bros. 
&   Co.   V.    Hamilton    Brown    Shoe   Co.,   C.    D. 

1906,  12.5  O.  G.  657. 

924.  Where  the  notice  of  opposition  alleged 
that  "the  trade-mark  consists  merely  of  the 
word  'King'  without  any  distinctive  features, 
is  merely  the  name  of  an  individual,  and  its 
registration  as  a  trade-mark  is  prohibited  by 
the  clause  (b)  of  section  5  of  the  trade-mark 
act  of  February  20,  190.5,"  and  the  opponent 
desires  to  amend  by  adding  that  the  mark  is 
not  registrable  because  it  is  a  geographical 
name  or  term,  Held,  that  the  broad  reference 
to  clause  (b)  of  section  .5  of  the  act  merely 
conveys  the  idea  that  in  this  part  of  the  act  is 
to  be  found  the  prohibition  against  the  regis- 
tration of  names  of  individuals,  that  the  pro- 
posed amendment  is  based  on  new  ground, 
and  is  not  proper  subject-matter  for  an 
amendment  filed  after  the  expiration  of  the 
thirty  days  prescribed  in  the  statute.  The  Al- 
bert   Dickinson    Company    v.    Conklin,    C.    D. 

1907,  126  O.  G.  3422. 


TRADE  MARKS,  XXXVI. 


589 


925.  It  is  not  a  sufficient  ground  for  a  no- 
tice of  opposition  to  make  a  general  reference 
to  the  trade-mark  act  or  to  some  part  thereof. 
Id. 

926.  An  alleged  use  of  the  mark  sought  to 
be  registered  by  the  opposer  as  a  part  of  its 
name  and  in  its  advertising  is  not  a  trade- 
mark use,  and  therefore  forms  no  basis  for 
refusing  registration  to  the  applicant.  In  re 
Battle  Creek  Sanitarium  Company,  Limited, 
C.  D.  1907,  128  O.  G.  2837. 

927.  Amendment  to  an  opposition  subse- 
quent to  the  expiration  of  thirty  days  after 
publication  will  not  be  permitted  where  it 
would  result  in  presenting  a  new  ground  in  an 
opposition  which  is  otherwise  invalid.     Id. 

928.  Where  in  an  opposition  proceeding  the 
applicant  for  registration  files  a  withdrawal 
of  its  application  which  purports  to  merely 
withdraw  or  abandon  the  present  application 
and  does  not  abandon  its  claim  to  the  trade- 
mark involved  or  to  the  right  to  registration 
of  the  mark,  it  will  not  be  accepted.  The  ap- 
plicant will  not  be  permitted  by  such  a  with- 
drawal to  escape  judgment  in  an  opposition 
proceeding  and  at  the  same  time  reserve  the 
determination  of  the  questions  involved  for 
whatsoever  time  it  may  feel  inclined  to  raise 
the  same.  The  Perfect  Safety  Paper  Com- 
pany V.  George  La  Monte  &  Son,  C.  D.  1907, 
129  O.  G.  869. 

929.  A  demurrer  to  an  opposition  to  the 
registration  of  a  trade-mark  stands  as  an  ad- 
mission of  the  allegations  of  the  opposition 
in  so  far  as  they  state  facts  and  not  conclu- 
sions of  law  and  cannot  be  supported  by  an 
affidavit  subsequently  filed  by  the  applicant 
relating  to  facts  set  forth  in  the  notice  of 
opposition.  *Wm.  A.  Rogers,  Ltd.  v.  Inter- 
national Silver  Co.,  C.  D.  1907,  129  O.  G.  2503. 

930.  Where  no  pleading  was  filed  in  re- 
sponse to  a  notice  of  opposition  and  no  action 
taken  in  response  to  an  order  to  show  cause 
why  the  opposition  should  not  be  sustained, 
Held,  that  a  judgment  sustaining  such  notice 
of  opposition  was  proper.  The  Drevet  Man- 
ufacturing Company  v.  The  Liquozone  Com- 
pany. C.  D.  1907,  130  O.  G.  977. 

931.  An  allegation  in  a  notice  of  opposition 
that  the  opposer  adopted  "Glycozone"  as  a 
trade-mark  for  a  remedy  for  the  treatment 
of  germicidal  diseases  and  that  its  use  was 
begun  prior  to  the  use  of  the  trade-mark 
"Liquozone"  and  that  it  is  still  sold  to  a  large 
extent  is  a  sufficient  allegation  of  ownership 
and  continuous  use.     Id. 


932.  Where  two  marks  which  are  not  iden- 
tical in  appearance  are  similar  in  sound  and  it 
is  alleged  that  such  similarity  has  caused 
confusion  in  trade  and  the  applicant  does  not 
see  fit  to  put  the  opposer  to  proof  of  the  al- 
legation, the  contention  as  to  similarity  should 
be  sustained.    Id. 

833.  Where  an  applicant  seeks  to  register  a 
mark  under  the  ten-year  proviso  of  section  5 
of  the  act  of  190.')  and  the  registration  of  that 
mark  is  opposed  by  a  party  who  claims  owner- 
ship of  a  mark  consisting  of  a  surname  or  a 
geographical  term  which  resembles  the  appli- 
cant's mark.  Held,  that  the  notice  of  opposi- 
tion will  not  be  dismissed  upon  the  ground 
that  the  opposer's  mark  is  not  a  proper  trade- 
mark. Kentucky  Distilleries  and  Warehouse 
Company  v.  P.  Dempsey  &  Company,  C.  D. 
1907,  130  O.  G.  2373. 

934.  Where  the  opposer  alleged  in  his  no- 
tice of  opposition  that  confusion  in  trade  had 
occurred,  but  introduced  no  testimony  that 
such  confusion  had  taken  place,  and  where 
the  marks  are  not  so  nearly  alike  that  in  the 
absence  of  proof  as  to  actual  confusion  it  can 
be  held  that  confusion  would  be  likely  to 
occur,  the  applicant's  mark  will  not  be  refused. 
Id. 

935.  While  the  statute  provides  that  any  one 
who  believes  he  would  be  damaged  by  the 
registration  of  a  mark  may  oppose  registra- 
tion of  the  same,  registration  cannot  be  re- 
fused by  the  office  unless  the  opposer  shows 
that  the  mark  does  not  come  within  the  regis- 
trable marks  specified  in  section  .5  of  the 
trade-mark  act.  Osw'ego  Maize  Products  Co. 
V.  National  Starch  Co.,  C.  D.  1908,  132  O. 
G.  1588. 

936.  An  appeal  from  a  decision  of  the  ex- 
aminer of  interferences  denying  a  motion  to 
dismiss  a  notice  of  opposition  will  not  be  al- 
lowed.   Id. 

937.  An  amendment  to  a  notice  of  opposition 
setting  forth  that  the  opposer  believes  he 
would  be  damaged  by  the  registration  of  the 
mark.  Held,  to  have  been  properly  admitted. 
Id. 

938.  The  thirty  days  allowed  by  statute  for 
filing  a  notice  of  opposition  include  Sundays 
and  holidays.  Robert  A.  Keasbey  Company 
v.  Portland  Cementfabrik  Hemmoor  C.  D. 
1908,   133   O.  G.   1936. 

939.  Section  5  of  the  trade-mark  act  per- 
mits the  registration  of  a  mark  the  controll- 
ing and  distinguishing  feature  of  which  is 
an  arbitrary  symbol,  although  such  symbol  is 


590 


TRADE  MARKS,  XXXVI. 


accompanied  by  accessories  which  in  them- 
selves are  not  registrable,  and  the  use  by  the 
opposer  of  such  non-registrable  accessories 
prior  to  applicant's  use  of  his  mark  does  not 
defeat  the  latter's  right  of  registration.  John- 
son V.  Brandau,  C.  D.  190S,  134  O.  G.  257. 

940.  Where  an  application  for  registration 
of  a  trade-mark  alleges  that  the  mark  had 
been  used  on  "perfumery,  toilet  powder,  and 
talcum  powder,"  a  notice  of  opposition  which 
alleges  that  the  opposer  used  the  same  mark 
on  perfumeries  is  sufficient  to  warrant  the  ac- 
ceptance of  proof.  Oakley  &  Company  v.  Bab- 
cock,  C.  D.  1908,  133  O.  G.  761. 

941.  Where  the  allegations  of  a  notice  of 
opposition  were  sufficient,  if  true,  to  defeat 
the  application  for  registration,  an  amendment 
which  set  forth  that  the  opposer  believed  he 
would  be  damaged  by  the  registration  was 
properly  allowed.  Hansen  v.  Inland  Type 
Foundry,  C.  D.  1908.  134  O.  G.  77.5. 

942.  A  judgment  was  rendered  against  the 
opposer  for  failure  to  file  a  replication  within 
the  time  set,  and  within  the  limit  of  appeal 
from  such  decision  a  replication  and  a  mo- 
tion to  set  the  judgment  aside  were  filed. 
Held,  that  the  case  was  in  the  jurisdiction  of 
the  examiner  of  interferences  until  the  ex- 
piration of  the  limit  of  appeal,  and  it  was 
within  his  discretion  to  reopen  the  case.     Id. 

943.  A  demurrer  to  a  notice  of  opposition 
having  been  sustained  by  the  examiner  of  in- 
terferences on  the  ground  that  the  opponent 
did  not  allege  that  it  had  used  the  mark  on 
goods  of  substantially  the  same  descriptive 
properties  as  applicant's,  the  appropriate  time 
to  ask  leave  to  amend  was  when  the  demurrer 
was  sustained,  and  when  the  case  came  be- 
fore the  commissioner  on  appeal  it  was  dis- 
cretionary with  him  to  allow  or  to  refuse  the 
leave  to  amend.  *Battle  Creek  Sanitarium 
Company,  Limited  v.  Fuller,  C.  D.  1908,  134 
O.  G.  411. 

944.  It  is  not  sufficient  for  an  opponent  to 
say  that  he  believes  he  would  be  damaged  by 
the  registration  of  applicant's  mark.  He  must 
allege  some  fact  showing  an  interest  in  the 
subject-matter  from  which  damage  might  be 
inferred.     *Id. 

945.  Where  a  customer  orders  a  manufac- 
turer to  put  up  goods  under  a  certain  brand, 
which  originated  with  the  customer,  the  brand 
belongs  to  him  and  not  to  the  manufacturer. 
♦Michigan  Condensed  Milk  Company  v.  The 
Kenneweg  Company,  C.  D.  1908,  135  O.  G. 
451. 


946.  The  evidence  considered  and  held  not 
to  establish  that  Kenneweg  &  Company,  the 
predecessor  in  business  of  the  applicant,  with 
whom  the  mark  in  issue  originated  had  only 
an  exclusive  license  to  use  the  mark  in  a  lim- 
ited territory.    *Id. 

947.  The  fact  that  after  discovering  that 
the  opponent  was  using  the  mark  in  issue  ap- 
plicant took  no  steps  to  prevent  this  use  does 
not  constitute  such  laches  as  will  defeat  its 
riglit  of  registration.     *Id. 

948.  Section  6  of  the  trade-mark  act  as 
amended  March  2,  1907,  construed  and  held 
not  to  require  that  a  notice  of  opposition 
filed  by  an  attorney  shall  be  verified  by  him. 
Wellcome  v.  Baum,  C.  D.  1908,  135  O.  G.  894. 

949.  No  appeal  lies  from  a  decision  of  the 
examiner  of  interferences  refusing  to  dismiss 
a  notice  of  opposition  on  the  ground  that  the 
notice  was  not  signed  in  conformity  with  the 
law.  George  Wostenholm  &  Son  Limited  v. 
Crowley,  C.  D.  1908,  135  O.  G.  1121. 

950.  Held,  that  an  opposition  which  was 
verified  before  a  notary  who  was  at  the  same 
time  attorney  for  the  opponent  is  invalid. 
*The  Hall's  Safe  Company  v.  Herring-Hall- 
Marvin  Safe  Company,  C.  D.  1908,  135  O.  G. 
1805. 

951.  Where  an  objection  was  raised  in  the 
office  that  the  attempted  verification  was  in- 
valid because  made  before  and  certified  to  by 
a  notary  who  was  at  the  same  time  the  attor- 
ney of  the  opponent  for  the  prosecution  of 
the  opposition  and  no  leave  was  applied  for 
to  cure  the  defect  by  verifying  it  before  a 
qualified  notary,  but  the  action  taken  was  to 
file  a  new  opposition,  entitled  an  amendment, 
which  was  signed  by  the  same  authorized  rep- 
resentative officer  of  the  corporation  and  ver- 
ified before  a  proper  notary,  Held,  that  this 
was  practically  a  new  opposition  and  as  such 
came  too  late.    *Id. 

952.  Held,  that  a  trade-mark  consisting  of 
the  word  "Victoria,"  associated  with  a  medal- 
lion bearing  the  representation  of  the  head 
of  the  late  Queen  Victoria  and  surmounted 
by  a  crown  suspended  from  the  letter  "t"  of 
said  word,  does  not  so  nearly  resemble  the 
mark  of  the  opponent,  which  consists  of  the 
figure  of  a  knight  on  horseback  resting  upon 
an  ornamental  pedestal  bearing  the  inscription 
"The  Victor,"  as  to  be  likely  to  cause  con- 
fusion in  the  mind  of  the  public.  *Andrew 
McLean  Company  v.  Adams  Manufacturing 
Company,  C.  D.  1908,  136  O.  G.  440. 


TRADE  MARKS,  XXXVI. 


591 


953.  Where  the  patent  office  has  decided  that 
the  trade-mark  of  each  party  is  registrable, 
the  burden  is  on  the  opponent  to  show  that 
as  a  matter  of  fact  there  is  such  similarity 
between  the  marks  as  to  be  likely  to  cause 
confusion  and  deceive  ordinary  purchasers. 
*Id. 

954.  .\n  appeal  will  not  be  allowed  from  a 
decision  of  the  examiner  of  interferences 
granting  a  motion  to  amend  a  notice  of  op- 
position nor  from  a  decision  denying  a  mo- 
tion to  dismiss  a  notice  of  opposition.  Peer- 
less Rubber  Manufacturing  Company  v.  Gor- 
ham  Rubber  Company,  C.  D.  1908,  137  O.  G. 
TS.f. 

955.  The  fact  that  the  mark  used  by  ap- 
plicant for  registration  is  printed  in  fanciful 
letters,  Held,  insufficient  to  justify  the  regis- 
tration of  the  same  under  the  "ten-years" 
clause  of  the  trade-mark  act  of  February  20, 
190.1,  where  said  mark  is  not  so  unlike  a  word 
on  its  goods  by  the  opposer  as  to  prevent  con- 
fusion in  the  mind  of  the  public,  citing  The 
Natural  Food  Company  v.  Williams  (ante, 
320,  133  O.  G.  232)  and  Kentucky  Distilleries 
&  Warehouse  Company  v.  Old  Lexington  Club 
Distilling  Company  (ante,  417,  135  O.  G.  220). 
American  Steam  Packing  Company  v.  H.  W. 
Johns-Manville  Company,  C.  D.  1908,  137  O. 
G.  978. 

956.  In  order  that  an  opposition  shall  be 
sustained,  it  is  not  necessary  that  the  opposer 
himself  shall  be  entitled  to  registration. 
Greene,  Tweed  &  Co.  v.  Manufacturer's  Belt 
Hook  Co.,  C.  D.  1908,  137  O.  G.  2221. 

957.  A  refusal  by  the  patent  office  to  per- 
mit an  amendment  of  a  notice  of  opposition 
after  the  expiration  of  the  thirty  days  allowed 
by  the  statute  approved  on  the  ground  that  if 
the  amendment  did  not  set  up  new  grounds 
of  opposition  no  advantage  could  result  from 
the  amendment,  and  if  it  did  set  up  new 
grounds  it  was  brought  too  late.  *The  Han- 
nis  Distilling  Company  v.  George  W.  Torrey 
Company,  C.  D.  1909,  141  O.  G.  569. 

958.  There  is  no  right  of  appeal  from  the 
decision  of  the  examiner  of  interferences 
overruling  a  plea  to  a  notice  of  opposition. 
Deitsch  Bros.  v.  Loonen,  C.  D.  1909,  141  O.  G. 
1161. 

959.  Where  after  the  termination  of  an  in- 
terference between  two  applicants  for  trade- 
mark registration  the  unsuccessful  party  files 
an  opposition  to  the  registration  by  the  other 
party.  Held,  that  the  opposition  was  properly 
dismissed,  as  the  judgment  in  the  interference 


was  conclusive  as  to  every  question  that  was 
or  might  have  been  presented  therein.  *Blu- 
thenthal  &  Bickart  v.  Bigbie  Bros.  &  Co.,  C. 
D.  1909,  143  O.  G.  1346. 

960.  Where  a  party  to  an  opposition  pro- 
ceeding failed  to  take  testimony,  under  the 
belief  that  a  concession  would  be  filed  by  the 
other  party  which  would  be  advantageous  to 
its  interests.  Held,  that  it  took  the  risk  of  the 
loss  of  its  rights  by  such  failure  to  take  tes- 
timony and  that  jurisdiction  would  not  be 
restored  to  the  examiner  of  interferences  to 
consider  a  motion  to  reopen  and  set  new 
times  for  taking  testimony  and  that  jurisdic- 
tion would  not  be  restored  to  the  examiner  of 
interferences  to  consider  a  motion  to  reopen 
and  set  new  times  for  taking  testimony.  Cali- 
fornia Fruit  Canners  Association  v.  Ratcliflf- 
Sanders  Grocer  Company,  C.  D.  1909,  147  O. 
G.  238. 

961.  Where  in  an  opposition  proceeding  it 
appears  that  the  opposer  adopted  its  mark 
prior  to  the  date  of  adoption  by  the  applicant 
of  his  mark,  the  question  of  the  registrability 
of  opposer's  mark  is  immaterial,  the  sole  ques- 
tion to  be  considered  being  that  of  the  similar- 
ity of  the  marks.  *Lang  v.  Green  River  Dis- 
tilling Company,  C.  D.  1909,  148  O.  G.  280. 

962.  Where,  after  pleadings  had  been  filed 
in  an  opposition  proceeding,  jurisdiction  was 
restored  to  the  examiner  of  trade-marks  for 
the  purpose  of  refusing  registration  in  view 
of  a  registered  trade-mark  and  no  action  was 
taken  by  the  applicant  for  more  than  a  year 
after  the  letter  of  the  examiner  of  trade- 
marks refusing  such  registration.  Held,  that 
on  motion  by  the  opposer  the  examiner  of  in- 
terferences should  issue  an  order  that  the  ap- 
plicant show  cause  why  the  opposition  should 
not  be  sustained.  C.  E.  Sears  &  Co.  v.  A.  & 
R.  Loggie,  C.  D.  1909,  148  O.  G.  1088. 

963.  The  jurisdiction  of  deciding  all  ques- 
tions raised  on  opposition  proceedings,  in- 
cluding that  of  the  similarity  of  the  marks 
of  the  applicant  and  the  opposer,  is  vested  in 
the  examiner  of  interferences.  California 
Canneries  Company  v.  Kothe,  Wells  and 
Bauer  Company,  C.  D.  1909,  148  O.  G.  1345. 

964.  The  fact  that  a  registered  trade-mark 
is  involved  in  an  interference  with  an  appli- 
cation for  registration  does  not  justify  the 
admission  of  the  registrant  as  a  party  to  an 
opposition  proceeding  brought  by  a  third 
party  against  the  registration  of  the  mark.  In 
re  Brittain  Tobacco  Works,  C.  D.  1910,  150 
O.  G.  1043. 


592 


TRADE  MARKS,  XXXVI. 


965.  An  opposition  is  a  proceeding  insti- 
tuted by  a  party  who  believes  he  would  be 
damaged  by  the  registration  of  a  mark.  Such 
party  does  not  need  to  have  registered  the 
same  or  a  like  trade-mark,  and  there  is  no 
provision  of  law  by  which  such  party  can  be 
compelled  to  file  an  application  for  registra- 
tion as  a  prerequisite  to  such  proceeding.     Id. 

966.  In  his  notice  of  opposition  the  opposer 
alleged  that  he  was  the  owner  of  the  trade- 
mark shown  in  a  certain  certificate  of  regis- 
tration and  also  stated  of  what  his  mark  con- 
sists. Held,  that  a  proposed  amendment  to  the 
notice  of  opposition  stating  that  the  opposer's 
mark  was  also  shown  in  another  certificate 
of  registration  did  not  constitute  a  new  ground 
of  opposition,  the  mark  of  the  latter  registra- 
tion being  included  in  that  of  the  former  and 
the  ownership  of  both  being  stated  in  the  orig- 
inal notice  of  opposition.  James  Chadwick 
&  Brother,  Limited  v.  Fabrique  de  Sole  Arti- 
fici';llc  d'Obourg,  C.  D.  1910,  158  O.  G.  228. 

967.  Where  an  opposition  to  the  registra- 
tion of  a  trade-mark  was  filed  by  the  owner 
of  a  registered  mark,  the  fact  that  on  demur- 
rer it  was  held  by  the  examiner  of  interfer- 
ences that  the  goods  of  the  two  parties  were 
not  so  dissimilar  as  to  justify  dismissing  the 
opposition  aflfords  no  excuse  for  the  opposer's 
failure  to  file  a  replication  to  the  answer  of 
the  applicant.  (Stork  Company  v.  Kabo  Cor- 
set Company,  C.  D.  1910,  158  O.  G.  481. 

968.  Where  applicant  applied  for  registra- 
tion under  the  ten-years  proviso  of  section  5 
of  the  trade-mark  act  and  opposer  had  ob- 
tained registration  under  the  same  proviso,  the 
citation  of  this  registration  in  the  notice  of 
opposition  is  a  sufficient  allegation  that  the 
mark  in  issue  is  not  registrable  as  a  tech- 
nical trade-mark.  P.  J.  Bowlin  Liquor  Co.  v. 
J.  &  J.  Eager  Co.,  C.  D.  1910,  160  O.  G.  258. 

969.  A  decision  in  an  opposition  filed  against 
the  registration  of  a  mark  presented  as  a 
technical  trade-mark,  Held,  not  res  adjudicata 
in  a  second  opposition  filed  by  the  same  party 
against  the  registration  of  the  same  mark 
when  presented  under  the  "ten-years"  pro- 
viso of  section  5  of  the  trade-mark  act.  *Car- 
ter  Medicine  Co.  v.  Barclay  &  Barclay,  C.  D. 
1911,  162  O.  G.  785. 

970.  In  order  to  sustain  a  notice  of  oppo- 
sition to  the  registration  of  a  trade-mark,  it 
is  not  sufficient  that  the  opponent  state  that 
he  believes  he  would  be  damaged,  but  he 
must  allege  facts  showing  an  interest  in  the 
subject-matter    from    which    damage   may   be 


inferred.  (Mcllhenny's  Son  v.  New  Iberia 
Extract  of  Tabasco  Pepper  Co.,  Ltd.,  133  O. 
G.  995,  30  App.  D.  C.  337;  Battle  Creek  Sani- 
tarium Co.,  Ltd.  v.  Fuller,  134  O.  G.  1299,  30 
App.  D.  C.  411.)  *Underwood  Typewriter 
Co.  v.  A.  B.  Dick  Co.,  C.  D.  1911,  163  O.  G. 
730. 

971.  Where  a  notice  of  opposition  does  not 
allege  that  the  opposer  has  put  on  the  market 
an  article  similar  to  that  upon  which  the 
trade-mark  of  the  applicant  has  been  used,  but 
merely  alleges  that  said  trade-mark  has  be- 
come public  property  by  reason  of  the  ex- 
piration of  a  patent  upon  the  machine  upon 
which  it  is  used.  Held,  that  such  notice  is 
fatally  defective.     *Id. 

972.  In  a  suit  for  infringement  of  a  reg- 
istered trade-mark  involving  citizens  of  the 
same  state  the  Supreme  Court  of  the  United 
States  held  that  the  registration  was  invalid 
and  that  therefore  the  federal  courts  had  no 
jurisdiction.  Subsequently  the  defendant  in 
the  suit  filed  an  application  for  registration 
of  the  mark  used  by  it,  and  an  opposition  to 
such  registration  was  filed  by  the  plaintiff. 
Held,  that  as  this  opposition  is  based  upon 
actual  use  of  the  mark,  while  the  question  be- 
fore the  court  involved  solely  the  validity  of 
the  registration,  the  decision  of  the  court  is 
not  decisive  in  this  case.  *A.  Leschens  &  Sons 
Rope  Co.  V.  Broderick  &  Bascom  Rope  Co., 
C.  D.  1911,  164  O.  G.  977. 

973.  An  opposition  to  the  registration  of  a 
six-pointed  star  and  the  word  "Star"  as  a 
trade-mark  for  beer,  Held,  properly  sustained, 
since  the  representation  of  a  star  for  beer 
has  been  so  generally  used  as  to  become  pub- 
lici  juris.  *Star  Brewery  Co.  v.  Val  Blatz 
Brewing  Co.,  C.  D.  1911,  165  O.  G.  731. 

974.  Where  opposer  was  not  the  originator 
of  the  trade-mark  consisting  of  a  waitress  in 
Quaker  or  Puritan  costume  carrying  a  tray, 
Held,  that  it  has  no  right  to  exclude  every 
one  else  from  using  the  representation  of  a 
woman  as  a  trade-mark  upon  goods  similar  to 
that  manufactured  by  it.  ♦Nestle  &  Anglo- 
Swiss  Condensed  Milk  Company  v.  Walter 
Baker  &  Company,  Limited,  C.  D.  1911,  167 
O.  G.  765. 

975.  After  an  opposition  to  the  registration 
of  a  trade-mark  has  been  filed  the  opposition 
proceedings  should  not  be  terminated  without 
a  formal  order  sustaining  or  dismissing  the 
opposition.  Wm.  .\.  Coombs  Milling  Co.  v. 
The  Dewey  Bros.  Co.,  C.  D.  1911,  171  O.  G. 
743. 


TRADE  MARKS,  XXXVII. 


593 


976.  Where  a  notice  of  opposition  was  filed 
signed  by  the  attorney  and  within  two  days 
thereafter  duly  verified  by  an  authorized  of- 
ficer of  the  corporation  in  whose  behalf  it  was 
filed,  Held,  that  there  was  no  irregularity  in 
filing  the  same.  Collins  &  Co.  v.  Meyer,  C.  D. 
1911,  172  O.  G.  552. 

XXXVII.  Ownership. 

977.  An  association  of  manufacturers  which 
as  an  association  does  not  make,  brand,  or 
sell  the  articles  of  merchandise  in  connection 
with  which  the  trade-mark  is  used  is  not  en- 
titled under  the  act  of  March  3,  1881,  to  reg- 
ister a  trade-mark.  Ex  parte  Anti-Adultera- 
tion League.  C.  D.  1899,  86  O.  G.  1803. 

978.  The  right  to  register  a  trade-mark  in 
the  patent  office  is  a  statutory  one.  and  the 
action  of  the  office  in  registering  trade-marks 
is  limited  to  the  terms  of  the  acts  of  March  3, 
1881,  and  August  5,  1882.  Held,  that  appellant 
is  not  the  owner  of  the  trade-mark  under  the 
statutes  and  therefore  it  has  no  right  to  reg- 
ister it.     Id. 

979.  While  appellant  has  adopted  the  mark, 
and  without  doubt  is  entitled  to  it,  yet  within 
the  meaning  of  the  term  "owners"  as  employed 
in  the  trade-mark  act  it  does  not  own  the 
mark.  The  only  ownership  vested  in  appel- 
lant is  that  which  arises  from  the  adoption, 
and  that  under  the  law  is  not  sufficient  Adop- 
tion must  be  followed  by  use.     Id. 

980.  There  is  no  authority  in  the  trade- 
mark act  permitting  the  patent  office  to  regis- 
ter a  trade-mark  the  right  to  use  which  is 
farmed  out  and  which  is  not  actually  used  by 
the  would-be  registrant.     Id. 

981.  Property  in  a  trade-mark  arising  from 
its  use  in  connection  or  association  with  arti- 
cles manufactured  by  a  certain  party  natural- 
ly excludes  every  other  person  from  the  right 
to  use  the  same  mark  upon  the  same  articles. 
(Collins  Co.  V.  Cohen,  3  K.  &  J.  428 ;  Ex  parte 
Langdon  and  Batcheller,  C.  D.  1892,  208,  61  O. 
G.  286,  cited.)     Id. 

982.  The  phrase  "owners  of  trade-marks" 
appearing  in  the  act  of  March  3,  1881,  mani- 
festly limits  the  right  of  registration  to  such 
person  or  persons,  natural  or  artificial,  as 
possess  the  legal  title  to  that  for  which  regis- 
tration is  sought,  and  it  further  limits  the 
right  of  registration  to  that  which  is  a  trade- 
mark. Ex  parte  Bronson  Company,  C.  D. 
1899,  87  O.  G.  1782. 

38 


983.  It  is  incumbent  upon  the  various  tri- 
bunals of  the  patent  office  having  in  charge 
the  registration  of  trade-marks  when  an  ap- 
plication for  registration  is  filed  to  decide  at 
the  outset  two  questions:  (1)  Is  applicant 
the  owner,  and  (2)  is  that  which  he  seeks  to 
register  a  trade-mark?    Id. 

984.  The  tribunals  of  the  patent  office  in 
deciding  the  question  of  ownership  are  not 
precluded  by  the  statement  and  declaration 
of  ownership  made  by  the  applicant  from  con- 
sideration and  deciding  whether  he  is  or  is  not 
the  owner  of  the  thing  sought  to  be  registered. 
Id. 

985.  The  registration  of  a  trade-mark  is 
under  the  law  [<rima  facie  evidence  of  owner- 
ship, and  where  the  registered  mark  is  said 
to  have  been  used  upon  a  class  of  goods.  Held, 
that  substantially  the  same  mark  cannot  be 
registered  for  another  for  goods  coming  un- 
der that  class  in  the  absence  of  a  showing  that 
the  registrant  has  not  used  it  upon  the  par- 
ticular goods.  Ex  parte  Ino  Medicine  Co., 
C.  D.  1902,  101  O.  G.  887. 

986.  In  the  absence  of  testimony  to  that 
effect  it  would  be  contrary  to  the  rules  of 
evidence  to  hold  that  a  party  who  testifies  that 
he  had  sold  the  business  and  good-will  had 
continued  to  use  the  trade-mark  of  that  busi- 
ness in  violation  of  the  terms  of  sale.  J.  K. 
Newberry  Co.  v.  Jos.  J.  O'Donohue's  Sons, 
C.  D.  1904,  111  O.  G.  299. 

987.  Since  the  trade-mark  act  does  not  con- 
fer upon  users  property  rights  in  marks,  but 
presupposes  the  existence  of  such  rights  and 
merely  provides  that  registration  shall  be 
prima  facie  evidence  of  that  ownership.  Held, 
that  it  does  not  contemplate  the  registration 
of  any  mark  which  is  incapable  of  ownership 
by  any  individual.  Ex  parte  Cahn,  Belt  & 
Co.,  C.  D.  1905,  118  O.  G.  1936. 

988.  To  give  prima  facie  evidence  of  owner- 
ship of  a  mark  to  an  individual  when  the  mark 
is  known  to  be  incapable  of  ownership  by  any 
individual  would  be  in  the  nature  of  a  fraud, 
and  the  law  is  not  to  be  construed  as  requir- 
ing this  if  it  is  capable  of  any  other  con- 
struction.    Id. 

989.  The  general  rule  that  when  a  partner 
retires  from  a  partnership  and  assents  to  the 
retention  by  the  other  partners  of  the  posses- 
sion of  the  old  place  of  business  and  the  fu- 
ture conduct  of  the  business  by  them  under 
the  old  name  the  trade-mark  remains  with  the 
latter  has  no  application  to  the  facts  of  this 


594 


TRADE  MARKS,  XXXVIII,    (a). 


case.    *Giles  Remedy  Co.  v.  Giles,  C.  D.  1906, 
120  O.  G.  1826. 

990.  In  the  absence  of  express  agreement 
a  trade-mark  used  theretofore  by  one  who 
enters  into  partnership  with  others  does  not 
at  the  dissolution  of  the  partnership,  caused 
by  the  withdrawal  of  the  member  bringing 
the  mark  into  the  partnership,  remain  the 
property  of  the  partnership.    *Id. 

991.  Whatever  interest  in  a  trade-mark  a 
retiring  partner  of  a  firm  may  have  had  ceases 
upon  his  withdrawal  from  the  firm  and  re- 
mains with  the  surviving  partner.  *Bluthen- 
thal  and  Bickart  v.  Bigbie  Brothers  &  Com- 
pany, C.  D.  1907,  130  O.  G.  2068. 

XXXVIII.  Personal  Name. 
(a)  In  General. 

992.  Whether  or  not  the  word  "Dewey"  is 
an  ordinary  surname  or  has  become  fanciful 
and  romantic,  it  should  not  be  registered  as  a 
trade-mark,  as  no  one  has  the  right,  without 
the  consent  of  Dewey,  to  appropriate  his  name 
as  a  trade-mark  on  the  ground  that  a  living 
celebrity  is  entitled  to  protection  from  the 
ordinary  trader.  Ex  parte  Mclnnerney,  C.  D. 
1898,  85  O.  G.  148. 

993.  A  mark  consisting  of  the  word  "San- 
dow"  and  the  representative  of  a  muscular 
arm  supporting  a  weight.  Held,  by  implica- 
tion to  refer  to  the  athlete  Sandow  and  re- 
fused registration  in  the  absence  of  his  con- 
sent to  its  use.  Ex  parte  Capital  Paper  Com- 
pany, C.  D.  1900,  91  O.  G.  1616. 

994.  The  word  "Sandow"  is  a  surname,  and 
although  if  used  as  a  trade-mark  it  would 
probably  bring  the  athlete  of  that  name  to 
the  mind  of  some  purchasers,  and  thereby 
suggest  to  them  the  idea  of  strength,  which  is 
associated  with  his  name,  and  be  in  that  sense 
and  to  that  extent  arbitrary  and  fanciful,  the 
fact  that  it  is  a  surname  is  the  primary  char- 
acteristic, while  its  suggestiveness  and  semi- 
fanciful  characteristics  are  secondary.     Id. 

995.  Ordinary  surnames  can  not  be  regis- 
tered as  trade-marks,  and  even  though  a  par- 
ticular surname  may  rise  above  the  ordinary 
plane  of  its  fellows  and  become  more  or  less 
fanciful  and  arbitrary  to  some  people,  in  the 
absence  of  any  additional  words  or  symbols 
to  designate  some  particular  person  of  the 
surname  it  is  not  registrable.    Id. 

996.  If  the  appellant  has  a  right  to  protec- 
tion under  the  law  of  "unfair  competition"  in 


its  use  of  the  word  "Burt,"  said  right  does 
not  make  a  technical  trade-mark  of  the  word 
"Burt."  In  order  that  the  word  "Burt" 
may  constitute  a  lawful  or  technical  trade- 
mark, it  must  be  evident  that  the  word  "Burt" 
was  from  the  very  beginning  the  exclusive 
property  of  the  appellant  or  its  predecessors. 
That  this  is  not  so  is  self-evident.  In  the 
very  nature  of  things  a  surname  is  not  capable 
of  being  the  exclusive  property  of  but  one 
person  bearing  that  name.  Ex  parte  Edwin 
C.  Burt  Co.,  C.  D.  1901,  96  O.  G.  1430. 

997.  The  word  "Burt"  is  refused  registra- 
tion as  a  trade-mark  for  boots  and  shoes  on 
the  ground  that  it  is  a  surname.  Neither  the 
statute  nor  the  decisions  interpreting  the  same 
warrant  the  registration  of  an  acknowledged 
surname  as  a  trade-mark.     Id. 

998.  As  prior  to  18S1  no  one  could  exclu- 
sively appropriate  a  surname  as  a  trade-mark, 
Held,  that  the  word  "Burt,"  an  acknowledged 
surname  and  the  salient  feature  of  applicant's 
name,  cannot  be  registered  as  a  trade-mark 
when  applied  to  the  products  of  the  Edwin  C. 
Burt  Company  notwithstanding  its  use  prior 
to  March  3,  1S81.  (Ex  parte  Gale  Mfg.  Co., 
C.  D.  1S98,  6GG,  8.5  O.  G.  1907.)      Id. 

999.  Neither  the  statute  nor  the  decisions 
interpreting  the  same  warrant  the  registra- 
tion of  a  trade-name  which  is  not  a  lawful 
trade-mark  for  the  purpose  of  obtaining  regis- 
tration in  a  foreign  country.  (Citing  Ex  parte 
BulTalo  Pitts  Co.,  C.  D.  1899,  244,  89  O.  G. 
20G9.)      Id. 

1000.  Use  of  a  trade-mark  in  a  foreign 
country  without  such  use  in  this  country  as  to 
give  a  common-law  right  to  the  mark  here 
does  not  entitle  a  party  to  registration.  (Rich- 
ter  v.  Reynolds,  C.  D.  1894,  260,  67  O.  G.  404 ; 
Leprince  v.  Her  &  Morris,  C.  D.  1900,  103,  92 
O.  G.  189.)  Farmers  Manufacturing  Com- 
pany V.  W.  R.  Harrison  &  Co.,  C.  D.  1901, 
96  O.  G.  2062. 

1001.  While  the  use  of  a  trade-mark  upon 
goods  manufactured  and  marked  in  this  coun- 
try, although  sold  abroad,  might  in  some  cases 
establish  a  common-law  right  here.  Held,  that 
the  business  must  be  carried  on  with  such  pub- 
licity as  to  indicate  to  others  in  this  country 
an  intention  to  adopt  the  mark  as  a  trade- 
mark.    Id. 

1002.  A  single  shipment  to  an  agent  or  cus- 
tomer in  Mexico  of  two  machines  bearing  the 
mark  where  the  mark  was  intentionally  con- 
cealed, so  that  it  could  not  be  seen,  and  in- 
structions were  given  to  keep  the  fact  of  the 


TRADE  MARKS,  XXXVIII,  (a). 


595 


shipment  and  marking  secret.  Held,  not  such 
public  use  of  the  mark  in  this  country  as  to 
establish  a  common-law  right  to  it.    Id. 

1003.  Held,  that  the  common-law  right  to 
a  trade-mark  arises  not  from  the  intention  of 
the  user  to  acquire  the  right,  but  from  the 
manner  of  its  use.    Id. 

1004.  The  title  of  the  extinct  firm  "R.  Es- 
terbrook  &  Co."  is  not  such  a  distinctive  ar- 
bitrary mark  as  warrants  its  registration  as  a 
technical  trade-mark.  Ex  parte  Esterbrook 
Steel  Pen  Manufacturing  Company,  C.  D. 
1901,  97  O.  G.  1597. 

1005.  The  addition  of  the  initial  and  the 
words  "and  Co."  to  the  surname  "Esterbrook" 
may  limit  the  class  of  persons  who  could  use 
the  same  in  a  lawful  way,  but  it  does  not  war- 
rant its  use  by  the  applicant  to  the  exclusion 
of  all  other  individuals,  firms,  or  corporations 
of  the  same  name  who  may  legitimately  carry 
on  the  same  business  and  who  have  a  right 
to  use  their  name  in  a  lawful  way  upon  their 
goods.    Id. 

1006.  The  word  "Hoxie"  does  not  appear  to 
have  any  meaning  apart  from  its  significance 
as  a  surname.  Under  the  well  settled  practice 
of  the  office  registration  was  properly  re- 
fused. Ex  parte  Maloney  and  Caldwell,  C.  D. 
1901.   97  O.   G.   2084. 

1007.  "Dr.  Hoffmann's  Drops"  refused  reg- 
istration as  a  trade-mark  for  medicine,  since 
"Hoffmann"  is  an  ordinary  surname  and 
"Drops"  is  descriptive.  Ex  parte  Traudt,  C. 
D.   1902,   100  O.  G.   2383. 

1008.  The  word  "Vassar"  refused  registra- 
tion as  a  trade-mark  on  the  ground  that  it  is 
an  ordinary  surname.  The  use  of  the  word 
as  the  name  of  places  to  perpetuate  the  name 
does  not  change  the  character  of  the  word. 
Ex  parte  Weingarten  Brothers,  C.  D.  1902, 
101  O.  G.  3108. 

1009.  The  word  "Cross"  printed  in  letters 
of  different  size  so  that  outline  shall  have  the 
shape  of  an  ellipse  refused  registration  as  a 
trade-mark  because  the  word  is  a  common 
surname.  Ex  parte  Mark  Cross  Co.,  C.  D. 
1903,   102  O.  G.  622. 

1010.  Autograph  signatures  are  registrable 
as  trade-marks  because  the  special  character- 
istics of  the  name  as  set  forth  so  far  out- 
weigh the  mere  name  upon  which  it  is  found- 
ed that  the  name  thus  expressed  or  modified 
amounts  to  an  arbitrary  mark,  and  this  prin- 
ciple applies  to  other  modes  of  setting  forth 
names.    Id. 


1011.  For  a  name  to  be  registrable  as  a 
trade-mark  the  peculiarities  of  the  expression 
of  the  name  must  so  far  transcend  the  mere 
name  that  the  peculiarities  and  not  the  name 
become  the  significant  and  striking  elements 
which  affect  the  mind  when  the  work  is 
considered.     Id. 

1012.  The  word  "Wedgewood"  refused  reg- 
istration as  a  trade-mark,  since  it  is  a  com- 
mon and  well-known  surname.  Ex  parte  The 
James  Graham  Manufacturing,  C.  D.  1903,  104 
O.  G.  2149. 

1013.  The  word  "Modoc"  associated  with 
the  picture  of  an  Indian  refused  registration 
as  a  trade-mark,  since  it  is  the  name  of  an 
Indian  tribe.  Ex  parte  The  Modoc  Soap  Com- 
pany. C.  D.  1903,  104  O.  G.  21.iO. 

1014.  Since  the  law  is  extended  to  regulate 
trade  with  the  Indian  tribes,  the  name  of  a 
particular  tribe  cannot  properly  be  registered 
as  a  trade-mark.     Id. 

1015.  "Nitro-Hunter"  refused  registration 
as  a  trade-mark  for  firearms  in  view  of  a  reg- 
istered mark  for  the  same  goods  including  the 
word  "Nitro."  The  addition  of  the  proper 
name  "Hunter"  does  not  make  a  new  mark. 
Ex  parte  W.  B.  Belknap  &  Co.,  C.  D.  1903, 
105  O.  G.  745. 

1016.  Where  a  word  has  a  well-understood 
arbitrary  meaning,  it  is  not  to  be  refused 
registration  as  a  trade-mark  merely  because 
it  appears  in  some  directories  as  a  surname. 
Ex  parte  Van  Eyck,  C.  D.  1903,  107  O.  G. 
542. 

1017.  The  words  "The  Gibson  Girl"  re- 
fused registration  as  a  trade-mark  for  shoes, 
since  they  refer  to  the  artist  Charles  Dana 
Gibson  and  cannot  be  used  without  his  con- 
sent. Ex  parte  Bishop,  C.  D.  1903,  107  O.  G. 
1973. 

1018.  Bill  of  complaint  praying  an  injunc- 
tion restraining  the  defendant  from  using  the 
words  "Remington-Sholes"  and  "Rcm-Sho"  in 
the  sale  of  type-writers  in  view  of  the  com- 
plainant's prior  use  of  and  right  to  the  words 
"Remington  Standard  Typewriter"  in  the  same 
business  dismissed.  Lower  court  reversed. 
**Howe  Scale  Company  of  1886  and  Fay- 
Sholes  Company  v.  Wyckoff,  Seamans  &  Ben- 
edict, C.  D.  190.1,  116  O.  G.  299. 

1019.  It  is  well  settled  that  a  personal  name 
cannot  be  exclusively  appropriated  by  anyone 
as  against  others  having  a  right  to  use  it.  and 
as  the  name  "Remington"  is  an  ordinary  sur- 
name it  was  manifestly  incapable  of  exclusive 


996 


TRADE  MARKS,  XXXVIII,   (a). 


appropriation  as  a  valid  trade-mark,  and  its 
registration  as  such  could  not  in  itself  give 
it  validity.     ♦*Id. 

1020.  The  courts  will  not  interfere  to  re- 
strain the  use  of  a  family  name  where  the  only 
confusion,  if  any,  results  from  a  similarity  of 
the  names  and  not  from  the  manner  of  its 
use.     **Id. 

1021.  In  the  absence  of  contract,  fraud,  or 
estoppel  any  man  may  use  his  own  name  in 
all  legitimate  ways  and  as  a  whole  or  a  part 
of  a  corporate  name.     **Id. 

1022.  One  corporation  is  not  entitled  to  re- 
strain another  from  using  in  its  corporate  title 
a  name  to  which  others  have  a  common  right. 
The  question  whether  the  use  of  the  name 
was  necessary  is  not  the  test,  but  the  ques- 
tion is  whether  its  use  is  reasonable  and  hon- 
est or  is  calculated  to  deceive.     **Id. 

1023.  Held,  that  the  Remingtons  and  Sholes 
made  a  reasonable  and  fair  use  of  their  names 
in  adopting  the  name  "Remington-Sholes"  for 
their  type-writer  and  in  giving  that  name  to 
the  corporation  formed  for  its  manufacture 
and  sale.  Held,  further,  that  the  fact  that 
they  desired  to  avail  themselves  of  the  gen- 
eral family  reputation  attached  to  the  two 
names  does  not  in  itself  justify  the  assump- 
tion that  their  purpose  was  to  confuse  their 
machines  with  complainant's  or  that  the  use 
of  the  name  was  in  itself  calculated  to  deceive. 
**Id. 

1024.  "Dr.  Pepper"  refused  registration  as 
a  trade-mark  for  beverages.  Ex  parte  Dr. 
Pepper  Company,  C.  D.  190."),  116  O.  G.  593. 

1025.  Where  the  name  "Atwood"  is  the  pre- 
dominating feature  of  the  mark  and  it  appears 
from  applicant's  specimens  to  be  applied  to 
the  goods  merely  as  raised  capital  letters  in 
the  casting  bearing  the  mark,  the  association 
with  the  name  of  the  fanciful  symbol  is  not 
considered  sufficient  to  render  the  mark  reg- 
istrable as  a  whole.  Ex  parte  Pittsburgh 
Valve,  Foundry  and  Construction  Company, 
C.  D.  1907,  12S  O.  G.  887. 

1026.  The  primary  significance  of  the  word 
"Rainier,"  which  forms  part  of  applicant's 
name,  is  that  of  the  name  of  an  individual, 
and  it  is  therefore  not  registrable  as  a  trade- 
mark. Ex  parte  The  Rainier  Company,  C.  D. 
1907,   130  O.  G.  1311. 

1027.  The  word  "Rainier"  written  in  large 
script  letters,  with  a  flourish  extending  from 
the  letter  "R"  beneath  certain  letters  of  the 
■word.  Held,  not  to  be  such  a  distinctive  dis- 
play of  the  name  as  required  by  the  act  of 


1905   to   confer   registrability   upon    the   mere 
name  of  an  individual.    Id. 

1028.  A  trade-mark  consisting  of  the  words 
"The  Alden  Shoe,"  of  which  the  word  "Alden" 
is  printed  in  letters  of  such  relative  sizes  as  to 
form  an  ellipse,  inclosed  within  a  circle  around 
which  is  printed  the  words  "Mannish  Shoes" 
at  the  top  and  "For  Boys"  at  the  bottom,  these 
phrases  being  separated  on  either  side  by  two 
stars.  Held,  not  entitled  to  registration,  on  the 
ground  that  "Alden"  is  the  name  of  an  in- 
dividual and  that  the  other  features  are  de- 
scriptive. Ex  parte  C.  H.  Alden  Company,  C. 
D.  19117,  131  O.  G.  2419. 

1029.  The  use  of  the  letters  forming  the 
name  of  an  individual  of  different  sizes  in- 
creasing from  each  end  toward  the  center, 
forming  in  outline  an  ellipse.  Held,  not  such  a 
distinctive  manner  of  printing  as  to  warrant 
registration,  since  the  name  is  still  the  pre- 
dominating feature.     Id. 

1030.  Where  the  ordinary  surname  "Mayer" 
is  written  in  script,  with  the  letter  "M"  con- 
nected to  the  letter  "y"  and  inclosed  in  two 
concentric  circles,  the  letter  "M"  and  the  letter 
"r"  extending  through  the  inner  circle.  Held, 
not  written  in  such  "a  particular  or  distinctive 
manner"  as  to  warrant  its  registration  as  a 
trade-mark.  Ex  parte  F.  Mayer  Boot  &  Shoe 
Co.,  C.  D.  1910,  151  O.  G.  101-1. 

1031.  A  surname  is  not  susceptible  of  ex- 
clusive appropriation  as  a  trade-mark  by  any 
one.  The  most  the  courts  will  do  where  two 
individuals  are  entitled  to  use  the  same  name 
is  to  correct  any  abuse  by  either  of  that  right. 
*Wm.  A.  Rogers,  Limited  v.  International 
Silver  Co.,  C.  D.  1910,  1.53  O.  G.  1085. 

1032.  A  mark  consisting  of  the  words 
"Rogers,"  with  "1881"  above  and  the  words 
"Quadruple"  and  "New  York"  below  it  and  a 
wreath  surrounding  the  letter  "R"  at  either 
side  thereof.  Held,  not  deceptively  similar  to 
a  mark  consisting  of  the  word  "Rogers,"  pre- 
ceded and  followed  by  an  anchor.    *Id. 

1033.  The  word  "Dean"  held  to  be  an  ordi- 
nary surname  and  not  registrable  as  a  trade- 
mark. Ex  parte  Granger,  C.  D.  1910,  158  O. 
G.  229. 

1034.  The  name  "Brown"  is  a  common  sur- 
name and  is  not  rendered  registrable  by  pre- 
fixing thereto  the  word  "Deacon."  *In  re 
Artesian  Mfg.  Co.,  C.  D.  1911,  166  O.  G.  9S8. 

1035.  Where  the  name  "Deacon  Brown"  is 
printed  in  script  type,  with  a  scroll  extending 
across  all  the  letters  except  the  "D"  and  hav- 
ing the  letters  "D"  and  "B"  connected  across 


TRADE  MARKS,  XXXVIII,  (b). 


597 


the  top  by  two  flourishes,  Held,  not  such  a 
distinctive  manner  of  printing  as  to  render 
the  name  registrable  as  a  trade-mark  (citing 
Ex  parte  Polar  Knitting  Mills,  154  O.  G.  251). 
♦Id. 

1036.  The  ordinary  surname  "Collier"  is 
not  rendered  registrable  by  placing  it  on  a 
red  package.  Ex  parte  Sinnamahoning  Pow- 
der Mfg.  Co.,  C.  D.  1911,  170  O.  G.  481. 

(b)   Of  Applicant. 

1037.  The  word  "Gilson,"  being  the  salient 
feature  of  applicant's  corporate  name,  refused 
registration  as  a  trade-mark  under  the  general 
rule  that  an  ordinary  surname  cannot  be  ap- 
propriated as  a  trade-mark  by  any  one  per- 
son against  others  of  the  same  name  who  are 
using  it  for  a  legitimate  purpose.  Ex  parte 
F.  H.  Gilson  Company,  C.  D.  1898,  83  O.  G. 
1992. 

1038.  "Dalsimer,"  the  surname  of  applicants, 
refused  registration  as  a  trade-mark  for  bi- 
cycles and  parts  thereof  on  the  ground  that 
an  applicant  has  no  right,  under  the  statute, 
to  register  his  surname  as  a  trade-mark.  Ex 
parte  Dalsimer  &  Sons,  C.  D.  1898,  85  O.  G. 
149. 

1039.  As  prior  to  1881  no  one  could  exclu- 
sively appropriate  a  surname  as  a  trade-mark. 
Held,  that  the  word  "Gale,"  a  surname  and 
the  salient  feature  of  applicant's  alleged  trade- 
mark, cannot  be  registered  as  a  trade-mark 
when  applied  to  the  products  of  the  Gale 
Manufacturing  Company,  notwithstanding  its 
use  prior  to  March  3,  1881.  Ex  parte  Gale 
Manufacturing  Co.,  C.  D.  1898,  85  O.  G.  1907. 

1040.  The  word  "Featherstone"  in  script 
letters  in  a  diagonal  line  and  with  a  forward- 
ly-extcnding  understroke  or  flourish  is  merely 
the  name  of  applicant  and  is  not  registrable 
in  view  of  section  3  of  the  trade-mark  act  of 
March  3,  1881.  Ex  parte  A.  Featherstone  & 
Co.,  C.  D.  1899,  86  O.  G.  1497. 

1041.  The  name  of  an  applicant  does  not 
cease  to  be  merely  the  name  of  the  applicant 
because  it  is  in  script  letters  and  disposed 
diagonally.  Its  use  is  an  attempt  to  appro- 
priate that  which  cannot  be  lawfully  appro- 
priated against  others  of  the  same  name.    Id. 

1042.  Where  an  applicant  sought  to  register 
as  a  trade-mark  the  words  "Guenther's  Best" 
surrounded  by  the  representation  of  a  circular 
belt  or  zone  bearing  a  wreath  of  wheat-ears. 
Held,  that  the  mark  should  not  be  registered, 
as  "Guenther"  is  an  ordinary  surname  and  the 


salient  feature  of  applicant's  name,  while  the 
word  "Best"  is  descriptive,  and  that  the  cir- 
cular belt  or  zone  cannot  impart  any  regis- 
trable quality  to  the  symbol,  as  the  belt  or 
zone  is  non-essential.  Ex  parte  Guenther 
Milling  Company,  C.  D.  1899,  86  O.  G.  1986. 

1043.  The  office  should  not  register  a  com- 
posite trade-mark  all  the  features  of  which 
are  objectionable  either  as  being  anticipated 
or  not  a  proper  subject  for  registry.    Id. 

1044.  The  words  "Buffalo  Pitts"  as  a  trade- 
mark for  agricultural  machinery  refused  reg- 
istration, the  word  "Pitts"  being  an  ordinary 
surname  and  a  salient  feature  of  applicant's 
name  and  the  word  "Buffalo"  being  a  geo- 
graphical term  and  also  a  part  of  applicant's 
name,  it  being  well  settled  that  ordinary  sur- 
names and  geographically-descriptive  words 
are  not  registrable.  Ex  parte  Buffalo  Pitts 
Company,  C.  D.  1899,  89  O.  G.  2069. 

1045.  The  name  of  the  applicant  not  being 
registrable  alone  cannot  properly  be  included 
as  an  essential  feature  of  a  mark  to  be  reg- 
istered. Ex  parte  Tabor,  C.  D.  1901,  96  O.  G. 
1036. 

1046.  Although  the  letters  in  the  applicant's 
name  if  arbitrarily  arranged  so  as  to  destroy 
the  identity  of  the  name  would  be  registrable 
as  a  trade-mark,  Held,  that  where  they  are 
printed  one  after  the  other  in  regular  order, 
so  as  to  spell  the  name  in  the  usual  way,  their 
arrangement  cannot  be  considered  arbitrary. 
Id. 

1047.  Where  the  name  of  the  applicant  is 
printed  on  the  arms  of  a  cross  so  that  it  can 
be  read  vertically  or  horizontically  and  the 
single  letter  "B"  is  used  in  both  readings. 
Held,  that  the  arrangement  is  not  such  as  to 
destroy  the  identity  of  the  name  and  to  render 
it  so  arbitrary  and  fanciful  as  to  be  regis- 
trable.    Id. 

1048.  The  word  "Cobb's"  extending  across 
a  pair  of  crossed  corncobs.  Held,  not  registra- 
ble as  a  trade-mark,  since  the  salient  feature 
of  the  mark  is  the  applicant's  surname.  Ex 
parte  Cobb,  C.  D.  1903,  103  O.  G.  1913. 

1049.  The  trade-mark  for  medicine  which 
consists  of  the  words  "Hollistcr's  Rocky 
Mountain,"  qualified  by  the  associated  portrait 
of  A.  H.  Hollister,  Held,  to  be  registrable.  Ex 
parte  Madison  Medicine  Company,  C.  D.  1903, 
103  O.  G.  1914. 

1050.  Where  a  surname  is  associated  with 
a  portrait  of  a  person  bearing  that  name,  the 
surname  is  not  used  in  a  general  way  and 
open  to  the  use  of  all  other  persons  of  that 


598 


TRADE  MARKS,  XXXVIII,  (b). 


name,  but  its  use  is  confined  to  the  particular 
person  designated  by  means  of  the  associated 
portrait.  The  name  so  used  is  as  exclusive 
and  arbitrary  as  the  autograph-signature  of 
that  person.    Id. 

1051.  Where  the  name  of  an  applicant  is 
the  same  as  the  word  used  to  describe  gener- 
ically  a  class  of  objects  and  the  word  without 
limitation  is  registered  on  the  plea  that  the 
particular  object  selected  for  registration  is 
described  thereby,  Held,  that  such  registra- 
tion should  not  be  permitted,  as  it  would  be 
contrary  to  the  provisions  of  section  3  of  the 
act  of  March  3,  1881,  that  no  alleged  trade- 
mark shall  be  registered  which  is  merely  the 
name  of  the  applicant.  E.x  parte  Cross,  C.  D. 
1903,   107   O.   G.   2236. 

1052.  The  word  "Van  Horn" -associated  with 
a  ram's  forehead  with  horns.  Held,  not  reg- 
istrable as  a  trade-mark,  since  the  salient  fea- 
ture of  the  mark  is  the  surname  of  one  of  the 
applicants.  Ex  parte  Van  Horn  &  Sawtell,  C. 
D.  1904,  109  O.  G.  1069. 

1053.  An  applicant's  name  cannot  be  in- 
cluded as  feature  of  registered  trade-mark 
unless  it  is  reduced  to  a  position  of  relative 
obscurity.    Id. 

1054.  The  ordinary  surname  "Engelhard" 
written  in  ordinary  copy-book  script  upon  a 
picture  of  a  cloud-bank.  Held,  not  registrable 
as  a  trade-mark.  Ex  parte  A.  Engelhard  & 
Sons  Company,  C.  D.  1904,  109  O.  G.  1886. 

1055.  The  statute  prohibits  the  registration 
of  a  mark  which  is  merely  the  name  of  the 
applicant,  and  therefore  where  the  name  is  in- 
cluded in  a  mark  presented  it  cannot  be  reg- 
istered unless  the  other  elements  of  the  mark 
remove  it  from  the  inhibition  of  the  statute. 
Id. 

1056.  The  inhibition  against  the  registra- 
tion of  mere  names  is  not  to  be  avoided  by 
insignificant  details  of  form  and  by  the  use 
of  accessories  of  moderate  importance,  but 
only  by  those  which  rise  into  such  relative 
importance  as  to  so  dwarf  the  mere  name  as 
to  render  it  of  minor  importance  in  the  whole 
eflFect  produced  upon  the  mind  of  the  observer. 
Id. 

1057.  The  spirit  of  the  statute  requires  the 
reduction  of  the  name  element  in  the  mark  to 
be  carried  so  far  that  the  name  becomes  a  neg- 
ligible or  non-essential  factor  in  the  whole  ef- 
fect produced,  so  that  if  the  rest  of  the  mark 
should  remain  and  the  name  should  be  changed 
it  would  not  present  a  substantially  different 
appearance.     Id. 


1058.  The  form  of  mark  presented  must  be 
regarded  as  merely  the  name  of  the  applicant 
where  the  mere  name  printed  in  the  ordinary 
way  by  a  rival  merchant  upon  the  same  class 
of  goods  would  create  confusion — in  other 
words,  where  the  mere  name  would  infringe. 
Id. 

1059.  Trade-marks  are  primarily  intended 
to  be  indexes  of  origin  substituted  for  the 
name  of  the  maker,  and  therefore  to  attempt 
to  insert  among  the  characteristics  of  trade- 
marks those  names  which  it  was  the  primary 
purpose  of  trade-marks  to  supplant  is  a  ten- 
dency in  the  wrong  direction  and  a  perverted 
use  of  the  trade-mark.    Id. 

1060.  If  names  were  entirely  excluded  from 
trade-marks  and  were  then  placed  in  prox- 
imity to  them  upon  the  goods  as  used,  the 
right  separation  of  the  registrable  and  non- 
registrable  elements  would  be  best  made.     Id. 

1061.  The  name  "Wm.  A.  Rogers,"  Held, 
entitled  to  registration  under  the  last  proviso 
of  section  5  of  the  trade-mark  act  approved 
February  20,  1905,  notwithstanding  the  prior 
adoption  and  continuous  use  of  the  names 
"Wm.  Rogers  Mfg.  Co.,"  and  "Wm.  Rogers 
and  Son,"  as  a  party  is  entitled  to  use  his  own 
name,  actually  or  legally  acquired,  without 
regard  to  the  confusion  that  may  result  from 
similarity.  *Wm.  A.  Rogers,  Limited  v.  In- 
ternational Silver  Company,  C.  D.  1907,  129 
O.  G.  2503. 

1062.  As  an  ordinary  surname  can  not  be 
appropriated  as  a  trade-mark  to  the  exclu- 
sion of  others  of  the  same  name,  it  follows 
that  the  rules  of  law  relating  to  the  similar- 
ity of  technical  trade-marks  can  not  be  ap- 
plied to  the  use  of  such  surname  as  a  mark, 
notwithstanding  the  confusion  that  may  result 
from  its  legitimate  use  by  such  others.  The 
law  relating  to  unfair  competition  may  apply 
under  certain  conditions,  but  not  that  of  in- 
fringement.   *Id. 

1063.  The  applicant,  Woodbury,  having 
given  opposer  the  exclusive  right  to  use  cer- 
tain trade-names  and  a  trade-mark  which  had 
been  associated  for  many  years  with  appli- 
cant's name.  Held,  that  he  is  not  entitled  to 
register  a  mark  of  which  the  name  "Wood- 
bury" constitutes  a  prominent  feature  for 
goods  of  the  same  descriptive  properties.  The 
Andrew  Jergens  Co.  v.  Woodbury,  C.  D.  1908, 
133  O.  G.  513. 

1064.  Where  the  applicant  is  a  corporation 
a  trade-name  which  is  substantially  a  repro- 
duction of  the  corporate  name  cannot  be  reg- 


TRADE  MARKS,  XXXIX,  XL. 


599 


istered  as  a  technical  trade-mark.  *Kentucky 
Distilleries  &  Warehouse  Company  v.  Old 
Lexington  Club  Distilling  Company,  C.  D. 
1908,  135  O.  G.  226. 

1065.  The  words  "Union  Carbide"  Held,  not 
registrable  by  the  Union  Carbide  Company  as 
a  trade-mark  for  calcium  carbid,  as  these 
words  substantially  constitute  the  name  of 
the  applicant.  Ex  parte  Union  Carbide  Co., 
C.  D.   1908,  135  O.  G.  4.50. 

1066.  The  word  "Champion"  being  substan- 
tially the  name  of  the  applicant,  The  Cham- 
pion Safety  Lock  Company,  and  not  written 
in  a  distinctive  manner,  Held,  that  its  registra- 
tion is  prohibited  by  section  5  of  the  act  of 
February  20,  190.5.  (Kentucky  Distilleries  and 
Warehouse  Company  v.  Old  Lexington  Club 
Distilling  Company,  C.  D.  1908,  417,  135  O.  G. 
220,  31  App.  D.  C.  223.)  Ex  parte  The  Cham- 
pion Safety  Lock  Company,  C.  D.  1909,  143 
O.  G.  1109. 

1067.  Where  the  mark  includes  the  name 
of  the  applicant  not  itself  written,  printed, 
impressed,  or  woven  in  a  particular  or  dis- 
tinctive manner,  the  fact  that  the  name  is  as- 
sociated with  arbitrary  features  does  not  ren- 
der the  mark  registrable.  Ex  parte  The  Amu- 
let Chemical  Company,  C.  D.  1909,  146  O.  G. 
719. 

1068.  "To  entitle  any  mark  to  registration 
which  consists  merely  in  the  name  of  a  cor- 
poration it  must  be  applied  'in  some  particu- 
lar or  distinctive  manner.'  *  *  *  The  word 
'merely'  as  used  in  the  statute  was  clearly 
intended  to  prevent  the  registration  by  a  cor- 
poration of  its  own  name,  whether  that  name 
be  the  subject  of  a  technical  trade-mark  or 
not."  *In  re  The  Success  Company,  C.  D. 
1910,  152   O.   G.  958. 

1069.  The  word  "Success"  Held,  to  be  the 
dominant  feature  of  the  name  of  the  appli- 
cant, "The  Success  Company,"  and  therefore 
not  registrable  as  a  technical  trade-mark.    *Id. 

1070.  Where  the  three  words  composing  the 
name  of  the  applicant  are  so  formed  that  the 
tops  of  each  show  a  continuous  slant  down- 
ward from  beginning  to  end,  and  all  of  the 
horizontal  parts  of  the  letters  are  provided 
with  a  representation  of  snow  or  ice,  Held, 
that  the  name  is  not  printed  or  written  in 
such  peculiar  and  distinctive  manner  as  to 
justify  its  registration  as  a  trade-mark.  Ex 
parte  Polar  Knitting  Mills,  C.  D.  1910,  154  O. 
G.  251. 

1071.  Where  a  trade-mark  was  refused  reg- 
istration by  the  commissioner  on  the  ground 


that  it  was  merely  the  name  of  the  applicant 
and  thereafter  the  trade-mark  act  was  amend- 
ed so  as  to  permit  the  registration  of  an  ap- 
plicant's name  or  a  portion  thereof  if  other- 
wise registrable,  Held,  that  this  amendment 
constitutes  no  ground  for  reopening  the  case. 
Ex  parte  The  Willowcraft  Shops,  C.  D.  1911, 
170  O.  G.  243. 

XXXIX.  Protest. 

1072.  A  protest  by  a  party  to  the  interfer- 
ence against  the  registration  of  the  opposing 
party's  trade-mark  was  referred  to  the  exam- 
iner of  trade-marks  for  ex  parte  considera- 
tion after  the  conclusion  of  the  interference. 
Carey  v.  New  Home  Sewing  Machine  Com- 
pany, C.  D.  1901,  97  O.  G.  1171. 

1073.  Where  a  protest  is  filed  against  the 
registration  of  a  trade-mark  to  an  applicant 
on  the  ground  that  it  was  first  used  by  some 
other  party  and  it  is  requested  that  proceed- 
ings be  instituted  so  that  the  facts  may  be 
established  by  competent  evidence,  Held,  that 
the  protest  will  be  dismissed.  In  re  Dietz, 
C.    D.   1903,   104   O.   G.   852. 

XL.  Public  Policy. 

1074.  Where  a  simulation  of  the  United 
States  shield  is  used  to  form  a  part  of  a  trade- 
mark, Held,  not  registrable,  as  the  appearance 
is  such  as  to  impress  the  observer  with  the 
fact  that  the  shield  and  the  colors  of  the 
United  States  are  being  used  for  advertise- 
ment in  trade.  Such  use  of  the  national  em- 
blems and  colors  is  against  public  policy  and 
is  not  to  be  encouraged.  Ex  parte  Ball,  C.  D. 
1902,  102,  98  O.  G.  2366.  Ex  parte  Brands- 
ville  Fruit  Farm  Co.,  C.  D.  1903,  103  O.  G. 
660. 

1075.  The  picture  and  facsimile  signature  of 
Grover  Cleveland  Held,  not  registrable  as  a 
trade-mark  for  cigars.  Ex  parte  The  Banner 
Cigar  Manufacturing  Company,  C.  D.  1909, 
138  O.  G.  528. 

1076.  To  use  the  names  of  ex-Presidents  of 
the  LTnited  States  as  trade-marks  tends  to 
detract  from  the  dignity  of  the  high  office 
which  they  have  held,  and  for  that  reason  it 
is  believed  that  it  is  against  public  policy  for 
the  patent  office  to  encourage  such  use  of 
their  names  by  allowing  them  to  be  registered 
as  trade-marks.     Id. 

1077.  "The  word  as  here  used  does  not 
refer  to  the  United   States  Navy  specifically, 


600 


TRADE  MARKS,  XLI,  XLII. 


but  in  a  generic  sense.  There  is  nothing  in 
the  proposed  use  of  the  word  to  suggest  that 
the  government  has  given  its  approval  to  the 
character  or  quahty  of  the  merchandise  on 
which  it  is  used  as  a  trade-mark.  It  does  not, 
therefore,  come  within  the  class  of  trade 
names,  the  registration  of  which  is  prohibited 
on  the  ground  of  public  policy."  *In  re  The 
National  Candy  Co.,  C.  D.  1910,  156  O.  G. 
529. 

XLI.  Publication. 

1078.  Where  the  publication  of  trade-mark 
in  the  Official  Gazette  for  purposes  of  oppo- 
sition erroneously  described  the  class  of 
goods,  Held,  that  the  mark  should  be  repub- 
lished. Weil-Haskell  Company  v.  Griffon 
Company,  C.  D.  lOO.i,  119  O.  G.  649. 

1079.  Where  a  mark  was  erroneously  pub- 
lished in  Official  Gazette,  as  for  "clothes"  in- 
stead of  cloths,  and  an  opposition  was  filed 
based  upon  this  error,  to  which  demurrer  was 
made.  Held,  that  the  mark  should  be  repub- 
lished and  that  the  opposition  should  be  dis- 
missed with  permission  to  renew  after  the 
new  publication.     Id. 

1080.  The  publication  of  trade-marks  under 
section  6  of  the  act  of  1905  should  precede  the 
declaration  of  interferences  in  regard  to  them. 
Walter  Baker  &  Company,  Limited  v.  Haw- 
ley  and  Hoops,  C.  D.  1905,  119  O.  G.  653. 

1081.  The  provision  in  section  6  of  the  act 
of  1905  that  publication  is  to  occur  when  it 
appears  "that  the  applicant  is  entitled  to  have 
his  trade-mark  registered"  does  not  preclude 
publication  where  two  parties  claim  the  mark 
and  an  interference  is  necessary.  The  provi- 
sion means  that  the  mark  is  regarded  as  regis- 
trable except  for  contests.    Id. 

1082.  The  publication  of  a  mark  does  not 
necessarily  mean  that  it  will  be  registered  to 
the  applicant,  since  his  right  to  registration 
depends  upon  the  result  of  contests  which 
may  be  conducted  thereafter.    Id. 

1083.  The  publication  of  trade-marks  is  for 
the  purpose  of  permitting  contests  as  to  the 
applicant's  right  to  registration,  and  it  is  to 
the  interest  of  applicants  as  well  as  this  of- 
fice, that  all  contests  be  conducted  at  once 
instead  of  piecemeal.     Id. 

1084.  A  trade-mark  will  not  be  republished 
merely  for  the  purpose  of  extending  the  pe- 
riod of  thirty  days  provided  by  statute  for  the 
filing  of  oppositions.  In  re  J.  G.  B.  Siegert 
&  Hijos,  C.  D.  1907,  126  O.  G.  3423. 


1085.  The  question  whether  any  substantial 
change  has  been  made  by  amendment  after 
publication  in  the  class  of  goods  stated  in  an 
application  for  registration  which  warrants 
a  republication  of  the  mark  is  one  which 
should  be  left  to  the  discretion  of  the  exam- 
iners of  trade-marks.  Ex  parte  The  Amer- 
ican Wringer  Company,  C.  D.  1908,  134  O.  G. 
1803. 

1086.  The  question  of  republication,  what- 
ever may  be  the  ground  therefor,  is  one  that 
should  be  left  to  the  discretion  of  the  exam- 
iner of  trade-marks,  and  his  action  on  such 
question  will  not  be  disturbed  unless  it  be 
shown  that  such  discretion  has  been  abused. 
Ex  parte  Barclay  and  Barclay,  C.  D.  1909,  143 
O.  G.  1109. 

1087.  Where  after  a  mark  for  the  registra- 
tion of  which  application  has  been  made  is 
published  registration  of  such  mark  as  a 
technical  trade-mark  is  refused  and  the  ap- 
plicant amends  his  application  by  averring  ex- 
clusive use  of  the  mark  for  ten  years  next 
preceding  the  passage  of  the  trade-mark  act, 
Held,  that  "the  commissioner  of  patents  was 
entirely  justified  in  ordering  a  second  publi- 
cation. *Carter  Medicine  Co.  v.  Barclay  & 
Barclay,  C.  D.  1911,  162  O.  G.  785. 

XLII.  Registration. 

1088.  The  patent  office  should  not  register 
a  trade-mark  in  the  face  of  a  prior  registra- 
tion of  the  same  mark  for  exactly  the  same 
class  of  goods  unless  the  proofs  are  so  clear 
and  convincing  that  to  refuse  to  do  so  would 
work  an  injustice  to  the  applicant.  Sherwood 
V.  Horton,  Cato  &  Co.,  C.  D.  1898,  84  O.  G. 
2018. 

1089.  The  owners  of  trade-marks  who  are 
permitted  to  obtain  registration  of  the  same 
are  those  that  in  the  manner  and  under  the 
conditions  prescribed  shall  have  used  such 
words  and  symbols  only  as  at  common  law 
are  susceptible  of  exclusive  appropriation  as 
trade-marks,  and  this  is  one  of  the  essential 
elements  of  "the  presumptive  lawfulness  of 
claim  to  the  alleged  trade-mark"  with  the  deci- 
sion of  which  the  commissioner  of  patents  is 
charged.  *United  States  of  America  ex  rel. 
Bronson  Co.  v.  Duell,  Commissioner  of  Pat- 
ents, C.  D.  1901,  95  O.  G.  229. 

1090.  The  fact  that  a  registrant  may  not 
object  to  the  subsequent  registration  by  an- 
other is  not  of  consequence,  since  the  right  to 


TRADE  MARKS,  XLII. 


601 


registration  cannot  be  conferred  by  license 
from  the  real  owner.  The  law  authorizes  reg- 
istration by  the  owner  alone.  Ex  parte  Wil- 
lard  Chemical  Co.,  C.  D.  1903,  107  O.  G.  1972. 

1091.  This  office  will  not  register  the  word 
"Eclipse"  alone  as  the  applicant's  trade-mark 
when  it  appears  from  the  specimens  filed  that 
in  actual  use  it  has  been  printed  across  a  rep- 
resentation of  the  sun  in  eclipse.  Ex  parte 
Standard  Underground  Cable  Company,  C. 
D.  190.1,  119  O.  G.  1925. 

1092.  Where  a  trade-mark  as  used  is  made 
up  of  separate  features,  each  of  which  con- 
stitutes trade-mark  subject-matter,  registra- 
tion must  include  the  whole  and  not  merely 
one  of  the  features.     Id. 

1093.  Since  registration  does  not  create  or 
modify  the  trade-mark  right  which  the  appel- 
lant has,  it  is  fundamental  that  the  mark  reg- 
istered be  the  mark  used.    Id. 

1094.  Where  a  mark  is  registered  for  car- 
tons, but  the  actual  trade  which  the  mark  rep- 
resents is  in  merchandise  contained  in  the 
cartons.  Held,  that  the  registration  is  invalid. 
Pioneer  Suspender  Company  v.  Lewis  Oppen- 
heimer's  Sdns,  C.  D.  1907,  128  O.  G.  1293. 

1095.  The  fact  that  one  of  the  parties  is  a 
registrant  does  not  necessarily  create  a  bar 
to  the  other  party's  obtaining  registration. 
Home  V.  Somers  &  Co.,  C.  D.  1907,  129  O.  G. 
1609. 

1096.  The  action  of  the  office  in  issuing  a 
number  of  registrations  of  trade-marks  which 
include  the  representation  of  an  eagle  for 
beer  does  not  indicate  that  the  office  has  rec- 
ognized the  representation  of  an  eagle  for 
beer  as  common  property.    Id. 

1097.  Where  an  applicant  for  the  registra- 
tion of  the  representation  of  an  eagle  as  a 
trade-mark  has  several  prior  registrations  of 
a  trade-mark  which  includes  the  capital  let- 
ter "A"  entwined  with  the  figure  of  an  eagle, 
Held,  that  he  is  not  estopped  by  his  prior  reg- 
istrations from  obtaining  registration  upon  his 
present  application.  Anheuser-Busch  Brew- 
ing Association  v.  D.  G.  Vuengling  &  Son, 
et  al.,  C.  D.  1907,  129  O.  G.  2501. 

1098.  The  registration  of  a  trade-mark  is 
not  conclusive  of  a  right  of  property  therein. 
*Wm.  A.  Rogers,  Ltd.  v.  International  Silver 
Co.,   C.   D.   1907,  129  O.  G.  2503. 

1099.  An  expired  registration  is  still  evi- 
dence to  some  extent  of  the  existence  of  a 
mark,  and  the  office  is  not  justified  in  permit- 
ting registration  of  the  same  mark  or  a  sim- 


ilar mark  by  another  until  he  has  in  some  way 
overcome  the  registration.  Ex  parte  Collins, 
C.  D.  1907,  130  O.  G.  1485. 

1100.  The  fact  that  the  owner  of  a  trade- 
mark knowingly  permits  the  use  thereof  by 
another  upon  goods  and  in  advertisements  for 
years  without  protest  furnishes  no  sufficient 
ground  for  refusing  registration,  as  it  is  well 
settled  that  mere  delay  in  asserting  a  trade- 
mark right  does  not  work  a  forfeiture  thereof. 
(Menendez  v.  Holt,  C.  D.  1889,  344,  46  O.  G. 
971,  128  U.  S.  514;  McLean  v.  Fleming,  C.  D. 
1878,  262,  13  O.  G.  913,  96  U.  S.  245,  253.) 
John  T.  Lewis  &  Bros.  Co.  v.  Phoenix  Paint  & 
Varnish  Co.,  C.  D.  1908,  134  O.  G.  1049. 

1101.  The  fact  that  a  fermented  malt  liq- 
uor to  which  applicant  applied  its  mark  was 
advertised  as  a  tonic  and  as  a  product  entirely 
different  from  that  described  in  the  applica- 
tion is  sufficient  ground  for  the  refusal  of 
registration.  *The  Peter  Schoenhofen  Brew- 
ing Co.  V.  The  Maltine  Co.,  C.  D.  1908,  134 
O.  G.  1805. 

1102.  The  fact  that  a  mark  has  been  pub- 
lished in  the  Official  Gazette  and  thereafter 
opposition  proceedings  successfully  defended 
does  not  preclude  the  examiner  of  trade- 
marks from  refusing  to  register  the  mark 
where  a  statutory  bar  is  found  or  where  by 
reason  of  the  interpretation  of  the  statutes 
relating  to  trade-marks  in  decisions  rendered 
by  the  court  and  by  the  commissioner  subse- 
quent to  the  publication  of  the  mark  he  is  of 
the  opinion  that  registration  of  the  mark 
should  be  refused.  Ex  parte  Barclay  &  Bar- 
clay, C.  D.  1908,  135  O.  G.  219. 

1103.  A  party  may  not  segregate  his  trade- 
mark and  by  registering  each  of  its  features 
separately  thereby  prevent  the  regis- 
tration by  another  of  any  particular 
part  of  the  mark  as  actually  used  not- 
withstanding that  such  registration  and  use 
would  cause  no  confusion  to  the  trade  and  no 
prejudice  to  the  first  registrant.  *John  Rut- 
gert  Planten  (H.  R.  Planten  substituted)  v. 
Canton  Pharmacy  Company,  C.  D.  1909,  143 
O.  G.  1113. 

1104.  By  the  passage  of  the  trade-mark  act 
congress  did  not  intend  to  confer  upon  any 
dealer  the  right  to  register  fictitious  marks 
for  the  purpose  of  limiting  and  restricting  the 
field  of  registration  of  others.  When,  there- 
fore, the  commissioner  is  satisfied  that  the 
applicant  is  attempting  to  register  a  particular 
feature  of  a  registered  mark,   he  should  re- 


603 


TRADE  MARKS,  XUII,  (a). 


quire  evidence  that  the  mark  of  the  applica- 
tion has  actually  been  used  as  a  trade-mark. 
Not  having  limited  his  claims  in  his  original 
application,  the  applicant  cannot  prove  statu- 
tory use  of  the  mark  of  the  second  applica- 
tion by  showing  such  use  of  the  registered 
mark.    *Id. 

XLIII.  Registrability. 
(a)  In   General. 

1105.  Applicant  sought  to  register  as  a 
trade-mark  for  mixtures  of  liquids  containing 
celery  a  bottle  of  peculiar  and  original  form. 
Held,  that  registration  should  be  refused,  as 
the  form  of  a  package  alone  can  rarely  be  the 
subject  of  trade-mark  protection.  If  the  form 
is  peculiar  enough  to  be  protected,  it  should 
be  the  subject  of  a  design  patent.  Ex  parte 
Dunkley  Celery  and  Preserving  Company,  C. 
D.  1898,  84  O.  G.  310. 

1106.  A  trade-mark  should  not  be  registered 
containing  as  an  essential  feature  thereof 
words  of  an  advertising  character.  Ex  parte 
Parker,  Holmes  &  Co.,  C.  D.  1893,  85  O.  G. 
287. 

1107.  The  law  is  very  clear  that  the  mark 
which  is  shown  and  described  in  the  regis- 
tration must  be  the  same  as  the  mark  which 
is  actually  used.  There  is  no  provision  for 
the  registration  of  a  mark  not  in  actual  use 
or  which  differs  from  that  in  actual  use.  (Cit- 
ing Ex  parte  Hall,  ante,  85,  98  O.  G.  2174.) 
Ex  parte  Crowley,  C.  D.  1902,  99  O.  G.  228. 

1108.  Whether  or  not  a  word  is  registrable 
as  a  trade-mark  depends  upon  the  meaning 
which  will  be  given  to  it  by  the  purchasing 
public.  H  it  will  be  understood  as  indicating 
origin  or  ownership,  it  is  registrable.  Ex 
parte  Aspegren  &  Co.,  C.  D.  1902,  100  O.  G. 
684. 

1109.  Merely  printing  a  mark  otherwise  not 
registrable  in  script  with  a  flourish  beneath 
it  does  not  render  it  registrable.  Ex  parte 
Miame  Clothing  Manufacturing  Co.,  C.  D. 
1902,  100  O.  G.  1975. 

1110.  Where  it  appears  that  the  word 
"Rose"  alone  has  been  used  as  a  trade-mark, 
Held,  that  the  words  "Roosevelt  Rose"  will 
be  refused  registration  because  they  involve 
the  use  of  the  President's  name.  Ex  parte 
R.  I.  Sherman  Manufacturing  Company,  C.  D. 
1902,  101  O.  G.  3105. 

1111.  It  is  against  public  policy  for  this  of- 
fice to  lend  its  sanction  to  the  use  of  the  Pres- 


ident's name  by  granting  registration  therefor 
as  a  trade-mark  without  his  express  consent. 
Id. 

1112.  When  the  trade-mark  shown  in  the 
drawing  comprises  the  representation  of  an 
ingot  of  bearing  metal  of  a  particular  form 
with  the  name  "Dodge"  cast  thereon  and  sim- 
ilar bars  of  metal  are  shown  in  prior  regis- 
trations, Held,  that  since  the  applicant  can 
have  no  trade-mark  in  the  form  or  appearance 
of  the  merchandise  or  in  the  mere  name  of 
an  individual  appearing  thereon  the  mark  is 
not  registrable.  Ex  parte  Dodge  Manufac- 
turing Company,  C.  D.  1907,  128  O.  G.  2531. 

1113.  It  being  well  settled  that  the  form  of 
part  of  a  machine  is  not  proper  subject-matter 
for  a  trade-mark  the  form  of  the  face  plate 
of  a  type-writing  machine  is  not  registrable, 
since  it  is  necessary  to  give  a  finished  appear- 
ance to  the  machine.  Ex  parte  Underwood 
Typewriter  Company,  C.  D.  1907,  131  O.  G. 
2419. 

1114.  The  purpose  of  the  act  of  1905  is  to 
prevent  and  not  to  promote  confusion,  to  pro- 
tect and  not  to  deceive  the  public.  The  lan- 
guage used  empowers  the  commissioner  to 
exercise  his  discretion  as  to  whether  a  pro- 
posed mark  should  be  registered.  If  in  his 
opinion  its  registration  will  "be  likely  to 
cause  confusion  or  mistake  in  the  mind  of  the 
public"  or  "deceive  purchasers,"  he  is  bound 
to  reject  it.  *In  re  S.  C.  Herbst  Importing 
Company,  C.  D.  1908,  134  O.  G.  1565. 

1115.  Where  the  specimens  filed  with  the 
application  for  registration  show  that  the 
words  alleged  to  constitute  the  trade-mark 
have  not  been  used  as  a  trade-mark,  registra- 
tion should  be  refused.  Ex  parte  The  Maga- 
zine and  Book  Company  of  New  York,  C.  D. 
1908,  135  O.  G.  661. 

1116.  A  registrable  trade-mark  cannot  be 
made  by  combining  two  non-registrable  words. 
Ex  parte  Meyer  Brothers  Coffee  and  Spice 
Company,  C.  D.  1908,  135  O.  G.  893. 

1117.  The  name  given  to  a  copyrightable  ar- 
ticle is  not  registrable  as  a  trade-mark.  (Black 
V.  Ehrich,  44  Fed.  Rep.  793.)  Ex  parte  The 
Craftsman's  Guild,  C.  D.  1909,  143  O.  G.  257. 

1118.  Where  an  applicant  is  confronted  with 
a  decree  of  a  court  which  at  least  raises  a 
strong  presumption  against  his  right  to  regis- 
tration, that  presumption  is  not  overcome  by 
the  formal  statement  contained  in  the  affidavit 
in  support  of  his  declaration.  *In  re  Johann 
Hoff,  C.  D.  1909,  143  O.  G.  260. 


TRADE  MARKS,  XUII,  (b),  XLIV. 


603 


(b)  Color  and  Form. 

1119.  The  word  "Olive"  refused  registra- 
tion as  a  trade-mark  for  bicycles,  as  the  word 
simply  indicates  the  color  of  the  bicycles  man- 
ufactured by  the  applicant.  Ex  parte  Olive 
Wheel  Company,  C.  D.  1898,  84  O.  G.  187!. 

1120.  The  word  "Red"  refused  registration 
as  a  trade-mark  for  snuflf,  on  the  ground  that 
neither  the  color  alone  of  a  package,  nor  the 
color  alone  of  an  article  of  commerce  can 
constitute  a  valid  trade-mark.  Ex  parte  Pear- 
son Tobacco  Company,  C.  D.  1898,  85  O.  G. 
287. 

1121.  Where  it  is  contended  that  an  issue 
covering  broadly  a  streak  of  distinctive  color 
applied  to  a  wire  rope  is  too  broad  and  in- 
definite to  be  the  subject-matter  of  a  lawful 
trade-mark.  Held,  that  the  authorities  support 
the  examiner's  holding  that  it  is  registrable. 
Broderick  &  Bascom  Rope  Company  v.  Les- 
chen  &  Sons  Rope  Co.,  C.  D.  1901,  96  O.  G. 
1647. 

1122.  An  alleged  mark  for  tubes  which 
consist  of  flakes  of  mica  applied  to  the  outside 
of  the  tube,  so  as  to  give  it  a  mottled  appear- 
ance is  not  proper  subject-matter  for  regis- 
tration as  a  trade-mark.  Ex  parte  American 
Circular  Loom  Company,  C.  D.  1906,  122  O.  G. 
1725. 

1123.  The  restrictions  upon  the  general  right 
to  make,  use,  and  sell  which  are  imposed  by 
patents  should  not  be  extended  by  the  recog- 
nition of  machines  or  designs  as  trade-marks. 
Id. 

1124.  Custom  and  reason  require  that  a 
trade-mark  shall  have  an  existence  so  dis- 
tinct from  the  goods  to  which  it  is  applied 
that  it  will  be  readily  recognized  by  the  pub- 
lic and  by  purchasers  as  an  arbitrary  symbol 
adopted  to  authenticate  origin.     Id. 

1125.  A  trade-mark  consisting  of  "flakes  of 
mica  impressed  or  otherwise  applied  to  the 
external  surface  of  an  insulating  tube  or  tu- 
bular coverings  for  electric  wires"  was  prop- 
erly refused  registration,  for  the  reason  that 
the  registration  would  operate,  so  far  as  it 
could  have  any  effect,  to  give  the  applicant 
a  monopoly  of  conduits  or  tubular  coverings 
of  flake-mica  composition.  The  office  of  a 
trade-mark  in  a  legal  sense  is  to  point  out 
distinctly  the  origin  or  ownership  of  the  ar- 
ticle to  which  it  is  aflftxed,  or,  in  other  words, 
to  give  notice  who  was  the  producer.  Words, 
letters,  or  symbols  which  indicate  merely  the 
quality  of   the   goods   to  which  they  are  af- 


fixed cannot  be  appropriated  as  trade-marks. 
Canal  Co.  v.  Clark,  1  O.  G.  279,  13  Wall.  311, 
332;  Lawrence  Mfg.  Co.  v.  Tennessee  Mfg. 
Co.,  C.  D.  1891,  415,  55  O.  G.  1528,  138  U.  S. 
537,  547.  *In  re  American  Circular  Loom 
Company,  C.  D.  1907,  126  O.  G.  2191. 

1126.  If  the  sole  purpose  of  the  use  of  the 
flakes  of  mica  is  to  obtain  protection  "for  the 
distinctive  appearance  obtained  by  placing 
bright  scales  on  a  dark  background,"  regis- 
tration was  properly  denied,  on  the  ground 
that  it  was  an  ingenious  attempt  to  obtain  a 
trade-mark  of  which  color,  unconnected  with 
some  symbol  or  design,  is  the  essential  fea- 
ture. (Leschen  Rope  Co.  v.  Broderick,  201  U. 
S.  106,  171.)     *Id. 

1127.  The  words  "Spot  Cord"  not  being  the 
mere  equivalent  or  alternative,  in  a  trade- 
mark sense,  of  a  cord  having  spots  thereon, 
such  words  will  not  be  refused  registration 
on  the  ground  that  a  mark  consisting  of  spots 
on  a  cord  is  too  indefinite  to  form  trade-mark 
subject-matter.  Silver  Lake  Co.  v.  Samson 
Cordage  Works,  C.  D.  1907,  131  O.  G.  1920. 

1128.  A  trade-mark  for  fountain-pens  de- 
scribed as  follows :  "The  feed-bar  is  red  and 
the  portion  of  the  fountain-pen  reservoir  or 
handle  adjacent  to  the  feed-bar  is  black." 
Held,  not  registrable.  *In  re  Watermann, 
C.  D.  1910,  152  O.  G.  232. 

1129.  The  color  of  the  package  in  which 
goods  are  placed  cannot  constitute  a  trade- 
mark for  such  goods,  and  the  examiner  prop- 
erly refused  to  allow  applicant  to  describe  the 
mark  as  appearing  on  a  red  package.  Ex 
parte  Sinnamahoning  Powder  Mfg.  Co.,  C.  D. 
1911,  170  O.  G.  481. 

XLIV.  Statutes. 

1130.  By  the  change  in  the  wording  of  the 
law  when  section  3  of  the  act  of  1881  was 
adopted  congress  did  not  intend  to  throw 
open  the  door  of  registration  to  every  name 
and  symbol  that  caprice  might  adopt  regard- 
less of  the  old  and  well-settled  rules  of  law 
as  to  what  words  and  marks  constitute  proper 
trade-marks.  United  States  of  .America,  ex 
rel.  Bronson  Co.  et  al.  v.  Duell,  Com.  of  Pat., 
C.  D.  1901,  95  O.  G.  229. 

1131.  The  words  "lawfully  used"  in  section 
3  of  the  act  of  1881  means  a  use  which  could, 
under  established  rules  of  law,  result  in  the 
lawful  exclusive  appropriation  of  the  alleged 
trade-mark  and  does  not  mean  merely  use  in 
lawful  commerce.     Id. 


604 


TRADE  MARKS,  XLV,  XLVI,  (a). 


XLV.  Scope. 

1132.  A  statement  in  the  description  of  a 
trade-mark  application  setting  forth  what 
changes  may  be  made  in  the  mark  as  shown 
in  the  facsimile  without  destroying  its  iden- 
tity will  not  be  permitted.  Ex  parte  Small, 
C.  D.  1902,  101  O.  G.  219. 

1133.  Parties  will  not  be  permitted  to  de- 
fine in  the  description  their  understanding  of 
the  scope  of  the  protection  which  will  be  af- 
forded by  their  trade-mark  registration,  since 
that  is  a  matter  for  the  courts.    Id. 

1134.  The  right  to  the  exclusive  use  of  a 
trade-mark  is  acquired  only  by  actual  use,  and 
registration  is  simply  a  recording  of  that  right. 
The  record  or  registration  must  therefore  be 
of  the  particular  mark  just  as  it  has  been  used. 
Ex  parte  Listman  Mill  Co.,  C.  D.  1905,  IW 
O.  G.  340. 

1135.  The  scope  of  the  trade-mark  right 
which  the  applicant  possesses  can  be  neither 
broadened  nor  limited  by  the  form  of  the  ap- 
plication for  registration.  The  law  does  not 
create  the  right,  but  simply  provides  for  its 
registration.    Id. 

1136.  Omissions  and  variations  from  the 
mark  as  actually  used,  intended  for  the  pur- 
pose of  fixing  or  varying  the  construction  to 
be  placed  upon  the  trade-mark  right  which  has 
been  acquired,  are  not  permissible.  The  con- 
struction placed  upon  the  right  must  be  de- 
termined by  the  courts  from  a  consideration 
of  the  mark  as  actually  used.    Id. 

1137.  This  office  is  not  called  upon  to  de- 
termine and  fix  by  registration  the  scope  of 
the  applicant's  trade-mark  right,  but  merely 
registers  the  mark  which  has  been  used,  leav- 
ing it  to  the  courts  to  determine  the  scope  of 
the  right  acquired  by  use.  Ex  parte  Standard 
Underground  Cable  Co.,  C.  D.  190.5,  119  O.  G. 
1925. 

1138.  The  trade-mark  act  does  not  vest  in 
the  commissioner  of  patents  the  power  to  de- 
cide for  the  applicant  the  scope  of  his  claimed 
mark.  *In  re  Standard  Underground  Cable 
Company,  C.  D.  1906,  123  O.  G.  656. 

XLVI.  Similarity  of  Marks. 

(See  Trade-Marks;  Inteference  in  Fact.) 

(a)  In  General. 

1139.  The  office  ought  not  to  register  a 
mark  so  similar  to  the  one  already  registered 
for  the  same  class  of  goods.     If  the   regis- 


tered mark  set  forth  that  the  essential  fea- 
ture was  the  word  "Star"  or  symbol  of  a 
star,  irrespective  of  any  accessories,  the  ques- 
tion would  be  entirely  free  from  doubt.  Ex 
parte  Flint,  C.  D.   1898,  85  O.  G.  148. 

1140.  In  a  border-line  case  the  benefit  of 
the  doubt,  so  far  as  the  patent  office  is  con- 
cerned, should  be  given  to  the  owner  of  the 
registered  mark.     Id. 

1141.  Where  the  facsimile  of  an  applicant's 
trade-mark  and  the  facsimile  of  a  prior  reg- 
istered mark  as  so  similar  as  to  cause  con- 
fusion in  the  trade  between  them.  Held,  that 
registration  should  be  refused  notwithstand- 
ing the  fact  that  the  parties  refer  to  different 
parts  of  the  mark  as  constituting  the  essen- 
tial features.  Ex  parte  Diamond  Ink  Com- 
pany, C.  D.  1902,  98  O.  G.  1483. 

1142.  In  determining  the  question  whether 
or  not  one  mark  so  nearly  resembles  the  other 
as  to  cause  confusion  in  the  minds  of  the 
public  the  appearance  of  the  marks  is  as  im- 
portant as  the  sound  of  the  words  used  there- 
in when  those  words  are  spoken.  Ex  parte 
Vogel  &  Son,  C.  D.  1902,  99  O.  G.  2321. 

1143.  The  doctrine  of  the  patent  law  that 
that  which  would  infringe  if  later  in  date  will 
anticipate  if  earlier  is  applicable  to  questions 
of  trade-mark,  for  it  involves  only  the  ques- 
tion of  substantial  identity.  Ex  parte  Key- 
stone Chamois  Co.,  C.  D.  1902,  101  O.  G. 
3109. 

1144.  "In  considering  the  identity  of  two 
trade-marks  the  appearance  of  the  marks  is  as 
important  as  the  sound  of  the  words  used 
therein  when  these  words  are  spoken.  Both 
senses  are  to  be  used  in  determining  the  ques- 
tion whether  or  not  one  mark  so  nearly  re- 
sembles the  other  as  to  have  the  tendency  to 
mislead  and  to  cause  confusion  in  the  minds 
of  the  purchasing  public."  (Ex  parte  Vogel 
and  Son,  C.  D.  1902,  194,  99  O.  G.  2321.)  Ex 
parte  Sutton,  C.  D.  1904,  108  O.  G.  291. 

1145.  Where  on  appeal  from  the  refusal  of 
the  examiner  of  trade-marks  to  register  the 
words  "Black  and  Blue"  as  a  trade-mark  for 
Scotch  whiskey  by  reason  of  the  previous 
registration  of  the  words  "Black  and  White" 
for  the  same  class  of  goods  it  was  decided 
that  the  resemblance  between  these  marks 
was  not  such  as  to  preclude  registration  of 
the  words  "Black  and  White,"  and  the  owner 
of  the  mark  "Black  and  White"  then  filed  a 
notice  of  opposition  to  the  registration  of  the 
words  "Black  and  Blue"  to  which  the  appli- 
cant demurred  on  the  ground  that  there  was 


TRADE  MARKS,  XLVI,  (b). 


605 


no  such  resemblance  between  the  marks  as 
to  preclude  registration  of  his  mark,  Held. 
that  the  decision  on  the  ex  parte  appeal  is  not 
binding  in  the  disposition  of  the  demurrer  in 
the  inter  partes  proceeding,  for  the  reason 
that  on  the  ex  parte  appeal  it  was  necessary 
to  decide  the  question  at  issue  without  the 
assistance  of  testimony,  while  on  the  demur- 
rer a  different  question  is  raised — viz.,  wheth- 
er the  testimony  of  witnesses  should  be  re- 
ceived as  a  guide  in  determining  whether  the 
marks  of  the  respective  parties  bear  such  a 
resemblance  as  to  cause  confusion  in  the  mind 
of  the  public  or  deceive  purchasers.  James 
Buchanan  &  Co.,  Ltd.  v.  Frederick  R.  West's 
Nephews,  C.  D.  1906,  124  O.  G.  1524. 

1146.  Where  in  the  opinion  of  the  commis- 
sioner a  mark  sought  to  be  registered  so 
nearly  resemble  a  prior  registered  mark  as 
to  be  Jikcly  to  cause  confusion  in  the  mind  of 
the  public,  registration  will  be  refused,  not- 
withstanding the  consent  of  the  registrant 
to  the  registration  of  such  mark.  Ex  parte 
Young,  Smith,  Field  Co.,  C.  D.  1909,  141  O.  G 
865. 

1147.  A  mark  cannot  be  registered  under 
the  ten-years  clause  of  section  5  of  the  trade- 
mark act  of  February  20,  1905,  when  substan- 
tially the  same  mark  was  used  by  others  on 
goods  of  the  same  descriptive  properties  dur- 
ing the  ten-year  period,  even  though  such  use 
was  fraudulent  or  deceptive.  *In  re  Wright 
and  Taylor,  C.  D.  1909,  148  O.  G.  834. 

1148.  The  fact  that  one  mark  shows  a  du- 
plication or  multiplication  of  the  sole  or  pre- 
dominating feature  in  another  mark  is  obvi- 
ously not  in  itself  conclusive  against  regis- 
tration, since  the  arrangement  or  manner  in 
which  the  units  are  displayed  may  become 
the  predominating  feature  in  such  a  mark. 
Ex  parte  The  Dry  Milk  Co.,  C.  D.  1911,  171 
O.  G.  744. 

1149.  In  considering  whether  two  marks 
are  deceptively  similar  the  true  test  is  whether 
a  purchaser  looking  at  article  offered  to  him 
would  naturally  be  led  from  the  mark  im- 
pressed upon  it  to  suppose  it  to  be  a  produc- 
tion of  a  rival  manufacturer  with  whose  mark 
he  was  familiar.  Ex  parte  Seabury  &  John- 
son, C.  D.  1911,  173  O.  G.  865. 

(b)  Dcceptwely  Similar. 

1150.  The  words  "Peach  Greenville"  refused 
registration  as  a  trade-mark  for  plug-tobacco 
on   the   word   "Peach,"   previously   registered. 


as  it  is  not  a  safe  practice  to  permit  the  reg- 
istration of  a  compound  trade-mark,  one  of 
the  distinguishing  features  of  which  has  al- 
ready been  registered,  as  purchasers  using  or- 
dinary caution  might  easily  be  deceived.  Ex 
parte  Meriwether  &  Company,  C.  D.  1898,  83 
O.  G.  1S13. 

1151.  The  patent  office  should  not  give  its 
stamp  of  approval  to  a  class  of  trade-marks 
the  use  of  which  has  a  tendency  to  mislead  or 
deceive  the  public,  and  thus  take  a  position 
antagonistic  to  well-settled  rules  of  law.     Id. 

1152.  A  trade-mark  consisting  in  the  pictor- 
ial representation  of  a  cat  in  a  crouching  posi- 
tion, three  of  its  legs  resting  on  the  ground 
and  the  fourth  being  in  an  elevated  position, 
the  whole  being  printed  in  gold  on  a  red  back- 
ground, generally  arranged  as  shown  in  the 
drawing,  in  which  the  colors,  excepting  black 
and  white,  are  omitted,  and  the  words  "Old 
Tom"  inclosed  in  a  border  surrounding  the 
same,  and  the  words  "Celebrated  Cordial  Gin" 
appearing  beneath  the  same,  refused  registra- 
tion as  a  trade-mark  for  gin  on  a  mark  con- 
sisting of  a  cat  standing  upon  a  barrel  on 
which  are  placed  the  words  "Old  Tom,"  on  the 
ground  that  while  there  are  differences  in  the 
details,  the  salient  features  of  both  marks 
being  the  representation  of  a  cat,  the  minor 
differences  are  not  such  as  to  sufficiently  dif- 
ferentiate the  two  marks.  Ex  parte  Kauf- 
mann  &  Blache,  C.  D.  1898.  84  O.  G.  145. 

1153.  The  patent  office  should  not  register 
trade-marks  which  would  have  a  tendency  to 
mislead  or  deceive  the  public  or  which  would 
be  held  to  be  an  infringement  upon  prior  reg- 
istered or  unregistered  marks.     Id. 

1154.  The  words  "Uncle  Sam"  and  a  rep- 
resentation of  the  figure  conventionally  known 
as  "Uncle  Sam"  refused  registration  as  a 
trade-mark  for  garters  on  a  registered  mark 
consisting  of  the  words  "Uncle  Sam"  and  the 
conventional  figure  of  "Uncle  Sam,"  for  wear- 
ing-apparel for  men  and  boys,  the  particular 
description  of  goods  being  clothing  of  all 
kinds.  Ex  parte  A.  Stein  &  Co.,  C.  D.  1898, 
85  O.  G.  147. 

1155.  A  trade-mark  for  windmills  and  tanks, 
consisting  of  a  pictorial  symbol  of  a  star  with 
a  windmill  in  the  center,  refused  registration 
on  a  prior  registered  mark  for  windmills  and 
tanks,  the  essential  feature  of  which  is  the 
word-symbol  "U.  S.  Star,"  there  being  also 
shown  in  the  facsimile  of  the  registered  mark 
and  referred  to  in  the  statement  the  symbol 


606 


TRADE  MARKS,  XLVI,   (b). 


of  a  star.    Ex  parte  Flint  and  Walling  Manu- 
facturing Company,  C.  D.  1898,  85  O.  G.  148. 

1156.  The  action  of  the  examiner  refusing 
to  register  the  word  "Chewies"  as  a  trade- 
mark for  confections,  in  view  of  the  prior 
registered  mark  "Chewso"  for  chewing  candy, 
affirmed.  Ex  parte  Mclnnerney,  C.  D.  1898, 
85  O.  G.  148. 

1157.  It  is  not  necessary  that  a  word  to 
be  an  anticipation  must  be  written  like  and 
sound  like  a  mark  sought  to  be  registered.    Id. 

1158.  A  symbol  of  a  five-pointed  star  with 
the  letters  of  the  word  "Steel"  inserted  be- 
tween the  rays  or  points  and  the  monogram 
"FW,"  and  the  word  "Co."  placed  upon  a 
small  five-pointed  star  which  forms  the  center 
of  the  larger  one,  and  which  two  stars,  the 
monogram,  and  the  word  "Steel"  arranged 
around  the  circumference  of  the  larger  star 
form  the  material  parts  of  the  trade-mark,  re- 
fused registration  on  a  prior  registered  mark, 
the  essential  features  of  which  are  the  letters 
"U.  S."  and  the  word  "Star"  or  the  symbol 
of  a  star.  Ex  parte  Flint  &  Walling  Manu- 
facturing Company,  C.  D.  1898,  85  O.  G.  148. 

1159.  Upon  petition  from  the  action  of  the 
examiner  refusing  registration  as  a  trade- 
mark for  plug-tobacco  of  a  red  ribbon  applied 
to  a  plug  of  tobacco.  Held,  that  while  there 
is  no  physical  resemblance  between  the  word 
"Ribbons"  and  a  piece  of  ribbon  yet  the  prob- 
ability of  deceiving  the  purchaser  is  so  great 
that  the  prior  mark  is  a  proper  reference.  Ex 
parte  Calvert  &  Brother,  85  O.  G.  288. 

1160.  A  mark  consisting  of  the  figures  "1" 
and  "2,"  arranged  respectively  above  and  be- 
low a  dividing  line  formed  by  the  rays  of  a 
shooting  star,  refused  registration  in  view  of 
prior  marks  showing  a  shooting  star  alone. 
Ex  parte  Werner.  &  Co.,  C.  D.  1898,  85  O. 
G.  775. 

1161.  In  considering  anticipation  by  a  prior 
mark  the  question  is  not  as  to  whether  some 
specific  feature  of  the  applicant's  mark  is  dis- 
closed in  the  prior  mark,  but  is  as  to  whether 
the  mark  in  its  entirety  is  so  nearly  like  the 
prior  mark  as  to  mislead  or  deceive  the  pub- 
lic    Id. 

1162.  The  word  "Carmencita"  is  a  diminu- 
tive of  the  word  "Carmen,"  and  the  latter  so 
nearly  resembles  the  former  that  its  use  is  lia- 
ble to  cause  confusion  or  mistake  in  the  mind 
of  the  public  when  applied  to  the  same  article 
of  merchandise,  and  for  that  reason  it  may 
not  be  registered  as  a  trade-mark.     Ex  parte 


Eg>ptian   Tobacco   Company,   C.   D.    1898,   85 
O.  G.  1741. 

1163.  The  words  "Vitalizing  Ore"  are  so 
similar  in  sound,  if  not  in  appearance,  to  the 
words  "Vitae-Ore"  as  to  be  calculated  to  mis- 
lead and  deceive  the  public  and  intending  pur- 
chasers, and  injunction  granted  for  infringe- 
ment by  the  defendant  of  the  trade-mark 
"Vitae-Ore."  <:  Noel  v.  Ellis,  C.  D.  1899,  86 
O.  G.  633. 

1164.  The  packages  of  the  defendant,  while 
being  of  the  same  general  shape,  size,  and 
color,  arc  somewhat  dissimilar  in  appearance 
from  those  of  the  complainant ;  yet  there  are 
many  phases  of  the  same  general  idea,  and 
the  goods  of  the  defendant  are  put  up  in  the 
same  dress  and  the  wrapper  contains  substan- 
tially the  same  phraseology  as  that  of  the 
complainant.  Held,  that  this  is  evidence  of 
unfair  competition,  and  preliminary  injunction 
granted,     c  Id. 

1165.  The  word  "Dyspepticide"  refused  reg- 
istration as  a  trade-mark  for  certain  named 
medicinal  preparations  as  it  is  anticipated  by 
the  registered  mark  "Dyspepticure"  for  the 
same  class  of  goods.  Ex  parte  Foley  &  Com- 
pany, C.  D.  1899,  87  O.  G.  1957. 

1166.  The  differences  either  to  the  eye  or 
ear  are  no  greater  between  "dyspepticure"  and 
"dyspepticide"  than  between  "saponite"  and 
"sapolio,"  or  between  'cellonite"  and  "cellu- 
loid," or  between  "wamyesta"  and  "wamsutta," 
or  between  "maizharina"  and  "maizena."  Be- 
tween such  words  the  courts  have  found  "in- 
fringing resemblances."     Id. 

1167.  Where  it  was  contended  that  as  the 
endings  of  "dyspepticure"  and  "dyspepticide" 
are  distinctly  different  and  have  different 
meanings  and  therefore  the  mark  of  the  ap- 
plication should  be  registered.  Held,  that  in 
order  to  correctly  decide  whether  or  not  an 
alleged  trade-mark  is  likely  to  cause  confu- 
sion or  mistake  because  of  its  resemblance  to 
a  registered  lawful  mark,  the  marks  must  be 
taken  as  a  whole.  In  the  case  of  a  word,  the 
ordinary  purchaser  is  not  expected  to  analyze 
it  and  resolve  it  into  its  component  parts.  It 
is  only  required  that  the  purchaser  should  con- 
sider the  word  as  an  entirety.    Id. 

1168.  Held,  that  the  name  "Gold  Drop," 
used  by  the  respondents  to  designate  washing 
powder,  is  an  infringement  of  the  plaintiff's 
trade-mark  or  trade  name  "Gold  Dust,"  not- 
withstanding a  dissimilarity  of  the  labels, 
character   of   symbols,  and   size  of  packages. 


TRADE  MARKS,  XLVI,  (b). 


607 


(/  N.  K.  Fairbank  Company  v.  Luckel,  King 
&  Cake  Soap  Company,  C.  D.  1900,  92  O.  G. 
1437. 

1169.  There  are  two  kinds  of  trade-marks — 
one  of  peculiar  pictures,  labels,  or  symbols,  the 
other  in  the  use  of  a  name.  The  first  appeals 
to  the  eye  and  the  second  to  the  ear.  To 
constitute  infringement  of  a  trade  name  it  is 
not  necessary  that  there  should  be  similarity 
in  appearance,  but  merely  such  similarity  in 
the  names  that  the  ordinary  purchaser,  having 
no  knowledge  of  the  appearance  of  the  pack- 
age or  label,  would  be  deceived  by  the  name 
and  induced  to  purchase  an  article  under  one 
name  supposing  it  to  he  the  other,     d  Id. 

1170.  Held,  that  the  defendants  infringed 
the  shape  of  the  bottle  and  the  label  of  the 
complainant  and  they  are  restrained  from 
their  further  use.  **Saxlehner  &  Mendelsohn 
Co.,  C.  D.  1901,  93  O.  G.  940. 

1171.  Where  B.  used  the  word  "Colonial" 
alone,  but  prior  to  that  time  W.  used  the 
words  "Colonial  Dame,"  Held,  that  the  word 
"Colonial"  is  the  essential  feature  of  W.'s 
mark  and  that  W.  is  entitled  to  the  decision 
on  priority  as  to  the  word  as  a  trade-mark. 
Allen  B.  Wrisley  Company  v.  Buck,  C.  D. 
1901,  95  O.  G.  2483. 

1172.  Variations  in  the  style  in  which  a 
trade-mark  is  printed,  the  kind  of  label  on 
which  it  is  placed,  and  the  words  which  ac- 
company it  on  the  label  do  not  make  it  any 
the  less  the  same  mark  in  contemplation  of 
law  so  long  as  the  essential  features  which  at- 
tract the  attention  of  purchasers  are  the  same. 
Id. 

1173.  A  mark,  the  principal  features  of 
which  consist  of  a  Chinese  laundry  with  a 
Chinaman  in  view  ironing  clothes  at  a  table, 
refused  registration  because  of  a  previous 
mark  embodying  the  same  general  features 
although  differing  in  details.  Ex  parte  Le- 
febvre,  C.  D.  1901,  96  O.  G.  841. 

1174.  ,\lthough  the  applicant's  mark  is  not 
identical  with  the  previous  mark  and  it  may 
be  that  in  actual  use  the  marks  are  so  dis- 
tinguished from  each  other  by  the  acts  of 
the  parties  and  their  methods  of  advertising 
that  they  would  not  infringe,  //f/rf,  that  doubts 
on  the  question  whether  the  marks  would  de- 
ceive purchasers  should  be  resolved  in  favor 
of  the  registered  mark.    Id. 

1175.  Held,  that  the  word  "Sodafoam"  as 
a  trade-mark  for  baking-powder  so  nearly 
resembles  the  registered  mark  "Seafoam"  as 
to  be  likely  to  cause  confusion  or  mistake  in 


the  mind  of  the  public,  or  to  deceive  purchas- 
ers, and  therefore  registration  should  be  re- 
fused. Ex  parte  Sodafoam  Baking  Powder 
Company,  C.  D.  1901,  96  O.  G.  1239. 

1176.  A  trade-mark  consisting  of  the  words 
"Maple  Leaf"  and  the  representation  of  maple- 
leaves  refused  registration  upon  a  registered 
mark  consisting  of  the  words  "Silver  Leaf" 
and  the  representation  of  maple-leaves.  Ex 
parte  Vogel  and  Son,  C.  D.  1902,  99  O.  G. 
2321. 

1177.  A  trade-mark  consisting  of  a  "red 
star  represented  by  a  word  or  symbol"  Held, 
not  to  be  registrable  in  view  of  the  registered 
mark  which  consists  of  a  "star  inclosing  the 
letter  'G' "  on  the  ground  that  there  is  such 
a  resemblance  betw-een  the  two  marks  thai 
the  purchasing  public  would  be  deceived.  I'^x 
parte  Swan  and  Finch  Company,  C.  D.  1902 
100  O.  G.  682. 

1178.  The  word  "Telegraphone"  refused 
registration  as  a  trade-mark  for  apparatus 
for  recording  and  reproducing  sounds  in  view 
of  the  descriptive  word  "Telegraphophone," 
which  has  long  been  in  use  to  describe  such 
apparatus.  Ex  parte  Hutchins,  C.  D.  1902, 
100  O.  G.  1330. 

1179.  The  word  "Florodora"  refused  regis- 
tration in  view  of  the  prior  registered  mark 
"Floridena."  Ex  parte  Grossmith,  C.  D.  1902, 
100  O.  G.  2175. 

1180.  The  word  "Ino"  as  a  trade-mark  for 
liver-tablets  refused  registration  upon  "Uno" 
for  medical  compounds  in  solid  or  liquid  form. 
The  words  resemble  each  other  in  appearance 
and  suggest  the  same  idea.  Ex  parte  Ino 
Medicine  Company,  C.  D.  1902,  101  O.  G. 
887. 

1181.  A  five-pointed  star  is  the  equivalent 
of  a  six-pointed  star  as  a  trade-mark,  and 
therefore  the  use  of  a  five-pointed  star  proves 
priority  as  to  an  issue  relating  to  a  six-pointed 
star.  Galena  Oil  Company  v.  W.  P.  Fuller  & 
Co.,  C.  D.  1902,  101  O.  G.  Ifill. 

1182.  The  use  of  a  five-pointed  star  as  a 
trade-mark  for  certain  goods  establishes  the 
user's  right  to  a  star,  broadly,  and  no  one 
can  subsequently  acquire  the  right  to  use  a 
six-pointed  star  upon  the  same  class  of  goods. 
Id. 

1183.  The  words  "Silver  Star"  Held,  not 
registrable  as  a  trade-mark  in  view  of  prior 
registrations  for  the  same  class  of  goods  in- 
cluding a  star  as  the  predominating  and  con- 
trolling feature.     Ex  parte  Schwarzschild  and 


608 


TRADE  MARKS,  XLVI,   (b). 


Sulzberger   Company,   C.   D.   1902,  101   O.   G. 
3107. 

1184.  A  trade-mark  which  consists  of  the 
representation  of  a  cluster  of  maple-leaves 
having  their  adjacent  edges  overlapping,  the 
stems  of  the  leaves  being  tied  or  retained  to- 
gether, is  anticipated  by  a  trade-mark  con- 
sisting of  the  words  "Sap  Maple  Syrup,"  ar- 
ranged immediately  above  the  representation 
of  a  single  maple-leaf  havmg  placed  thereon 
the  words  "Maple  Leaf  Brand,"  on  the 
grounds  that  the  brand  of  syrup  to  which  each 
of  the  marks  is  applied  would  be  known  as 
the  "maple-leaf"  brand  of  syrup  and  that  the 
two  marks  resemble  each  other  in  appearance 
to  such  an  extent  as  to  cause  confusion  in  the 
minds  of  the  purchasing  public.  Ex  parte  A. 
R.  Gregoire  and  Company,  C.  D.  1903,  102  O. 
G.  1293. 

1185.  In  considering  the  identity  of  two 
trade-marks  the  appearance  of  the  marks  is  as 
important  as  the  sound  of  the  words  used 
therein  when  these  words  are  spoken.  Both 
senses  are  to  be  used  in  determining  the  ques- 
tion whether  or  not  one  mark  so  nearly  re- 
sembles the  other  as  to  have  the  tendency  to 
mislead  and  to  cause  confusion  in  the  minds 
of  the  purchasing  public.  Ex  parte  Vogel  & 
Son,  C.  D.  1902,  09  O.  G.  2.321.     Id. 

1186.  "Benedictine"  Held,  a  valid  trade- 
mark for  liqueurs  and  infringed  by  the  use 
of  the  mark  "St.  Benedict."  *A.  Bauer  & 
Co.  v.  La  Societe  Anonyme  De  La  Distillerie 
De  La  Liqueur  Benedictine  De  1'  Abbaye  De 
Fecamp,  C.  D.  1903,  106  O.  G.  265. 

1187.  The  word  "Liveroid"  resembles  the 
word  "Liveraid"  or  "Liverine"  so  closely  as 
to  cause  confusion  in  the  trade  when  applied 
to  the  same  class  of  articles,  and  for  this  rea- 
son it  should  not  he  registered.  Ex  parte  The 
Dr.  Parker  Medicine  Company,  C.  D.  1903,  106 
O.  G.  1719. 

1188.  The  word  "Chasseurs"  held  to  be  so 
similar  in  sound  and  in  appearance  to  the 
word  "Chartreuse"  as  to  be  likely  to  deceive 
purchasers  when  used  upon  the  same  class 
of  goods,  d  A.  Bauer  &  Co.  v.  Order  of  Car- 
thusian Monks,  Convent  La  Grande  Char- 
treuse, C.  D.  1903,  106  O.  G.  54.5. 

1189.  The  word  "Velva"  refused  registra- 
tion as  a  trade-mark  in  view  of  the  words 
"Velvet"  and  "Velvet-Skin"  previously  reg- 
istered for  the  same  goods.  Ex  parte  Wil- 
lard  Chemical  Company,  C.  D.  1903,  107  O. 
G.  1972. 


1190.  A  trade-mark  consisting  of  the  word 
"Pepko"  refused  registration  upon  the  regis- 
tered word  "Pep-Kola."  Ex  parte  Sutton, 
C.  D.  1904,  108  O.  G.  291. 

1191.  The  word  "Samsoncalf"  refused  reg- 
istration as  a  trade-mark  for  shoes  in  view 
of  a  registered  mark  including  a  picture  and 
the  words  "Our  Little  Samson."  Confusion 
would  result,  since  both  would  be  known  as 
the  "Samson"  shoe.  Ex  parte  F.  M.  Hoyt 
Shoe  Company,  C.  D.  1905,  113  O.  G.  1970. 

1192.  The  word  "Diamonddust"  refused 
registration  as  a  trade-mark  in  view  of  the 
prior  marks  "Diamond"  and  "Diamond  Mills" 
applied  to  the  same  class  of  goods.  Ex  parte 
Snyder,  C.  D.  1905,  115  O.  G.  1849. 

1193.  The  word  "Optine"  refused  registra- 
tion in  view  of  the  prior  registered  mark 
"Optal,"  since  the  resemblance  between  the 
marks  is  such  as  to  cause  confusion  and  to  be 
likely  to  deceive  purchasers  as  to  the  origin 
of  the  goods.  Ex  parte  Holbert,  C.  D.  1905, 
115  O.  G.  2136. 

1194.  A  trade-mark  consisting  of  the  pic- 
ture of  a  greyhound  with  the  word  "Run- 
Lite"  inclosed  in  a  circle  refused  registration 
in  view  of  a  prior  mark  consisting  of  a  pic- 
ture of  a  greyhound  together  with  certain 
other  words  inclosed  within  a  circle.  Ex 
parte  Crescent  Oil  Company,  C.  D.  1905,  115 
O.  G.  2137. 

1195.  "Satinola"  refused  registration  as 
trade-mark  in  view  of  the  prior  registered 
marks  "Satin,"  "Satin  Skin,"  and  "Satin 
Scent."  Ex  parte  National  Toilet  Company, 
C.  D.  1905,  116  O.  G.  593. 

1196.  Held,  that  a  trade-mark  for  boots 
and  shoes  which  consisted  of  a  Maltese  cross 
having  a  monogram  and  other  inscriptions 
thereon  should  not  be  registered  in  view  of  a 
registered  mark  consisting  of  a  Maltese  cross 
without  the  inscription  and  monogram  used 
upon  boots  and  shoes.  Ex  parte  Smith-Bris- 
coe Shoe  Company,  C.  D.  1905,  117  O.  G. 
1491. 

1197.  Held,  that  it  is  clearly  the  duty  of  this 
office  to  refuse  registration  whenever  in  its 
opinion  the  applicant's  mark  so  nearly  re- 
sembles a  prior  registered  mark  as  to  mis- 
lead purchasers  as  to  the  origin  or  ownership 
of  the  goods  upon  which  the  two  marks  are 
used  and  that  it  is  not  necessary  that  the 
marks  be  identical,  but  only  that  there  be  such 
resemblance  as  to  be  likely  to  lead  parties  to 
purchase  the  goods  of  the  applicant  supposing 


TRADE  MARKS,  XLVI,  (b). 


609 


them  to  be  goods  produced  by  the  registrant. 
Id. 

1198.  A  trade-mark  for  whiskey,  including 
as  an  essential  feature  a  star.  Held,  not  reg- 
istrable in  view  of  prior  marks  including 
stars  registered  under  the  acts  of  1870  and 
1881.  Ex  parte  The  Star  Distillery  Company, 
C.  D.  190.5,  119  O.  G.  963. 

1199.  There  is  such  close  resemblance  be- 
tween the  trade-marks  "Autogirdle"  and 
"Auto-Garter"  that  the  purchasing  public  is 
likely  to  be  deceived,  and  therefore  there  is 
an  interference  in  fact.  Kops  Brothers  v. 
Royal  Worcester  Corset  Company,  C.  D. 
190.5,  119  O.  G.  1584. 

1200.  In  determining  the  question  of  inter- 
ference in  fact  in  trade-mark  cases  the  sound 
of  the  words  as  well  as  their  appearance  is  to 
be  considered,  and  it  must  be  remembered 
that  the  purchasing  public  will  not  carefully 
observe  details  of  the  marks  with  the  purpose 
of  detecting  differences.     Id. 

1201.  A  trade-mark  consisting  of  a  pick 
and  shovel,  together  with  a  representation 
thereof,  refused  registration  in  view  of  a 
prior  mark  consisting  of  a  pick  and  represen- 
tation thereof.  They  are  so  nearly  alike  as 
to  cause  confusion.  Ex  parte  Monarch  To- 
bacco Works,   C.  D.  1905,  119  O.  G.  2522. 

1202.  There  is  such  a  close  resemblance  be- 
tween a  mark  consisting  of  the  words  "Old 
J"  or  "Old  Jay  Rye"  in  connection  with  a 
representation  of  a  blue-jay  and  the  words 
"Blue  Jay"  as  to  cause  confusion  and  bring 
about  a  conflict  of  rights.  W.  H.  Jones  & 
Co.  V.  Carlton  Importation  Company,  C.  D. 
1906,  120   O.  G.  2444. 

1203.  A  trade-mark  consisting  of  the  repre- 
sentation of  a  sea-monster  associated  with  an 
anchor  represented  as  standing  vertically  upon 
its  point  and  having  the  head  of  the  sea-mon- 
ster protruding  from  between  the  anchor- 
arms  and  the  body  of  the  sea-monster  en- 
twined spirally  about  the  shank  of  the  anchor. 
Held,  not  registrable  in  view  of  the  prior  reg- 
istration of  a  trade-mark  consisting  of  an 
anchor  and  the  arbitrarily-selected  word  "An- 
chor" placed  across  said  representation.  Ex 
parte  Gwinn  Bros.  &  Co.,  C.  D.  1906,  120  O. 
G.  2755. 

1204.  Where  the  trade-mark  as  a  whole 
seems  to  be  a  mere  imitation  of  Ostermoor's, 
made  with  immaterial  variations,  and  the  dif- 
ferences are  clearly  not  such  as  would  avoid 
confusion  between  the  marks  by  purchasers, 
the  mark  should  not  be  registered.     Ex  parte 

39 


The   J.   C.   Hirschman   Company,   C.   D.   1906, 
U'l  O.  G.  690. 

1205.  Refusal  of  registration  is  proper  when 
the  applicant's  mark  and  the  mark  of  the 
reference  show  in  common  a  king  with  ele- 
vated arm  holding  a  glass  of  foaming  bever- 
age and  each  shows  sprays  of  grain  and  hops 
and  the  marks  differ  principally  in  that  the 
king  is  shown  by  the  applicant  at  full  length 
and  mounted  upon  a  keg,  whereas  in  the  reg- 
istered mark  there  is  a  bust  figure  surrounded 
by  certam  inscriptions,  and  both  marks  are  ap- 
plied to  beer.  Ex  parte  Young,  C.  D.  1906, 
122  O.  G.  1734. 

1206.  Held,  that  the  words  "Wm.  A.  Rog- 
ers" are  so  similar  to  "Wm.  Rogers  Mfg.  Co." 
and  "Wm.  Rogers  &  Son"  as  to  be  likely  to 
cause  confusion  or  mistake  in  the  mind  of  the 
public  or  to  deceive  purchasers.  International 
Silver  Co.  v.  Wm.  A.  Rogers,  Ltd.,  C.  D. 
1900,  124  O.  G.  318. 

1207.  Held,  that  the  words  "Chancellor 
Club"  as  a  trade-mark  for  cocktails  would  be 
confused  in  the  mind  of  the  purchasing  pub- 
lic with  the  prior  registered  mark  "Club  Cock- 
tails" for  the  same  class  of  goods  and  regis- 
tration refused.  Ex  parte  S.  C.  Herbst  Im- 
porting Company,   C.  D.   1906,  124  O.  G.  2178. 

1208.  "American  Lady"  is  sufficiently  similar 
to  the  mark  "American  Girl"  to  make  regis- 
tration thereof  by  the  applicant  improper  in 
view  of  the  opposer's  ownership  of  the  latter 
mark.  The  Wolf  Bros.  &  Co.  v.  Hamilton 
Brown  Shoe  Co.,  C.  D.  1906,  125  O.  G.  667. 

1209.  A  finding  that  two  marks  are  similar 
may  be  based  upon  contemplation  of  the  marks 
aside  from  the  testimony  upon  the  question 
of  actual  confusion.  (Lorillard  Company  v. 
Peper,  86  Fed.  Rep.  950.)     Id. 

1210.  Registration  of  applicants'  mark  re- 
fused where  the  opposers  have  established 
prior  adoption  and  continuous  use  of  their 
mark  and  the  marks  are  of  such  similarity  as 
to  be  likely  to  cause  confusion  or  to  deceive 
purchasers.  Ullman  &  Company  and  Gin 
Phosphate  Company  v.  Bluthenthal  &  Bickert, 
C.  D.  1906,  125  O.  G.  2763. 

1211.  Applicants'  mark  consisting  of  the  rep- 
resentation of  two  sprays  of  the  juniper-tree, 
associated  with  the  words  "Genuine  Phos- 
phate Gin"  arranged  thereover  in  white  on  a 
black  background,  and  the  opposers'  mark  con- 
sisting of  a  valley  scene  with  a  large  tree  in 
the  foreground  and  the  words  "Gin  Phos- 
phate" in  large  letters  sufficiently  resemble 
each  other  to  be  likely  to  cause  confusion  in 


610 


TRADE  MARKS,  XLVI,   (b). 


the   mind    of    the   public   or   to   deceive   pur- 
chasers.    Id. 

1812.  "Olivoint"  used  as  a  trade-mark  for 
ointment  for  skin  affections  so  closely  resem- 
bles the  mark  "Olivene"  registered  as  a  trade- 
mark for  ointments  and  salves  as  to  be  likely 
to  cause  confusion  or  mistake  in  the  mind 
of  the  public  or  to  deceive  purchasers.  Ex 
parte  Cross,  C.  D.  1907,  128  O.  G.  4.55. 

1213.  The  right  to  registration  of  a  mark  in 
view  of  earlier  registrations  must  be  deter- 
mined from  consideration  of  the  entire  mark 
shown  upon  the  application  drawing.  It  is 
the  mark  shown  which  is  registered  and  not 
any  supposed  distinguishing  feature  thereof. 
However,  in  determining  the  substantial  iden- 
tity or  non-identity  of  two  marks  it  is  ob- 
viously necessary  to  consider  the  compara- 
tive prominence  in  each  mark  of  those  fea- 
tures which  it  has  in  common  with  the  other 
mark  and  those  features  in  which  it  differs 
therefrom.  Ex  parte  Golden  &  Co.,  C.  D. 
1907,  128  O.  G.  1291. 

1214.  Where  in  an  interference  involving 
marks  having  elks'  heads  prominently  dis- 
played thereon  the  decision  was  adverse  to  the 
appellant.  Held,  that  registration  of  the  ap- 
pellant's mark,  which  comprises  the  picture 
of  an  elk's  head  standing  out  prominently 
thereon  and  having  in  addition  thereto  the  in- 
scription "Elk  Grove  Creamery,  Manufactur- 
ers of  finest  pasteurized  Elgin  Butter"  present- 
ed in  various  styles  of  lettering  and  set  off 
in  circles  and  scrolls  with  other  minor  orna- 
mentation, should  be  refused.     Id. 

1215.  Held,  that  the  words  "Spring  Hill'  as 
a  trade-mark  for  whiskey  so  nearly  resem- 
bles a  prior  registered  mark,  which  is  describ- 
ed as  a  "crescent"  or  "new  moon"  and  the 
words  "Spring  Valley"  as  to  cause  confusion 
in  trade.  Ex  parte  L.  &  A.  Scharff,  C.  D. 
1907,  128  O.  G.  2531. 

1216.  The  mark  comprising  the  representa- 
tion of  an  anchor  surmounted  by  a  crown  with 
the  letters  "S"  and  "H"  near  the  opposite 
sides  of  the  shank  of  the  anchor,  Held,  to  be 
anticipated  by  the  representation  of  an  anchor 
with  the  arrow  and  a  star  superimposed  upon 
the  shank  of  the  anchor.  Ex  parte  Smith  & 
Hemenway  Company,  C.  D.  1907,  129  O.  G. 
2500. 

1217.  Held,  that  the  mark  "Alizarine  Black 
4  B,"  of  the  applicant  so  nearly  resembles  the 
mark  "Alizarine  Black  4"  of  the  opposer  and 
the  words  "Alizarine  Black  3  B"  used  by  the 
Farbenfabriken  of  Elberfeld  Company  as  to 


cause  confusion  in  trade  and  is  therefore  not 
registrable  under  the  ten-year  proviso  of  sec- 
tion 5  of  the  act  of  1905.  Kuttroff  v.  Cassella 
Color  Company,  C.  D.  1907,  129  O.  G.  3159. 

1218.  "La  Camille"  for  corsets.  Held,  to  be 
anticipated  by  "Camille  Royal  Combination" 
for  feminine  apparel.  Ex  parte  International 
Corset  Company,  C.  D.  1907,  130  O.  G.  1310. 

1219.  If  the  word  "Star"  or  the  representa- 
tion of  a  star  as  a  trade-mark  for  beer  has 
become  public  property,  an  applicant  is  not 
entitled  to  the  registration  of  a  mark  for  the 
same  class  of  goods  consisting  of  two  super- 
imposed equilateral  triangles  forming  a  six- 
pointed  star,  with  a  monogram  of  the  letters 
"G.  E."  in  the  center  thereof,  unless  his  mark 
differs  from  a  mere  star  to  such  an  extent 
that  the  simultaneous  use  of  the  same  would 
not  be  likely  to  cause  confusion  in  the  mind 
of  the  public.  Ehret  v.  Star  Brewery  Com- 
pany, C.  D.  1907,  131  O.  G.  693. 

1220.  A  mark  consisting  of  a  six-pointed 
star  having  in  the  center  thereof  a  monogram 
of  the  letters  "G.  E.,"  Held,  to  so  nearly  re- 
semble a  mark  in  prior  use  by  another,  con- 
sisting of  a  six-pointed  star  surrounded  by 
two  concentric  circles,  between  which  are  the 
words  "The  Celebrated  Star  Lager  Beer,"  as 
to  be  likely  to  cause  confusion  in  the  mind  of 
the  public.    Id. 

1221.  Held,  that  the  trade-mark  "Royal 
Blend"  for  coffee  is  anticipated  by  a  registered 
mark  comprising  a  Maltese  cross  surmounted 
by  a  crown  and  bearing  the  word  "Royal." 
Held,  also  that  the  word  "Blend"  for  coffee  is 
merely  descriptive  of  the  merchandise,  and  its 
presence  as  part  of  the  mark  does  not  confer 
any  arbitrary  or  distinguishing  significance 
upon  the  mark  sought  to  be  registered.  Ex 
parte  Granger  &  Company,  C.  D.  1907,  131  O. 
G.  694. 

1222.  Held,  that  mark  "Chancellor  Club" 
for  cocktails  so  nearly  resembles  the  prior 
registered  mark  "Club  Cocktails"  for  the  same 
goods  as  to  be  likely  to  cause  confusion  in 
the  mind  of  the  public,  and  is  therefore  not 
registrable.  *In  re  S.  C.  Herbst  Importing 
Company,  C.  D.  1908,  134  O.  G.  1565. 

1223.  A  trade-mark  consisting  of  the  com- 
pound word  "Edelweiss-Maltine"  was  properly 
refused  registration  in  view  of  the  prior  use 
of  the  word  "Maltine"  as  a  trade-mark  for 
goods  of  the  same  descriptive  properties.  ♦The 
Peter  Schoenhofen  Brewing  Company  v.  The 
Maltine  Company,  C.  D.  1908,  134  O.  G.  1804. 


TRADE  MARKS,  XLVI,  (b). 


«u 


1224.  A  trade-mark  consisting  of  the  com- 
pound word  "Edelweiss-Maltine"  set  in  an 
elaborate  picture  or  design  was  properly  re- 
fused registration  in  view  of  the  prior  use 
of  the  word  "Maltine"  as  a  trade-mark  for 
goods  of  the  same  descriptive  properties.    *Id. 

1225.  A  trade-mark  the  distinguishing  fea- 
ture of  which  consists  of  an  Indian's  head 
showing  profile  with  the  conventional  feather 
iiead-dress,  within  a  circle,  was  properly  re- 
fused registration  in  view  of  the  prior  use 
on  the  same  class  of  goods  of  a  mark  showing 
a  front  view  of  an  Indian's  head  with  a  feath- 
ered head-dress.  *In  re  The  Indian  Portland 
Cement  Co.,  C.  D.  1908,  134  O.  G.  518. 

1226.  Where  the  mark  of  an  applicant  so 
resembles  a  prior  registered  mark  that  the 
goods  of  each  would  be  likely  to  be  known  to 
the  public  by  the  same  name,  the  registration 
of  the  former  should  be  refused.    *Id. 

1227.  A  trade-mark  comprising  the  repre- 
sentation of  an  eagle  standing  on  a  rock  and 
having  on  its  breast  a  panel  with  "14  K" 
thereon  is  not  registrable  over  the  prior  reg- 
istration for  goods  of  the  same  descriptive 
properties  of  two  marks  the  essential  feature 
of  each  of  which  is  the  representation  of  an 
eagle.  Ex  parte  Saltzman  &  Forman,  C.  D. 
1908,  134  O.  G.  2243. 

1228.  The  words  "Old  Dutch  Blend"  as  a 
trade-mark  for  coffee  Held,  to  be  anticipated 
by  the  words  "Royal  Dutch"  for  the  same 
class  of  goods.  Ex  parte  The  Dsyton  Spice 
Mills,  C.  D.  1908,  135  O.  G.  893. 

1229.  In  an  opposition  proceeding  where 
marks  are  so  alike  that  it  is  evident  that  con- 
fusion is  likely  to  arise  it  is  not  necessary  for 
the  opposer  to  prove  actual  confusion  in  order 
to  prevent  registration  (citing  G.  W.  Cole  Co. 
V.  Marshall  Oil  Co.,  ante,  88,  133  O.  G.  994). 
The  Northwestern  Consolidated  Milling  Com- 
pany V.  William  Callam  &  Son,  C.  D.  1908, 
137  O.  G.  2222. 

1230.  The  word  "Certosa"  as  a  trade-mark 
for  flour  so  nearly  resembles  the  word  "Cere- 
sota"  used  for  the  same  class  of  goods  as  to 
be  likely  to  cause  confusion  in  trade.    Id. 

1231.  A  mark  comprising  the  words  "Genu- 
ine Blake's  Belt  Fasteners,"  the  word  "Genu- 
ine" being  printed  with  a  large  "G"  which  al- 
most completely  incloses  the  remainder  of  the 
word,  and  across  which  there  is  vertically  ar- 
ranged the  representation  of  a  belt-fastener. 
Held,  not  entitled  to  registration  in  view  of 
the  prior  adoption  and  use  by  another  of  the 
words  "Blake's  Belt  Studs."     Greene,  Tweed 


&  Co.  V.  Manufacturers  Belt  Hook  Co.,  C.  D. 
1908,  137  O.  G.  2221. 

1232.  A  trade-mark  for  canned  fruits  con- 
sisting of  a  full-length  figure  of  a  colonial 
military  officer,  accompanied  by  the  words 
"Col.  Willett,"  Held,  so  similar  to  a  prior 
registered  mark  for  the  same  goods  consist- 
ing of  a  bust  portrait  of  Gen.  Anthony  Wayne 
in  a  colonial  military  uniform  as  to  be  likely 
to  cause  confusion  in  trade.  ♦Wayne  County 
Preserving  Company  v.  The  Burt  Olney  Can- 
ning Company,  C.  D.  1909,  140  O.  G.  1003. 

1233.  "The  property  right  in  trade-marks 
is  a  valuable  one,  and  is  entitled  to  protection 
from  those  who  would  profit  by  its  imitation 
and  the  courts  should  resolve  the  doubt,  if 
any  exists,  in  favor  of  the  prior  registrant  and 
user  in  good  faith."    ♦Id. 

1234.  A  mark  consisting  of  the  representa- 
tion of  a  keystone  with  a  diamond-shaped  fig- 
ure placed  horizontally  across  the  same  and 
a  scroll  beneath  the  keystone,  the  words  "Al- 
bion" appearing  upon  the  diamond,  "Bind- 
ley's  Ever  Satisfactory  Tools"  upon  the  key- 
stone, and  "Quality  Counts"  upon  the  scroll, 
is  anticipated  by  the  marks  of  a  prior  regis- 
trant containing  the  representation  of  a  key- 
stone. Ex  parte  Bindley  Hardware  Co.,  C. 
D.  1909,  141   O.  G.  285. 

1235.  A  trade-mark  for  hosiery,  etc,  con- 
sisting of  the  words  "Quaker  Maid"  and  the 
representation  of  two  keystones.  Held,  antici- 
pated by  two  prior  registrations,  one  consist- 
ing of  the  word  "Quakeress"  printed  upon  a 
distinctive  background,  and  the  other  consist- 
ing of  the  word  "Quaker"  alone.  Ex  parte 
Young,  Smith,  Field  Company,  C.  D.  1909, 
141  O.  G.  865. 

1236.  The  words  "Hoff's"  and  "Leopold 
Hoff's"  are  so  similar  as  to  be  likely  to  cause 
confusion  when  applied  to  the  same  class  of 
goods,  the  words  "Hoff's"  being  the  predom- 
inating feature.    ♦Id. 

1237.  The  word  "Nayassett"  so  nearly  re- 
sembles a  registered  trade-mark,  "Nassac," 
appropriated  to  goods  of  the  same  descrip- 
tive properties,  as  to  be  likely  to  cause  con- 
fusion in  the  mind  of  the  public.  Registration 
was  therefore  properly  refused.  Ex  parte 
Charles  E.  Brown  &  Company,  C.  D.  1909, 
143  O.  G.  561. 

1238.  The  marks  "Worth"  and  "Our  Worth" 
when  appropriated  to  goods  of  the  same  de- 
scriptive properties  would  be  likely  to  cause 
confusion  in  the  mind  of  the  public  and  de- 


C12 


TRADE  MARKS,  XLVI,   (b). 


ceive  purchasers.    *In  re  Nash  Hardware  Co., 
C.   D.   1909,  143  O.  G.  1347. 

1239.  The  representation  of  a  Quaker  asso- 
ciated with  the  word  "Penn's"  Held,  to  so 
nearly  resemble  a  mark  consisting  of  a  bust 
picture  of  a  Quaker  with  the  name  "Wm. 
Penn"  written  thereover  as  to  be  likely  to 
cause  confusion  in  the  mind  of  the  public 
when  applied  to  merchandise  of  the  same  de- 
scriptive properties.  Ex  parte  Penn  Tobacco 
Company,  C.  D.  1909,  144  O.  G.  275. 

1240.  A  trade-mark  comprising  a  represen- 
tation of  a  desert  scene  in  which  prominently 
appear  three  pyramids.  Held,  to  have  been 
properly  refused  registration  in  view  of  two 
prior  registrations,  the  one  showing  a  pyramid 
and  certain  descriptive  matter  and  the  other 
the  word  "Pyramid"  applied  to  goods  of  the 
same  descriptive  properties.  Ex  parte  The 
Waterproofing  Company,  C  D.  1909,  145  O. 
G.  255. 

1241.  Applicant's  mark  consisted  of  the 
word  "Asbestos,"  the  letters  of  the  word  being 
constructed  in  a  peculiar  manner.  The  op- 
poser  used  the  word  "Asbestos"  not  as  a 
trade-mark,  but  merely  to  designate  engine 
and  machinery  packing  sold  by  it.  Held,  that 
this  was  a  sufficient  use  of  the  word  "As- 
bestos" to  prevent  the  registration  of  appli- 
cant's mark  under  the  "ten-years"  clause  of 
the  trade-mark  act,  since  the  predominating 
characteristic  of  that  mark  is  the  same  word. 
*H.  W.  Johns-Manville  Company  v.  Amer- 
ican Steam  Packing  Company,  C.  D.  1909, 
145  O.  G.  257. 

1242.  The  fact  that  manufacturers  and  deal- 
ers may  regard  the  word  "Diamond"  as  hav- 
ing lost  its  distinctive  character  when  used  in 
trade-marks  for  flour  constitutes  no  ground 
for  registering  the  trade-mark  "Diamond  Jo" 
when  it  so  nearly  resembles  several  registered 
marks  as  to  be  likely  to  cause  confusion  and 
mistake  in  the  mind  of  the  purchasing  public. 
Ex  parte  Sheffield  Mill  &  Elevator  Company, 
C.  n.  1009,  145  O.  G.  1021. 

1243.  Held,  that  registration  of  the  words 
"Green  Ribbon"  as  a  trade-mark  for  whiskey 
was  properly  refused  in  view  of  the  prior  use 
of  the  words  "Green  River"  on  the  same  class 
of  goods,  as  the  similarity  of  the  marks  is 
such  as  to  be  likely  to  cause  confusion  in  the 
mind  of  the  public.  *Lang  v.  Green  River 
Distilling  Co.,  C.  D.  1909,  148  O.  G.  280. 

1244.  Registr;itinn  of  the  word  "Powellton" 
as  a  trade-mark  for  coal  properly  refused  in 
view  of  the   registered   mark   "Powell's   Run 


Coal."     Ex   parte   The   Mount   Carbon   Com- 
pany, Limited,  C.  D.  1910,  l.">0  O.  G.  828. 

1245.  The  fact  that  the  owner  of  a  regis- 
tered trade-mark  has  not  brought  suit  to  en- 
join the  use  of  the  mark  sought  to  be  regis- 
tered, Held,  to  have  no  bearing  upon  the  ques- 
tion whether  the  marks  are  so  nearly  identical 
as  to  be  likely  to  cause  confusion  in  the  mind 
of  the  public.     Id. 

1246.  A  trade-mark  comprising  the  words 
"French  Opera"  was  properly  refused  regis- 
tration in  view  of  the  registered  mark  con- 
sisting of  the  word  "French."  Ex  parte 
American  Coffee  Co.  of  New  Orleans,  Ltd., 
C.  D.  1910,  152  O.  G.  229. 

1247.  The  word  "Autola"  Held,  not  regis- 
trable as  a  trade-mark  for  cigars  in  view  of 
the  prior  registration  of  the  trade-mark  "Au- 
to-do" for  the  same  goods.  Ex  parte  J.  Fred 
Wilcox  Company,  C.  D.  1910,  153  O.  G.  546. 

1248.  A  trade-mark  consisting  of  the  repre- 
sentation of  a  shield  having  the  word  "Vic- 
tor" thereon,  Held,  properly  refused  registra- 
tion in  view  of  a  prior  registration  of  a  trade- 
mark consisting  of  the  representation  of  a 
shield  having  thereon  the  words  "Shield 
Brand."  Ex  parte  The  Ohio  Garment  Com- 
pany,  C.  D.  1910,  153  O.  G.  821. 

1249.  The  words  "North  Star"  were  prop- 
erly refused  registration  as  a  trade-mark  for 
beer  in  view  of  the  prior  registration  of  the 
word  "Star"  as  a  trade-mark  for  the  same 
class  of  goods.  Ex  parte  Lauritzen  Malt  Co., 
C.  D.  1910,  153  O.  G.  1082. 

1250.  A  mark  consisting  of  the  word  "Rog- 
ers" preceded  by  a  wreath  inclosing  the  letter 
"R"  and  followed  by  the  same  combination 
with  the  numeral  "1881,"  Held,  deceptively 
similar  to  a  mark  consisting  of  the  word 
"Rogers"  preceded  and  followed  by  an  anchor' 
*Wm.  A.  Rogers,  Limited  v.  International 
Silver  Co.,  C.  D.  1910,  155  O.  G.  554. 

1251.  The  compound  word  "Piano-Auto" 
Held,  not  registrable  as  a  trade-mark  for 
piano-players  and  combination  pianos  and 
piano-players  in  view  of  the  prior  registra- 
tion of  the  word  "Autopiano"  for  the  same 
merchandise.  Ex  parte  The  Auto  Grand 
Piano  Co.,  C.  D.  1910,  155  O.  G.  307. 

1252.  Where  a  registered  trade-mark  con- 
sisted of  the  representation  of  a  spinning- 
wheel,  Held,  that  registration  was  properly 
refused  of  a  mark  applied  to  goods  of  the 
same  descriptive  properties  which  showed  a 
spinning-wheel,  a  woman  running  it,  and  the 
interior  of  a  room,  since  the  salient  feature  of 


TRADE  MARKS,  XLVI,  (b). 


613 


both  is  the  spinning  wheel.     Ex  parte  Beau- 
mont   Manufacturing   Company,    C.    D.    1910, 

159  O.  G.  491. 

1253.  A  mark  consisting  of  the  words  "La 
Vona"  Held,  so  similar  to  the  registered  mark 
"Larona"  that  its  registration  is  prohibited 
by  section  .">  of  the  trade-mark  act.  Ex  parte 
Neuman,  C.  D.  lOlo,  1.59  O.  G.  993. 

1254.  The  word  "Creo-Carbolin,"  Held, 
properly  refused  registration  as  a  trade-mark 
for  coal-tar  oil  in  view  of  the  prior  registra- 
tion of  the  word  "Carbolineum"  for  goods  of 
the  same  descriptive  properties.  Ex  parte 
Barrett  Manufacturing  Company,  C.  D.  1910, 

160  O.  G.  1272. 

1255.  The  word  "Omnaline"  Held,  properly 
refused  registration  as  a  trade-mark  for  a 
pharmaceutical  preparation  in  view  of  the 
prior  registration  of  the  word  "Omnia"  for 
goods  of  the  same  descriptive  properties.  Ex 
parte  Nicolaus,  C.  D.  1910,  161  O.  G.  268. 

1256.  A  trade-mark  which  consists  of  a 
circular  target  or  shield  bearing  the  head  of 
an  Indian  woman  surrounded  by  an  inscrip- 
tion Held,  to  be  so  similar  to  another  trade- 
mark consisting  of  a  circular  target  or  shield 
bearing  the  head  of  an  Indian  woman  sur- 
rounded by  a  different  inscription  as  to  be  like- 
ly to  cause  confusion  in  the  mind  of  the  pub- 
lic, notwithstanding  that  one  of  the  trade- 
marks also  contains  a  tomahawk,  spear-heads, 
and  peace-pipe,  and  one  of  the  heads  is  shown 
in  full  profile,  while  the  other  is  shown  in 
three-quarter  side  view.  Iroquois  Brewing 
Companj-  v.  American  Brewing  Company,  C. 
D.  1910,  161  O.  G.  529. 

1257.  The  word  "Maploma"  as  a  trade-mark 
for  syrup  Held,  properly  refused  registration 
in  view  of  the  prior  registration  of  the  word 
"Mapleine"  as  a  trade-mark  for  goods  of  the 
same  descriptive  properties.  Ex  parte  Pure 
Flavoring  Extract  Co.,  C.  D.  1911,  163  O.  G. 
728. 

1258.  The  words  "Lady  Like"  Held,  proper- 
ly refused  registration  as  a  trade-mark  for 
shoes  in  view  of  the  prior  registration  of  a 
mark  consisting  of  the  word  "The  Lady  Lee 
Shoe."  Ex  parte  E.  B.  Piekenbrock  &  Sons, 
C.  D.  1911,  164  O.  G.  507. 

1259.  A  trade-mark  for  wire  rope  consist- 
ing of  "a  yellow  stripe  of  uniform  width 
spirally  disposed  around  the  surface"  of  the 
rope,  Held,  so  similar  to  a  mark  consisting 
of  a  red  stripe  similarly  placed  on  a  rope, 
that  the  contemporaneous  use  of  the  two 
marks  would  be  likclv  to  cause  confusion  in 


the  mind  of  the  public  and  deceive  purchasers. 
*A.  Broderick  &  Sons  Rope  Co.  v.  Broderick 
&•  Bascom  Rope  Co.,  C.  D.  1911,  164  O.  G. 
977. 

1260.  \  trade-mark  for  wire  rope,  consist- 
ing of  a  blue  stripe  of  uniform  width  spirally 
disposed  around  the  surface  of  the  rope.  Held, 
to  so  resemble  a  mark  consisting  of  a  red 
stripe  similarly  placed  on  a  rope,  that  the  con- 
temporaneous use  of  the  two  marks  would  be 
likely  to  cause  confusion  in  the  mind  of  the 
public  and  deceive  purchasers.  *A.  Leschens 
&  Sons  Rope  Co.  v.  American  Steel  &  Wire 
Co.  of  New  Jersey,  C.  D.  1911,  164  O.  G.  978. 

1261.  The  marks  "AI"  and  "AA"  Held,  so 
similar  that  their  concurrent  use  upon  goods 
of  the  same  descriptive  properties  would  be 
likely  to  cause  confusion  in  the  minds  of  pur- 
chasers. Graver's  Sons  v.  Conklin  &  Son,  C 
D.  1911,  165  O.  G.  241. 

1262.  A  mark  consisting  of  an  ornamental 
panel  having  in  the  center  thereof  the  repre- 
sentation of  a  lion  surrounded  by  a  smaller 
ornamented  panel  and  having  the  words  "Lion 
Brand"  and  "lUeone,"  respectively,  above  and 
below  it,  Held,  properly  refused  registration 
in  view  of  the  prior  registration  of  a  mark 
consisting  of  the  representation  of  a  lion 
rampant  upon  a  shield  surrounded  by  a  circle 
and  the  words  "Puritas  et  Cura  S.  S.  P.  & 
Co."  Ex  parte  Fortuna  &  Magro,  C.  D.  1911, 
16.-)  O.  G.  473. 

1263.  The  marks  "Optimates,"  "Optimo," 
and  "La  Optima"  Held,  so  similar,  not  only 
in  appearance  but  in  meaning  and  origin,  that 
they  must  be  considered  the  same  in  law." 
*Justin  Seubert,  Inc.  v.  A.  Santaella  &  Co., 
C.  D.  1911,  166  O.  G.  987. 

1264.  Registration  of  the  word  "Creo-Car- 
bolin" Held,  properly  refused  registration, 
since  it  is  so  similar  to  the  previously  regis- 
tered mark  "Carbolineum"  for  the  same  class 
of  goods  as  to  be  likely  to  cause  confusion 
or  mistake  in  the  mind  of  the  public.  *In  re 
Barrett  Mfg.  Co.,  C.  D.  1911,  167  O.  G.  513. 

1265.  The  mark  "Chologestin"  so  closely  re- 
sembles "Chologen"  as  to  be  likely  where  used 
upon  goods  of  the  same  general  description, 
to  produce  confusion  in  trade.  ♦Breitenbach 
&  F.  H.  Strong  Co.  v.  Rosenberg.  C.  D.  1911, 
167  O.  G.  763. 

1266.  The  words  "Sunshine"  and  "Sun- 
beam" Held,  to  be  so  similar  that  their  con- 
temporaneous use  upon  goods  of  the  same  de- 
scriptive properties  would  be  liable  to  cause 


614 


TRADE  MARKS,  XLVI,    (c). 


confusion  in  the  mind  of  the  public  and  de- 
ceive purchasers.  Ex  parte  Austin,  Nichols  & 
Co.,  C.  D.  1911,  167  O.  G.  981. 

1267.  A  trade-mark  for  desiccated  milk  or 
milk-powder  consisting  of  the  representation 
of  twenty  milk  cans  arranged  in  the  arc  of  a 
circle  and  a  tub  or  firkin  lying  upon  its  side 
at  the  middle  of  the  row,  Held,  to  so  nearly 
resemble  a  registered  mark  consisting  of  the 
representation  of  a  single  milk-can  as  to  be 
likely  to  cause  confusion  in  the  mind  of  the 
public.  Ex  parte  The  Dry  Milk  Co.,  C.  D. 
1911,  171  O.  G.  774. 

1268.  The  mark  "Amber  Bead"  Held,  to  so 
nearly  resemble  the  mark  "Amber"  as  to  be 
likely  to  cause  confusion  by  their  contem- 
poraneous use  on  goods  of  the  same  descrip- 
tive properties.  Ex  parte  Independent  Brew- 
eries Co.,  C.  D.  1911,  172  O.  G.  833. 

(c)  Not  Deceptively  Similar. 

1269.  The  appellant  adopted  for  its  pack- 
ages a  label  bearing  as  a  central  figure  a  sym- 
bolical representation  of  Columbia,  having  the 
word  "Columbia"  on  its  pedestal  and  sur- 
rounded by  a  rectangular  border  or  framing 
having  a  star  at  each  corner  and  bearing  at 
each  side  edge  of  the  package  the  word  "Co- 
lumbia" in  fanciful  design  and  at  each  end  of 
the  package  the  words  "Pure  Tissue."  The 
appellees  adopted  for  their  packages  a  label 
having  printed  in  large  letters  diagonally 
across  the  face  the  word  "Columbia,"  sur- 
rounded by  a  rectangular  border,  within 
which  are  fanciful  corner  designs,  a  peculiar 
design  near  the  middle  of  the  left-hand  side, 
a  conspicuous  figure  of  a  stork  in  the  lower 
part  of  the  right-hand  side,  the  printed  words 
"Medicated  Toilet  Paper,"  and  the  figures  and 
words  "1000  sheets — Wire  Looped."  Held, 
that  save  in  the  common  use  of  the  word  "Co- 
lumbia." which  is  open  to  both  parties,  the 
labels  are  wholly  unlike.  (C.  D.  1897,  830,  81 
O.  G.  1615,  reversed.)  rf  Morgan  Envelope 
Company  v.  Walton,  et  al.,  C.  D.  1898,  84  O. 
G.  811. 

1270.  Where  the  examiner  refused  to  reg- 
ister the  word  "Otaka"  as  a  trade-mark  for 
biscuits  on  the  ground  that  it  so  nearly  re- 
sembled the  mark  "Uneeda"  already  registered 
as  to  be  likely  to  cause  confusion  in  the  mind 
of  the  public.  Held,  that  the  differences  be- 
tween the  appearance  and  sound  of  the  two 
words  are  marked,  as  is  also  the  idea  convey- 
ed by  them,  and  that  the  word  should  be  reg- 


istered.    Ex  parte  Lorenz,  C.  D.  1899,  8«  O. 
G.  2067. 

1271.  The  word  "Dermakola"  should  not  be 
refused  registration  upon  the  registered  word 
"Dermacura"  in  view  of  the  difference  in  the 
sound  of  the  words  and  in  view  of  the  differ- 
ence due  to  the  style  in  which  they  are  print- 
ed. Ex  parte  Laxakola  Company,  C.  D.  1902, 
100  O.  G.  451. 

1272.  Held,  that  the  trade-mark  "Waukwell" 
is  not  anticipated  by  the  prior  marks  "Walk- 
easy"  and  "Walk-a-way"  for  the  same  dass 
of  goods,  since  purchasers  exercising  ordi- 
nary care  would  not  confuse  the  marks  and 
be  mislead.  Ex  parte  Parker,  Holmes  &  Co., 
C.  D.  1902,  100  O.  G.  1111. 

1273.  Held,  that  there  is  no  interference  in 
fact  between  two  trade-marks  including  a 
diamond-shaped  figure  where  each  mark  in- 
cludes other  features  which  make  the  marks 
in  their  entirety  present  very  different  ap- 
pearances. Standard  Varnish  Works  v.  The 
David  B.  Crockett  Company,  C.  D.  1905,  119 
O.  G.  961. 

1274.  The  trade-mark  "Griserin"  does  not 
so  nearly  resemble  the  mark  "Electrene"  as  to 
deceive  purchasers.  Ex  parte  Griserin-Werke 
Paul  Camphausen,  C.  D.  1906,  120  O.  G.  327. 

1275.  A  mark  consisting  of  "Old  Jay"  and 
the  representation  of  a  jay  does  not  so  nearly 
resemble  the  words  "Old  Crow"  and  the  rep- 
resentation of  a  crow  as  to  mislead  the  public 
or  deceive  purchasers.  W.  A.  Gaines  &  Co.  v. 
Carlton  Importation  Co.,  C.  D.  1906,  120  O. 
G.  902. 

1276.  Registration  of  a  mark  consisting  of 
the  words  "Raven  Valley"  and  the  represen- 
tation of  three  ravens  is  not  to  be  refused 
because  of  the  prior  use  by  another  of  the 
words  "Old  Crow"  and  the  picture  of  a  crow. 
The  marks  are  not  so  nearly  alike  as  to  de- 
ceive purchasers.  W.  A.  Gaines  and  Com- 
pany v.  C.  A.  Knecht  and  Son,  C.  D.  1906, 
120  O.  G.  1163. 

1277.  A  trade-mark  including  the  word 
"Henderson"  is  not  to  be  refused  registra- 
tion became  an  entirely  different  mark  in- 
cluding the  word  "Anderson"  had  been  used 
previously  by  another  upon  the  same  class  of 
goods.  Buchanan-Anderson-Nelson  Company 
V.  Breen  &  Kennedy,  C.  D.  1906,  120  O.  G. 
2125. 

1278.  Where  the  mark  of  an  applicant  con- 
sists of  the  words  "Raven  Valley"  accom- 
panied by  a  pictorial  representation  of  three 


TRADE  MARKS,  XL VI,    (c). 


615 


ravens  in  the  bare  limbs  of  a  tree  and  the  op- 
poser's  trade-mark  consists  of  the  words  "Old 
Crow"  and  it  is  stated  that  the  words  have 
been  used  by  customers  of  the  opposer  accom- 
panied by  the  picture  of  a  crow,  even  admit- 
ting that  the  words  "Old  Crow"  as  a  trade- 
mark would  be  interfered  with  by  the  picture 
of  a  crow  and  that  the  raven  and  the  crow 
belong  to  the  same  family.  Held,  that  there  is 
no  such  similarity  between  the  marks  of  the 
parties  as  would  justify  refusing  the  appli- 
cant registration.  Gaines  &  Co.  v.  Knecht  & 
Son,  C.  D.  1906,  123  O.  G.  657. 

1279.  A  mark  consisting  of  the  words  and 
character  "Black  &  Blue,"  printed  along  the 
diagonal  line  of  division  between  a  black  por- 
tion and  a  blue  portion  of  a  rectangular  label. 
Held,  to  differ  sufficiently  from  the  registered 
mark  "Black  &  White"  to  prevent  confusion 
or  deception.  Ex  parte  Frederick  R.  West's 
Nephews,  C.  D.  1906,  125  O.  G.  1663. 

1280.  Held,  for  the  reasons  given  by  the 
commissioner  of  patents,  that  applicant  is  en- 
titled to  registration  of  the  words  "Old  J"  and 
"Old  Jay  Rye"  with  the  picture  of  a  jay  as  a 
trade-mark  for  whiskey,  notwithstanding  the 
ownership  by  the  opponent  of  the  words  "Old 
Crow"  with  a  picture  of  a  crow  for  the  same 
goods.  *W.  A.  Gaines  and  Co.  v.  Carlton  Im- 
portation Co.,  C.  D.  1906,  123  O.  G.  1994. 

1281.  Where  an  application  was  filed  for  the 
registration  of  a  trade-mark  for  whiskey,  de- 
scribed as  "the  word  'Henderson'  on  a  ribbon 
design  beneath  which  is  a  shield  upon  which 
is  a  monogram  composed  of  the  letters  and 
character  'B  &  K,' "  and  on  opposition  to  the 
registration  was  made  on  the  ground  that  the 
application  is  a  fraudulent  attempt  to  appro- 
priate appellant's  trade-mark  consisting  of  "the 
representation  of  a  Maltese  or  Templar  cross 
and  a  panel  below  the  same  bearing  the  word 
'Anderson,'  in  white  letters,  the  cross  and 
panel  appearing  in  red  and  each  having  a 
border  in  gold,"  Held,  that  there  is  not  the 
slightest  similarity  between  the  two  marks 
except  as  to  the  words  "Anderson"  and  "Hen- 
derson," that  both  are  well-known  names  of 
persons,  counties,  and  towns,  and  there  is  no 
reasonable  ground  of  confusion  between  them, 
that  it  is  not  probable  that  the  purchasing 
public  will  understand  the  word  "Henderson" 
as  indicating  the  goods  put  on  the  market  by 
the  owner  of  the  mark  "Anderson"  and  that 
one  is  as  much  entitled  to  claim  the  name 
"Henderson"  as  another  is  that  of  "Ander- 
son."    *The    Buchanan-.\nderson-Nelson    Co. 


V.  Breen  and  Kennedy,  C.  D.  1906,  124  O.  G. 
323. 

1282.  Held,  that  trade-marks  consisting  of 
the  words  "Zodenta"  and  "Sozodont"  are  quite 
dissimilar  and  that  "Zodenta"  is  not  calcu- 
lated to  mislead  or  deceive  the  average  pur- 
chaser who  may  seek  to  buy  "Sozodont."  The 
resemblance  is  not  such  as  to  preclude  a  prop- 
er determination  of  the  question  upon  de- 
murrer. *Hall  and  Ruckel  v.  Ingram,  C.  D. 
1907,  126  O.  G.  759. 

1283.  Held,  that  the  mark  of  the  appellant 
which  consists  of  the  representation  of  a  cross 
having  rays  radiating  from  its  upper  por- 
tion, associated  with  the  title-phrase  "Liqueur 
de  St.  Dominic,"  and  the  name  "Charles  Jac- 
quin  et  Cie"  appearing  above  and  below  the 
title-phrase,  the  whole  inclosed  in  a  circular 
border  of  dots  and  crosses  arranged  alter- 
nately, does  not  so  nearly  resemble  the  mark 
of  the  opponent,  which  comprises  the  words 
"Veritable  Benedictine,"  "D.  O.  M.,"  and  the 
representation  of  a  "cross,"  as  to  cause  con- 
fusion in  the  mind  of  the  public,  where  crosses 
of  various  types  have  been  used  upon  liqueurs 
and  cordials  by  many  other  dealers.  Gourd 
v.  Charles  Jacquin  et  Cie.,  Inc.,  C  D.  1907, 
130  O.  G.  665. 

1284.  Held,  that  the  marks  "Mayfield"  and 
"Mayfair"  are  not  so  nearly  alike  that  in  the 
absence  of  proof  as  to  actual  confusion  it 
can  be  held  that  confusion  would  be  so  likely 
to  occur  as  to  justify  refusing  to  register  the 
applicant's  mark.  Kentucky  Distilleries  and 
Warehouse  Co.  v.  P.  Dempsey  &  Co.,  C.  D. 
1907,   130  O.  G.   2373. 

1285.  Held,  that  trade-marks  for  electric- 
wiring  purpose  consisting  of  the  words  "Wire- 
lets"  and  "Condulets"  are  not  so  similar  in 
appearance  as  to  deceive  a  purchaser  using 
reasonable  care  and  diligence  in  the  selection 
of  the  goods  and  that  a  demurrer  to  the  notice 
of  opposition  was  properly  sustained.  Crouse- 
Hinds  Company  v.  Appleton  Electric  Com- 
pany, C.  D.  1907,  131  O.  G.  360. 

1286.  Applicant's  mark  consists  of  the  rep- 
resentation of  two  hands  above  the  figure  "3" 
and  the  words  "To  One"  associated  therewith. 
The  mark  of  the  opposer  consists  of  the  nu- 
meral "1,"  with  the  numeral  "3"  and  the  word 
"In"  contained  within  the  numeral  "1"  and 
the  words  "Three  in  One"  associated  there- 
with. Held,  that  these  marks  do  not  so  re- 
scm1)lc  each  other  that  purchasers  would  be 
likely  to  be  deceived  thereby.  G.  W.  Cole  Co. 
v.  Marshall  Oil  Co.,  C.  D.  1908,  133  O.  G.  994. 


61I-, 


TRADE  MARKS,  XLVII. 


1887.  Where  the  marks  of  the  opposer  and 
the  applicant  do  not  so  nearly  resemble  each 
other  that  it  is  apparent  that  confusion  in 
trade  would  be  likely  to  arise  from  their  use, 
registration  of  applicant's  mark  will  not  be  re- 
fused in  the  absence  of  proof  that  confusion 
has  taken  place    Id. 

1288.  A  mark  consisting  of  the  words  and 
symbols  "VVm.  A.  Rogers  A.  1.,"  followed  by 
a  horseshoe  inclosing  the  letter  "R,"  Held,  not 
deceptively  similar  to  the  marks  "Wm.  Rogers 
Mfg.  Co."  and  "Wm.  Rogers  &  Son."  *Wm. 
A.  Rogers,  Limited  v.  International  Silver  Co., 
C.  D.  1910,  1,'J4  O.  G.  837. 

1289.  Prior  use  of  the  word  "Sozodont"  as 
a  trade-mark  for  tooth-paste.  Held,  to  con- 
stitute no  ground  for  refusing  registration 
of  the  word  "Kalodont"  as  a  trade-mark  for 
the  same  class  of  goods,  since  there  is  no 
misleading  resemblance  between  these  words. 
*K.  K.  Landespriv.  Milly-Kerzen-Seifen  Und 
Glycerin-Fabrik  Von  F.  A.  Sargs  Sohn  &  Co. 
v.  Hall  &  Ruckel,  C.  D.  1911,  165  O.  G.  732. 

1290.  A  mark  consisting  of  the  words  "Milk 
maid  Brand"  and  the  representation  of  a  milk- 
maid in  Swiss  costume  supporting  one  pail 
on  her  head  and  carrying  another  in  her  hand. 
Held,  not  so  similar  to  a  mark  consisting  of 
the  representation  of  a  waitress  in  Quaker 
or  Puritan  costume  carrying  a  tray  support- 
ing cups  as  to  deceive  purchasers  and  cause 
confusion  in  the  trade.  ♦Nestle  &  Anglo 
Swiss  Condensed  Milk  Co.  v.  Walter  Baker 
&  Co.,  C.  D.  1911,  167  O.  G.  765. 

1291.  Where  the  mark  of  the  applicant  con- 
sists of  the  representation  of  an  elephant  stand- 
ing upon  its  hind  legs  wearing  trousers  and  a 
coat  and  holding  in  one  elevated  foot  a  pair  of 
scissors,  a  piece  of  cloth  being  thrown  over 
the  other  elevated  leg,  and  the  mark  of  the 
opposer  consists  of  a  conventional  representa- 
tion of  an  elephant  and  the  words  "Elephant 
Brand,"  Held,  that  there  is  no  likelihood  that 
opposer  would  be  damaged  by  the  registra- 
tion of  applicant's  mark,  especially  as  the 
former  was  not  the  first  to  use  the  representa- 
tion of  an  elephant  upon  goods  of  the  same 
character  as  applicant's.  Collins  &  Co.  v. 
Meyer,  C.  D.  1911,  172  O.  G.  552. 

XLVII.  Specification  of  Goods. 

1292.  The  office  is  not  warranted  in  requir- 
ing that  a  trade-mark  be  separately  registered 
for  each  class  of  goods  with  which  it  is  used 
in  order  to  conform  to  the  office  classification. 


Ex  parte  Clark-Jewell-Wells  Co.,  C.  D.  1898, 
83  O.  G.  915. 

1293.  Where  a  trade-mark  used  on  several 
classes  of  goods  is  covered  by  a  single  regis- 
tration, the  applicant  should  state  for  each 
class  of  goods  the  length  of  time  the  trade- 
mark has  been  used  for  that  class.    Id. 

1294.  Where  an  applicant  intends  to  cover 
a  class  of  goods  broadly,  it  is  unnecessary  to 
mention  every  particular  description  of  goods 
comprised  in  such  class.  Ex  parte  A.  Stein 
&  Co.,  C.  D.  189S,  85  O.  G.  147. 

1295.  The  statement  of  the  particular  goods 
upon  which  the  mark  has  been  used  must  be 
made  clear  and  definite,  so  that  the  public  will 
be  informed  as  to  the  rights  claimed  by  reg- 
istrants. Ex  parte  The  Kingan  Packing  Asso- 
ciation, C.  D.  1905,  119  O.  G.  3234. 

1296.  The  allegation  that  the  mark  has  been 
used  upon  "meats"  does  not  convey  the  clear 
and  definite  idea  of  the  particular  goods  which 
the  statute  contemplates.     Id. 

1297.  Where  a  trade-mark  application  said 
that  the  mark  had  been  used  upon  "imple- 
ments, apparatus,  and  goods  used  in  athletic 
games  and  sports,"  registration  was  properly 
refused  on  the  ground  that  the  statutory  re- 
quirement for  a  description  of  the  particular 
goods  had  not  been  complied  with.  Ex  parte 
A.  G.  Spalding  &  Bros.,  C.  D.  1906,  120  O.  G. 
325. 

1298.  A  description  which  is  so  indefinite 
as  to  convey  no  intelligible  idea  of  the  par- 
ticular goods  upon  which  the  mark  has  been 
used  is  not  a  compliance  with  the  statute  and 
does  not  make  out  a  prima  facie  right  to  reg- 
istration.   Id. 

1299.  An  applicant's  right  to  registration  of 
a  trade-mark  is  dependent  upon  his  use  of 
it  upon  some  specific  goods,  and  under  the 
terms  of  the  statute  the  facts  upon  which  the 
right  is  based  must  be  stated,  leaving  the 
scope  of  the  right  acquired  for  subsequent 
judicial  determination.     Id. 

1300.  The  statute  requires  that  the  applicant 
specify  the  particular  goods  upon  which  his 
mark  has  been  used  and  not  merely  the  class 
of  goods.  The  term  "meats"  gives  the  class, 
but  not  the  particular  goods  and  is  not  suffi- 
ciently definite.  Ex  parte  The  Kingan  Pack- 
ing Association,  C.  D.  1906,  120  O.  G.  1165. 

1301.  "Implements,  apparatus,  and  goods 
used  in  athletic  games  and  sports"  Held,  in- 
definite and  of  no  force  as  a  statement  of  the 
particular  description  of  the  goods  upon  which 


TRADE  MARKS,  XLVIII. 


617 


the  trade-mark  had  been  used.    *In  re  A.  G. 
Spalding  and  Bros.,  C.  D.  1906,  123  O.  G.  321. 

1302.  Section  1  of  the  trade-mark  act  of 
May  4,  1906,  construed  to  mean  that  the  class 
of  merchandise  specified  in  the  application  for 
the  registration  of  a  trade-mark  shall  be  one 
of  the  classes  of  merchandise  established  by 
the  commissioner  under  section  2  of  said  act. 
Ex  parte  Strong  &  Garfield  Company,  C.  D. 
1906,  124  O.  G.  290.'). 

1303.  Held,  that  the  term  "feminine  apparel" 
stated  as  the  particular  description  of  the 
goods  to  which  the  registrant's  mark  is  ap- 
plied is  comprehensive  enough  to  include  "cor- 
sets." Ex  parte  International  Corset  Co.,  C. 
D.  1907,  130  O.  G.  1310. 

1304.  An  application  for  the  registration  of 
a  trade-mark  should  state  in  unequivocal  lan- 
guage the  particular  description  of  goods  to 
which  the  trade-mark  is  appropriated.  Ex 
parte  Empire  Knife  Company,  C.  D.  1909,  145 
O.  G.  763. 

1305.  The  definition  of  the  particular  de- 
scription of  goods  must  not  be  so  broad  as 
to  obviously  include  many  goods  to  which  the 
trade-mark  is  not  applied,  yet  it  need  not  be 
so  narrow  as  to  necessarily  exclude  some 
goods  to  which  the  mark  is  actually  applied. 
Ex  parte  Columbia  Cotton  Oil  and  Provision 
Corporation,  C.  D.  1911,  163  O.  G.  977. 

1306.  The  labels  filed  in  connection  with  an 
application  for  the  registration  of  a  trade- 
mark for  a  cotton-seed  oil  compound  defined 
the  goods  as  "Sterilized  Cotton  Seed  Oil — 
Oleo  Stearine."  Held,  that  the  particular  de- 
scription of  the  goods  in  the  application,  "An 
oleaginous  compound  for  use  as  a  pastry 
shortening,"  is   sufficiently  definite.     Id. 

1307.  An  objection  to  a  particular  descrip- 
tion of  goods  merely  on  the  ground  of  in- 
definiteness  is  reviewable  on  petition.  (Pfister 
&  Vogel  Leather  Company,  118  O.  G.  2250, 
distinguished.)  Ex  parte  Windhorst  &  Co., 
C.  D.  1911,  164  O.  G.  249. 

1308.  The  terms  "pressure-lamps"  and  "port- 
able merchandise  units  commonly  known  as 
gasolene,  incandescent  lighting  systems"  used 
in  the  particular  description  of  the  goods  upon 
which  the  mark  sought  to  be  registered  is  used 
Held,  not  indefinite.     Id. 

XLVIII.  Technical. 

1309.  It  is  commonly  said  that  there  is  a 
right   of  property  in  a  technical  trade-mark. 


and  an  infringement  of  it  is  spoken  of  as  a 
violation  of  a  property  right ;  but  whether  this 
view  IS  correct  or  not,  it  is  universally  agreed 
that  some  of  the  rights  which  are  incident  to 
property  do  inhere  in  a  technical  trade-mark, 
c  Church  &  Dwight  Co.  v.  Russ  et  al.,  C.  D. 
1900,  91  O.  G.  228. 

1310.  The  law  provides  for  the  registration 
of  trade-marks  which  have  been  actually  used 
in  commerce  with  foreign  nations  or  with 
Indian  tribes,  and  such  actual  use  is  a  prere- 
quisite for  registration.  Ex  parte  Circle  Man- 
ufacturing Company,  C.  D.  1902,  98  O.  G.  2365. 

1311.  Where  the  declaration  of  an  applica- 
tion for  the  registration  of  a  trade-mark  con- 
tains the  allegations  requisite  to  obtain  regis- 
tration of  the  mark  as  a  technical  mark,  it 
may  be  registered  as  such,  notwithstanding 
the  fact  that  other  allegations  are  made  suffi- 
cient to  obtain  registration  under  the  ten-year 
proviso  of  the  trade-mark  act,  such  addi- 
tional allegations  being  in  the  nature  of  mere 
surplusage.  L.  W.  Levy  &  Co.  v.  Uri,  C.  D. 
1907,  131  O.  G.  1687. 

1312.  The  amendment  of  a  trade-mark  ap- 
plication by  the  addition  of  a  statement  that 
the  mark  has  been  in  exclusive  use  by  the  ap- 
plicant for  ten  years  next  preceding  the  pas- 
sage of  the  trade-mark  act  after  refusal  to 
register  the  mark  as  a  technical  mark  will 
not  preclude  consideration  on  appeal  on  prior- 
ity of  the  question  whether  the  mark  is  in 
fact  a  technical  mark.  Robertson,  San- 
derson and  Co.,  Ltd.  v.  Charles  Dennehy  & 
Co.,  C.  D.  1908,  134  O.  G.  513. 

1313.  The  word  "Asbestos,"  the  letters  of 
which  are  formed  in  a  peculiar  manner,  is 
not  registrable  as  a  technical  trade-mark  for 
asbestos  engine  and  machinery  packing,  since 
the  predominant  feature  of  the  mark  is  the 
word  "Asbestos,"  which  is  descriptive  of  the 
goods  to  which  it  is  applied.  *H.  W.  Johns- 
Manville  Co.  v.  American  Steam  Packing  Co., 
C.   D.  1909,  145  O.  G.  257. 

1314.  The  phrase  "If  Not  Right— Write— 
Will  Make  Right"  is  in  the  nature  of  a  guar- 
anty that  the  merchandise  to  which  it  is  ap- 
plied is  of  good  quality,  and  it  is  not  the  prop- 
er subject  of  technical  trade-mark  protection 
(citing  In  re  Central  Consumers  Company, 
ante,  329,  140  O.  G.  1211,  32  App.  D.  C  523.) 
Ex  parte  Sumner  Iron  Works,  C  D.  1909, 
147  O.  G.  237. 

1315.  The  word  "Cream,"  as  applied  to  bak- 
ing-powder Held,  to  constitute  a  valid  tech- 
nical trade-mark.     *International  Food  Co.  v. 


618 


TRADE   MARKS,   XLIX. 


Price  Baking  Powder  Co.,  C.  D.  1911,  167  O. 
G.  76.J. 

XLIX.  Unfair  Competition. 

1316.  Where  the  defendants  sold  to  com- 
plainant's agents  under  the  name  "Hostetter's 
Bitters"  a  spurious  article  so  closely  resem- 
bling the  real  article  as  to  deceive  an  ordi- 
nary customer,  with  the  intent  that  it  should 
be  resold  by  the  drink  over  the  bar  in  the 
usual  way  as  Hostetter's  Bitters  in  fraud  of 
the  rights  of  complainant  and  of  the  public. 
Held,  that  there  was  an  illegal  appropriation 
of  complainant's  right  of  property,  which 
should  be  enjoined,  c  Hostctter  Company  v. 
Sommers,  et  al.,  C.  D.  1898,  82  O.  G.  753. 

1817.  An  owner  of  a  trade-mark  is  entitled 
to  protection  against  the  appropriation  of  his 
trade-mark  by  any  and  all  unfair  and  dis- 
honorable means,  and  a  court  of  equity  has 
power  to  grant  such  protection  whenever  it  is 
satisfied  that  an  attempt  has  been  made  by  in- 
genious subterfuges  to  invade  the  rights  of 
an  owner  of  a  trade-mark  either  by  a  conspi- 
racy with  others  to  deprive  him  of  such  rights 
or  by  misrepresentation  in  the  sale  of  a  spuri- 
ous article  so  manufactured  as  to  deceive  the 
public,    c  Id. 

1318.  Where  certain  millers  in  Minneapolis, 
Minn.,  have  for  years  made  flour  by  the  roller 
patent  process  and  used  as  brands  for  the 
flour  the  words  "Minneapolis,  Minn.,"  "Min- 
neapolis, Minnesota,"  "Minnesota,"  "Minne- 
sota Patent,"  and  the  words  "Minnesota"  or 
"Minnesota  Patent"  mean  that  the  flour  is 
made  under  the  roller  patent  process  some- 
where in  Minnesota  and  the  words  "Minne- 
apolis," "Minneapolis,  Minn.,"  and  "Minne- 
apolis, Minnesota"  signify  to  the  trade  that 
the  flour  was  made  at  a  Minneapolis  flouring- 
mill,  and  a  dealer  in  Chicago  obtained  from 
mills  at  Milwaukee,  Wis.,  an  inferior  grade 
of  flour  which  he  labeled  "Best  Minnesota 
Patent,  Minneapolis,  Minn.,"  and  advertised 
the  flour  as  made  at  Minneapolis,  Minn.,  with 
the  result  that  the  public  was  deceived  into 
buying  the  flour  of  the  Chicago  dealer  under 
the  belief  that  it  was  made  at  Minneapolis  and 
was  defrauded  and  the  business  of  the  Min- 
neapolis millers  damaged,  Held,  that  a  court 
of  equity  may  grant  relief  by  prohibiting  the 
fraud  and  preventing  the  damage  to  the  busi- 
ness of  the  Minneapolis  millers.  Pillsbury- 
Washburn  Flour  Mills  Company,  Limited,  et 
al.  v.  Eagle,  C.  D.  180S,  8.")  O.  G.  1397. 


1319.  Where  one  person  has  so  dressed  up 
his  goods  as  to  deceive  the  public  into  the  be- 
lief that  they  are  the  goods  of  another  person 
and  so  put  them  on  the  market  to  the  injury 
of  that  person  and  the  public,  an  action  at 
law  will  lie  for  the  deceit,  and  to  save  multi- 
plicity of  suits  and  prevent  irreparable  injury 
equity  will  restrain  such  unfair  and  fraudu- 
lent competition,     d  Id. 

1320.  While  a  geographical  name  is  not  a 
subject  of  a  trade-mark  and  any  one  may 
use  it,  yet  where  it  has  been  adopted  first  as 
merely  indicating  the  place  of  manufacture 
and  afterward  has  become  a  well-known  sign 
and  synonym  for  superior  excellence,  persons 
doing  business  at  other  places  will  not  be 
permitted  to  use  it  as  a  brand  or  label  for 
similar  goods  manufactured  at  other  points  for 
the  purpose  of  appropriating  the  good-will  and 
business  of  another,    d  Id. 

1321.  Where  the  question  is  simply  one  of 
unfair  competition,  it  is  not  essential  that 
there  should  be  any  exclusive  or  property 
right  in  the  words  or  labels  used,  as  irrespec- 
tive of  any  question  of  trade-mark  rival  man- 
ufacturers have  no  right  by  imitative  devices 
to  beguile  the  public  into  buying  their  wares 
under  the  impression  that  they  are  buying 
those  of  their  rivals,     d  Id. 

1322.  Where  one  person  or  corporation  is 
entitled  to  relief  in  a  case  of  fraudulent  com- 
petition or  trade,  two  or  more  persons  or  com- 
petitors have  a  common  interest  in  prevent- 
ing the  fraud  may  unite  to  maintain  an  ac- 
tion in  equity,    d  Id. 

1323.  While  one  cannot  obtain  the  exclu- 
sive right  to  use  a  geographical  name  as  a 
trade-mark  and  cannot  make  a  trade-mark  of 
his  own  name  to  deprive  another  of  the  same 
name  from  using  it  in  his  business,  that  other 
may  not  resort  to  artifice  to  do  that  which  is 
calculated  to  deceive  the  public  as  to  the  iden- 
tity of  the  business  or  of  the  article  produced 
and  so  create  injury  to  the  other  beyond  that 
which  results  from  the  similarity  of  the  name. 
d  Illinois  Watch  Case  Co.  v.  Elgin  National 
Watch  Co.,  C.  D.  1899,  87  O.  G.  2323. 

1324.  This  doctrine  does  not  proceed  upon 
the  ground  of  the  infringement  of  a  trade- 
mark, but  upon  the  ground  of  fraud  and  that 
equity  will  not  permit  one,  aside  from  any 
question  of  trade-mark,  to  palm  off  his  goods 
as  the  goods  of  another  and  so  deceives  the 
public  and  injure  that  other,    d  Id. 

1325.  It  is  not  necessary  in  such  cases  in 
order  to  give  a  right  to  an  injunction  that  a 


TRADE  MARKS,  XLIX. 


619 


specific  trade-mark  should  be  infringed,  but 
that  the  conduct  of  the  party  should  show 
an  intent  to  palm  off  his  goods  as  the  goods 
of  another.  The  allegations  respecting  trade- 
marks are  in  such  cases  only  "regarded  as 
matter  of  inducement  leading  up  to  the  ques- 
tion of  actual  fraud,    d  Id. 

132€.  The  tendency  of  the  courts  at  the 
present  time  seems  to  be  to  restrict  the  scope 
of  the  law  applicable  to  technical  trade-marks 
and  to  extend  its  scope  in  cases  of  unfair  com- 
petition, c  Church  &  Dwight  Co.  v.  Russ  et 
a!.,  C.  D.  1900,  91  O.  G.  228. 

1327.  The  idea  of  fraud  or  imposition  lies 
at  the  foundation  of  the  law  of  technical 
trade-marks  as  well  as  the  law  of  unfair  com- 
petition ;  but  it  must  be  borne  in  mind  that 
fraud  may  rest  in  actual  intent  shown  by 
the  evidence,  or  may  be  inferred  from  the 
circumstances,  or  may  be  conclusively  pre- 
sumed from  the  act  itself.  In  the  case  of 
unfair  competition,  the  fraudulent  intent  must 
be  shown  by  the  evidence  or  be  inferable  from 
the  circumstances,  while  in  the  case  of  the  use 
by  one  trader  of  the  trade-mark  or  trade 
symbol  of  a  rival  trader  fraud  will  be  pre- 
sumed from  its  wrongful  use.     c  Id. 

1828.  Duryea,  the  president  and  a  stock- 
holder of  the  Glen  Cove  Manufacturing  Com- 
pany, which  sold  starch  in  packages  having 
thereon  the  name  "Duryea's  Starch"  in  prom- 
inent letters,  the  name  of  the  company,  and  a 
picture  of  the  manufacturing  buildings,  sold 
the  business,  trade-marks,  and  good  will  of 
the  company  to  another  company,  which  used 
the  packages  containing  the  name  and  picture 
with  its  own  name  as  manufacturer,  Duryea, 
in  making  the  sale,  agreeing  not  to  go  into 
the  starch  business  for  five  years.  At  the  ex- 
piration of  that  time  he  furnished  capital  to 
his  sons,  who  formed  a  partnership  with  oth- 
ers and  sold  starch  as  "Starch  prepared  by 
Duryea  &  Co.,"  but  used  different  labels  and 
packages,  the  starch  being  prepared  in  accord- 
ance with  directions  given  by  Duryea  senior. 
Held,  that  this  was  a  proper  use  by  Druyea 
and  his  sons  of  their  own  name,  and  that  they 
could  not  be  enjoined,  d  National  Starch 
Manufacturing  Company  v.  Duryea  et  al.,  C. 
D.   1900,  91  O.  G.  2373. 

1829.  The  law  of  unfair  competition  is  that 
when  a  mark,  name,  or  phrase  has  been  so 
used  by  a  person  in  connection  with  his  busi- 
ness or  articles  of  merchandise  as  to  become 
identified  therewith  and  indicate  to  the  public 
that  such  articles  emanate  from  him,  the  law 


will  prohibit  others  from  so  using  it  as  to  lead 
purchasers  to  believe  that  the  articles  they 
sell  are  his,  or  as  to  obtain  the  benefit  of 
the  market  he  has  built  up  thereunder,  d  Ful- 
ler v.  Huff,  et  al.,  C.  D.  1900,  92  O.  G.  1620. 

1330.  The  courts  in  considering  the  use  by 
competitors  of  the  name  under  which  a  rival 
has  previously  gained  a  business  reputation, 
although  the  name  is  not  strictly  a  trade- 
mark, have  attached  great  importance  to  long- 
continued  and  exclusive  priority  of  use  and 
have  demanded  a  high  order  of  commercial 
integrity  and  have  frowned  upon  all  filching 
attempts  to  obtain  the  reputation  of  another. 
did. 

1331.  If  a  trade  name  has  been  so  identi- 
fied with  the  business  of  a  manufacturer  as 
to  inform  the  public  that  the  name  upon  goods 
means  that  they  are  the  product  of  that  per- 
son, and  another  adopts  and  displays  the  name 
it  is  not  material  that  he  has  not  also  adopted 
the  particular  dress  in  which  his  predecessor 
has  presented  his  goods,    d  Id. 

1332.  Although  the  intent  of  the  defendant 
when  it  commenced  the  use  of  the  name  may 
have  been  innocent  the  continuance  after  it 
had  learned  of  the  complainant's  prior  use  in- 
dicates its  deliberate  intention  to  use  the  name 
without  reference  to  the  complainant's  pos- 
sible prior  rights,    d  Id. 

1333.  The  use  by  the  defendant  upon  goods 
of  the  name  "Sanitarium  Health  Food  Com- 
pany." although  in  connection  with  the  words 
"Battle  Creek,  Michigan,"  is  likely  to  deceive 
purchasers  and  make  them  believe  that  they 
are  obtaining  the  goods  of  the  complainant 
sold  under  the  name  "Health  Food  Company," 
and  therefore  an  injunction  will  be  granted. 
It  is  not  necessary  to  show  that  a  purchaser 
had  actually  been  deceived  where  a  manifest 
liability  to  deception  exists,    d  Id. 

1334.  Where  an  alleged  trade-mark  is  not 
in  itself  a  good  trade-mark,  but  the  use  of 
the  word  has  come  to  denote  the  particular 
manufacturer  or  vendor,  relief  against  unfair 
competition  or  perfidious  dealing  will  be 
awarded  by  requiring  the  use  of  the  word  by 
another  to  be  confined  to  its  primary  sense 
by  such  limitations  as  will  prevent  misappre- 
hension on  the  question  of  origin.  In  the 
latter  class  of  cases  such  circumstances  must 
be  made  out  as  will  show  wrongful  intent  n 
fact  or  justify  that  inference  from  the  inevi- 
table consequences  of  the  act  complained  of. 
Elgin  National  Watch  Co.  v.  Illinois  Watch 
Case  Co.  ct  al.,  C.  D.  1901,  94  O.  G.  755. 


620 


TRADE   MARKS,   XLIX. 


1335.  Where  the  complainants  had  built  up 
a  trade  for  "American  Ball  Blue"  and  "Amer- 
ican Wash  Blue,"  the  respondents  were  prop- 
erly enjoined  from  using  the  same  words  upon 
their  blue  on  the  ground  of  unfair  competi- 
tion, notwithstanding  the  descriptive  character 
of  the  words,  d  Shaver  et  al.  v.  Heller  & 
Merz  Company,  C.  D.  1901,  96  O.  G.  2229. 

1336.  Geographical  terms  and  words  de- 
scriptive of  character,  quality,  or  place  of 
manufacture  or  sale  cannot  be  monopolized  as 
trade-marks ;  but  the  use  of  such  terms  and 
words  to  palm  off  the  goods  of  one  manufac- 
turer or  vender  as  those  of  another  and  to 
carry  on  unfair  competition  may  be  lawfully 
enjoined  to  the  same  extent  as  the  use  of  any 
other  terms  or  symbols,     did. 

1337.  Suits  to  enjoin  unfair  competition  in 
trade  are  founded  upon  the  damage  to  the 
trade  of  the  complainants  by  the  fraudulent 
passing  of  the  goods  of  one  manufacturer  for 
those  of  another,  and  no  proprietary  interest 
in  the  words,  names,  or  means  by  which  the 
fraud  is  perpetrated  is  requisite  to  maintain 
the  suit,     d  Id. 

1338.  Where  the  appellants  put  their  goods 
up  in  different-colored  packages  and  in  other 
ways  differentiated  by  the  dress  of  their  goods 
from  that  of  those  manufactured  by  the  appel- 
lee, but  where  the  bluing  was  ordinarily 
bought  and  ordered  by  its  name  "American 
Ball  Blue,"  Held,  that  the  differences  in  the 
packages  did  not  and  could  not  prevent  the 
fraud,    d  Id. 

1339.  The  placing  of  the  appellants'  name 
and  address  upon  the  packages  in  addition  to 
the  appellee's  mark  is  an  aggravation  and  not 
a  justification  of  the  use  of  that  mark,  since  it 
enabled  them  to  derive  greater  benefit  from 
their  fraud,    d  Id. 

1340.  While  a  descriptive  word  or  a  geo- 
graphical or  personal  name  cannot  constitute 
a  technical  trade-mark,  yet  where  an  article 
has  come  to  be  known  by  the  descriptive  word 
one  may  not  use  that  word  to  palm  off  his 
goods  as  the  goods  of  another  who  has  first 
adopted  it  and  by  which  appellation  the  goods 
have  become  known.  One  may  not  use  his 
own  name  for  such  purpose  when  it  works 
a  fraud.  If  he  uses  the  descriptive  word  or 
a  geographical  name  or  his  own  name,  it  must 
be  so  used  as  not  to  deprive  others  of  their 
rights  or  to  deceive  the  public  and  the  name 
must  be  accompanied  with  such  indication 
that  the  thing  manufactured  is  the  work  of  the 
one  making  it  as  would  unmistakably  inform 


the  public  of  the  fact,     d  Williams,  et  al.  v. 
Mitchell,  et  al.,  C.  D.  1901,  96  O.  G.  2411. 

1341.  VVhere  the  defendants  by  their  lim- 
itation of  the  complainants'  advertisement 
have  been  guilty  of  deceiving  purchasers  and 
the  public  into  believing  that  the  game-boards 
of  their  make  were  the  game-boards  made  by 
the  complainants,  Held,  that  this  constitutes 
an  invasion  of  the  complainants'  rights  and 
the  complainants  are  entitled  upon  proper 
proof  to  compensation  to  the  extent  of  the 
invasion,    d  Id. 

1342.  While  a  particular  mark  may  be  pro- 
tected beyond  the  point  of  application  to  goods 
of  substantially  the  same  descriptive  proper- 
ties, it  is  nevertheless  just  at  this  point  that 
trade-mark  ends  and  unfair  competition  be- 
gins. Ex  parte  Faxon,  C.  D.  1903,  103  O.  G. 
891. 

1343.  The  appropriation  of  a  particular 
mark  for  the  general  purposes  of  a  particular 
commercial  enterprise  irrespective  of  the  de- 
scriptive properties  of  the  goods  upon  which 
it  is  used  cannot  be  protected  as  a  trade-mark, 
but  only  by  a  court  of  equity  under  the  doc- 
trine of  unfair  competition.     Id. 

1344.  Where  the  right  of  the  appellee  to  the 
use  of  the  garb  with  which  it  has  clothed  its 
product  is  established,  Held,  that  the  appellant 
will  not  be  permitted  by  imitation  to  pirate 
that  right  and  to  sell  its  goods  as  the  goods 
of  the  appellee.  A.  Bauer  &  Co.  v.  La  So- 
ciete  Anonyme  De  La  Distillerie  De  La  Liq- 
ueur Benedictine  De  I'Ablage  de  Fecamp,  C. 
D.   1903,  106  O.  G.  265. 

1345.  No  one  has  a  monopoly  of  form,  nor 
of  color,  nor  of  the  shape  of  the  letters,  nor 
of  geographical  names,  nor  of  his  own  name; 
but  one  may  not  by  means  lawful  in  them- 
selves when  devoted  to  a  lawful  end  perpe- 
trate a  fraud  upon  the  public  or  infringe  the 
rights  of  another  by  palming  off  his  goods  as 
the  goods  of  another,    d  Id. 

1346.  Where  there  is  marked  similarity  in 
the  shape  of  the  peculiar  bottle  used  by  ap- 
pellant and  by  the  appellee,  in  the  character 
and  arrangement  of  the  labels,  the  letter  press, 
in  the  wax  seals,  in  the  capsules  covering  the 
corks  and  the  means  for  fastening  them,  and 
in  the  name  given  to  the  article.  Held,  that  the 
intent  to  deceive  is  obvious,     d  Id. 

1347.  A  false  assertion  in  connection  with 
a  trade-mark  of  the  name  of  the  manufacturer 
or  place  of  manufacture  will  deprive  the  party 
of  the  right  to  the  mark,  since  it  is  an  attempt 
to  pass  upon  the  public  goods  as  possessing  a 


TRADE  MARKS,  XLIX. 


621 


quality   and   merit   which   another's   skill  had 
given  to  a  similar  article,    d  Id. 

1348.  The  protection  to  be  given  to  the 
mere  name  will  be  derived  from  the  principles 
governing  unfair  competition  and  not  from 
the  technical  ground  of  trade-mark.  Ex  parte 
A.  Engelhard  &  Sons  Co.,  C.  D.  1904,  109  O. 
G.  1886. 

1349.  The  question  of  unfair  competition 
in  trade  cannot  be  considered  in  an  opposition 
proceeding.  Gourd  v.  Charles  Jacquin  et  Cie, 
Inc.,  C  D,  1007,  l.SO  O.  G.  665. 

1350.  The  question  of  unfair  competition 
in  trade  cannot  be  considered  in  an  opposition 
proceeding.  Crouse-Hinds  Co.  v.  Appleton 
Electric  Co.,  C.  D.  1907,  131  O.  G.  360. 

1351.  Where  the  Hall's  Safe  and  Lock  Com- 
pany, a  corporation,  the  stock  of  which  was 
largely  owned  by  Joseph  L.  Hall,  the  founder 
of  the  business,  and  his  sons,  sold  all  its  prop- 
erty, including  trade-marks,  trade-rights, 
good-will,  and  its  business  as  a  going  con- 
cern, to  another  company,  which  subsequently 
conveyed  such  rights  to  the  Herring-Hall- 
Marvin  Safe  Company  and  agreed  to  go  out 
of  business,  which  it  did  with  the  assent  of 
all  its  stockholders,  such  transfer  did  not 
preclude  the  sons  of  Joseph  L.  Hall  from  sub- 
sequently engaging  in  the  same  business  and 
using  the  name  of  Hall  as  a  part  of  the  cor- 
porate name,  particularly  where  it  is  shown 
that  the  purchasing  company  had  before  its 
mind  the  possibility  of  competition  by  the 
Halls  and  gave  the  measure  of  its  expectations 
and  demands  by  personal  contracts  that  it  re- 
quired, which  were  limited  in  time  and  scope 
and  were  discharged  before  the  new  company 
was  formed ;  but  such  name  must  not  be  used 
by  the  new  company  in  such  a  way  as  to  rep- 
resent that  it  is  the  successor  of  the  original 
company,  or  that  its  goods  are  the  product 
of  that  company  or  its  successors,  or  interfere 
with  the  good-will  bought  from  it.  **Donnell 
V.  Herring-Hall-Marvin  Safe  Company  and 
Hall  Safe  and  Lock  Company,  C.  D.  1907,  134 
O.  G.  10.51. 

1352.  The  Hall's  Safe  and  Lock  Company, 
a  corporation,  the  stock  of  which  was  largely 
owned  by  Joseph  L.  Hall,  the  founder  of  the 
business,  and  his  sons,  sold  all  its  property, 
including  trade-marks,  trade-rights,  good  will, 
and  its  business  as  a  going  concern,  to  another 
company,  which  subsequently  conveyed  such 
rights  to  the  Herring-Hall-Marvin  Safe  Com- 
pany and  agreed  to  go  out  of  business,  which 
it  did  with  the  assent  of  all  its  stockholders. 


Thereafter  the  sons  formed  another  corpora- 
tion under  the  name  "Hall's  Safe  Co.,"  and 
began  the  manufacture  of  the  same  class  of 
goods.  Held,  that  while  the  Halls  had  a  right 
to  engage  in  the  same  business  after  such 
transfer,  the  use  of  the  name  selected  would 
of  itself  deceive  unless  explained,  and  that  the 
company  purchasing  the  rights  of  the  original 
company  was  entitled  to  an  injunction  forbid- 
ding the  use  of  the  name  Hall,  either  alone 
or  in  combination,  in  corporate  name,  on  safes, 
or  in  advertisements,  unless  accompanied  by 
information  that  the  defendant  is  not  the 
original  Hall's  Safe  and  Lock  Company  or  its 
successor,  or,  as  the  case  may  be,  that  the  ar- 
ticle is  not  the  product  of  the  last-named  com- 
pany or  its  successors.  **Herring-Hall-Mar- 
vin  Safe  Co.  v.  Hall's  Safe  Co.,  C.  D.  1908, 
134  O.  G.  1053. 

1353.  Where  in  a  suit  between  citizens  of 
different  states  infringement  of  a  registered 
trade-mark  is  alleged  and  also  unfair  com- 
petition in  trade.  Held,  that  the  supreme  court 
has  jurisdiction  to  review  a  decision  of  the 
circuit  court  of  appeals  holding  the  mark  in- 
valid and  the  defendant  not  guilty  of  unfair 
competition.  **Standard  Paint  Co.  v.  Trini- 
dad Asphalt  Mfg.  Co.,  C.  D.  1911,  165  O.  G. 
971. 

1354.  Plaintiff  used  the  word  "Ruberoid"  as 
a  trade-mark  for  flexible  roofing.  Defendant 
used  the  word  "Rubbero"  as  a  trade-mark  for 
similar  goods ;  but  there  was  no  immitation 
of  plaintiffs  labels  in  their  arrangement,  color, 
or  general  appearance.  Held,  that  defendant 
was  not  guilty  of  unfair  competition.    **Id. 

1355.  The  burden  rests  upon  defendant 
when  sued  for  an  unfair  use  of  the  plaintiff's 
trade  name  to  justify  his  use  of  it.  **Jacobs 
V.  Beecham,  C.  D.  1911,  168  O.  G.  252. 

1356.  Using  the  name  of  a  manufacturer  of 
pills  under  a  secret  formula  upon  pills  made 
by  a  competitor  is  not  saved  from  being  un- 
fair because  it  is  accompanied  by  a  statement 
that  the  latter  makes  the  pills  even  if  it  be 
conceded  that  he  is  using  the  other's  formula. 
**Id. 

1357.  The  use  of  the  word  "patent"  to  in- 
dicate a  medicine  made  by  a  secret  formula 
when  the  medicine  is  in  fact  not  patented  is 
not  such  fraud  as  defeats  the  right  of  the 
manufacturer  to  relief  in  equity  against  unfair 
competitions.    **Id. 

1358.  The  continued  use  of  circulars  and 
labels  which  suggest  the  foreign  origin  of  a 
product  after  its  manufacture  had  been  begun 


C22 


WEIGHT   OF   PATENT   OFFICE  DECISIONS. 


in  this  country  and  the  use  of  the  name  of  the 
original  proprietor  for  some  time  after  the 
business  had  been  transferred  to  his  son  are 
not  such  fraud  as  defeats  the  right  of  a  manu- 
facturer to  rehef  in  equity  against  unfair  com- 
petition.    **Id. 

L.  Use  and  Sale  as  Establishing  Title. 

1359.  Every  trade  must  have  a  beginning, 
and  it  would  be  unreasonable  and  unjust  to 
say  that  it  must  be  general  and  the  article 
widely  known  before  the  trade-mark  in  the 
name  affixed  to  it  and  indicating  its  origin  can 
be  acquired.  It  is  enough  if  the  article  with 
the  adopted  brand  upon  it  is  actually  a  vendi- 
ble article  in  the  market,  with  the  intent  by 
the  proprietor  to  continue  its  production  and 
sale.  *Breitenbach  and  F.  N.  Strong  Co.  v. 
Rosenberg,  C.  D.  1911,  167  O.  G.  763. 

1360.  Testimony  showing  that  goods  bear- 
ing the  mark  "Chologen,"  which  had  been 
adopted  by  a  German  manufacturer,  were  on 
sale  by  wholesale  and  retail  druggists  in  Ho- 
boken,  Chicago,  and  Detroit  from  the  time 
the  goods  were  first  introduced  into  this  coun- 
try, Held,  sufficient  to  establish  a  trade-mark 
use,  although  the  sales  were  neither  very  great 
nor  very  general.    ♦Id. 

LI.  What  Constitutes. 

1361.  It  is  the  province  and  duty  of  the 
tribunals  of  the  patent  office  having  jurisdic- 
tion of  the  registration  of  trade-marks  to 
decide  whether  the  thing  presented  for  regis- 
tration is  a  trade-mark.  An  applicant  may 
be  the  owner  of  the  thing  alleged  to  be  his 
trade-mark,  and  yet  the  thing  presented  for 
registration  may  not  be  a  trade-mark.  The 
statement  and  declaration  of  applicant  that 
the  thing  presented  for  registration  is  a  trade- 
mark are  not  conclusive.  Ex  parte  Bronson 
Co.,  C.  D.  1899,  87  O.  G.  1782. 

1362.  The  trade-mark  act  does  not  define 
what  shall  constitute  a  trade-mark.  To  de- 
termine what  that  trade-mark  is  which  is  pro- 
tected by  the  act,  reference  must  be  made  to 
the  common  law.  d  Illinois  Watch  Case  Co.  v. 
Elgin  National  Watch  Co.,  C  D.  1899,  87  O. 
G.  2323. 

1363.  The  term  "trade-mark,"  generally 
speaking,  means  a  distinctive  mark  of  authen- 
ticity through  which  the  produce  of  particu- 
lar manufacturers  or  the  vendible  commodities 
of  particular  merchants  may  be  distinguished 


from  those  of  others.  It  may  consist  of  any 
symbol  or  of  any  form  of  words.  *Elgin 
National  Watch  Company  v.  Illinois  Watch 
Case  Company  et  al.,  C.  D.  1901,  94  O.  G. 
755. 

1364.  The  price  lists  and  sample  pack  of 
cards  indicate  that  the  company  adopted  the 
mark  to  designate  a  certain  grade  or  style  of 
cards  which  they  offered  for  sale  at  a  specified 
price  and  to  distinguish  this  variety  of  cards 
from  numerous  other  styles  made  and  sold  by 
said  company.  There  is  no  evidence  that  the 
mark  was  used  to  indicate  the  origin  or  manu- 
facture of  the  cards;  but,  on  the  contrary,  a 
fanciful  figure  labeled  "Trade  Mark"  appears 
to  be  for  the  purpose  of  indicating  the  origin 
of  the  goods  and  to  constitute  properly  the 
trade-mark  of  the  company.  Held,  that  the 
mark  in  controversy  was  used  by  said  com- 
pany as  a  grade,  quality,  or  style  mark,  and 
not  as  a  technical  trade-mark.  The  United 
States  Playing  Card  Company  v.  C.  M.  Clark 
Publishing  Company,  C.  D.  1907,  126  O.  G. 
2190. 

1365.  Where  a  mark  is  adopted  and  used 
primarily  to  indicate  style,  grade,  or  quality 
of  goods,  and  not  for  the  purpose  of  indi- 
cating origin  or  manufacture  of  the  goods. 
Held,  that  it  does  not  constitute  a  valid  trade- 
mark.   Id. 

1366.  Where  the  label  applied  to  a  box  of 
candy  contained  the  legend  "A  Fussy  Package 
for  Fastidious  Folks,"  Held,  that  the  word 
"Fussy"  so  used  did  not  constitute  a  trade- 
mark. Stephen  F.  Whitman  &  Son,  C.  D. 
1910,  151  O.  G.  193. 


WEIGHT  OF  PATENT  OFFICE  DECISIONS  IN 
THE  COTjaTS. 

1.  Where  the  several  tribunals  of  the  patent 
office  concur  in  findings  in  respect  to  a  mere 
matter  of  fact  about  which  testimony  is  con- 
flicting. Held,  there  is  no  reasonable  ground 
for  supposing  that  the  court  of  appeals  of  the 
District  of  Columbia  will  reverse  those  find- 
ings unless  it  be  shown  clearly  and  beyond 
reasonable  doubt  that  there  had  been  error 
committed  in  comparing  and  weighing  the  evi- 
dence. *Glenn  et  al.  v.  Adams,  C.  D.  1898, 
83  O.  G.  158. 

2.  Where  patentable  novelty  has  been  de- 
nied not  only  by  one  but  by  all  the  expert 
tribunals  of  the  patent  office,  the  applicant 
must  make  out  a  very  clear  case  of  invention 


WITHDRAWAL  FROM   ISSUE. 


623 


(Barratt  v.  Commissioner  of  Patents,  C.  D. 
1897,  506,  79  O.  G.  2020,  cited),  and  this  is 
but  another  apphcation  of  the  same  principle 
that  governs  in  those  cases  where  a  patent 
having  been  regularly  granted  all  doubt  in  re- 
spect of  invention  is  resolved  in  favor  of  the 
patentee.  (Fenton  Co.  v.  Office  Specialty  Co., 
12  App.  D.  C.  201,  cited.)  *Smith  v.  Duell, 
Commissioner  of  Patents,  C.  D.  1899,  87  O.  G. 
893. 

3.  The  rule  that  where  patentable  novelty 
has  been  denied  by  all  of  the  expert  tribunals 
of  the  patent  office  it  is  incumbent  upon  one 
appealing  therefrom  to  make  out  a  clear 
case  of  error  in  order  to  obtain  a  reversal  (In 
re  Barratt,  C.  D.  1897,  506,  79  O.  G.  2020;  In 
re  Smith,  C.  D.  1899,  313,  87  O.  G.  893),  Held, 
to  be  particularly  applicable  to  a  case  which, 
for  its  satisfactory  determination,  requires 
technical  knowledge  of  an  abstruse  art  that 
can  only  be  acquired  through  thorough  train- 
ing. *Beswick  v.  Duell,  Commissioner  of  Pat- 
ents, C.  D.  1900,  91  O.  G.  1436. 

4-  The  presumption  against  the  patentabil- 
ity of  any  claim  is  made  very  strong  by  the 
concurrent  denial  of  all  the  tribunals  of  the 
patent  office  to  whom  in  turn  it  has  been  pre- 
sented. (Smith  v.  Duell,  Commissioner  of 
Patents,  C.  D.  1899,  313,  87  O.  G.  893,  cited.) 
*Fay  V.  Duell,  Commissioner  of  Patents,  C. 
D.  1900,  90  O.  G.  1157. 

5.  Where  the  defendants  were  permitted  to 
contest  in  the  patent  office  the  right  of  the 
complainants  to  a  reissue  applied  for  within 
seven  months  after  the  grant  of  the  patent 
and  an  tribunals  there  sustained  the  complain- 
ants' rights.  Held,  that  while  not  conclusive 
the  decision  of  the  patent  office  is  entitled  to 
great  weight,  d  Crown  Cork  &  Seal  Co.  of 
Balto.  V.  Aluminum  Stopper  Co.  of  Balto. 
City,  et  al.,  C.  D.  1901,  96  O.  G.  2573. 

6.  It  is  the  settled  rule  of  this  court  that 
unanimity  of  decision  in  the  patent  office  im- 
poses upon  an  appellant  the  burden  of  show- 
ing very  clearly  that  error  was  committed  in 
the  final  decision  of  the  commissioner  in  order 
to  warrant  its  reversal.  *In  re  Adams,  C.  D. 
1905,  114  O.  G.  2093. 

7.  On  appeal  to  the  court  the  decisions  of 
the  expert  tribunals  of  the  patent  office  as 
to  the  identity  of  the  inventions  disclosed  and 
claimed  by  the  parties  will  ordinarily  be  ac- 
cepted as  conclusive;  but  in  extreme  cases 
where  palpable  error  has  been  committed  such 
decisions  may  be  reversed.  *Seeberger  v. 
Dodge,  C.  D.  1905,  114  O.  G.  2382. 


WITHDRAWAL  FROM  ISSUE. 

1.  After  an  application  has  been  examined, 

allowed,  and  been  through  a  long  interfer- 
ence it  should  not  be  withdrawn  from  issue 
for  the  citation  of  a  new  reference  unless  the 
examiner  is  satisfied  that  such  reference  fully 
meets  the  claims.  Ex  parte  Atterbury,  C.  D. 
1898,  84  O.  G.  158:!. 

2.  When  an  application  after  interference 
and  allowance  is  withdrawn  for  the  citation 
of  a  new  reference,  every  facility  for  speedy 
hearing  on  appeal  should  be  furnished.    Id. 

3.  After  an  application  has  been  allowed  and 
the  notice  of  allowance  sent  to  the  applicant  or 
his  agent  the  act  of  allowance  is  complete 
and  the  application  can  be  returned  to  the 
jurisdiction  of  the  examiner  only  by  a  formal 
withdrawal  from  the  issue  files  by  the  com- 
missioner. Ex  parte  Bryant,  C.  D.  1902,  100 
O.  G.  2773. 

4.  Where  after  the  patent  upon  an  allowed 
application  has  been  printed  and  placed  in  the 
Official  Gazette  an  interfering  application  is 
filed,  Held,  that  the  mere  possibility  that  the 
later  applicant  may  prove  to  be  the  first  in- 
ventor is  not  sufficient  ground  for  withdraw- 
ing the  first  case  from  issue.     In  re  Dorman, 

C.  D.  1903,  102  O.  G.  1049. 

5.  Applications  will  not  be  withdrawn  from 
issue  merely  for  the  purpose  of  granting  the 
applicant  more  time  than  is  permitted  by  the 
statute  for  the  payment  of  the  final  fee.  Ex 
parte  Rochling,  C.  D.  1907,  126  O.  G.  3421. 

6.  Rule  160  was  intended  to  indicate  to  ap- 
plicants that  the  withdrawal  of  an  applica- 
tion from  issue  at  their  request  would  not 
operate  to  extend  the  period  within  which  the 
statute  requires  that  applications  be  prose- 
cuted. Ex  parte  Brooks,  C.  D.  1907,  127  O.  G. 
847. 

7.  An  application  will  not  be  withdrawn 
from  issue  for  the  purpose  of  permitting  the 
applicant  to  adopt  claims  of  a  patent  where 
it  appears  that  the  question  of  interference 
between  the  applications  of  the  respective  par- 
ties was  considered  by  the  examiner  before 
the  cases  were  allowed.    Ex  parte  Meyer,  C 

D.  1907,  130  O.  G.  1689. 

8.  Where  an  application  has  become  for- 
feited through  failure  to  pay  the  final  fee 
within  the  time  prescribed,  the  commissioner 
has  no  authority  to  withdraw  it  from  issue, 
and   applicant's   only   remedy   is   by   renewal 


6U 


WITHDRAWAL  FROM  ISSUE. 


under  section  4897  of  the  Revised  Statutes. 
Ex  parte  Waterman,  C.  D.  1910,  151  O.  G. 
449. 

9.  An  application  will  not  be  withdrawn 
from  issue  for  further  prosecution  in  the  ab- 
sence of  a  showing  of  compelling  reasons 
which  prevented  the  applicant  from  discover- 
ing the  alleged  mistake  in  or  insufficiency  of 
his  specification  and  claims  while  the  appli- 


cation was  pending  before  the  primary  exam- 
iner. Ex  parte  Rabsilber,  C.  D.  1911,  171  O. 
G.  483. 

10.  A  petition  for  the  withdrawal  of  a  case 
from  issue  for  the  purpose  of  further  prose- 
cution denied  in  the  absence  of  a  showing  why 
the  proposed  claims  were  not  presented  earlier 
in  the  prosecution  of  the  case.  Ex  parte  Wel- 
ler  &  Swailer,  C.  D.  1911,  173  O.  G.  288. 


INDEX 


Reference*  are  to  paeee  ualeM  otherwise  Indicated. 


ABANDONED  APPLICATION,  21;  see  88, 
m  7,  8,  12 ;  94,  H  2. 
right  to  inspect,  21 ;  see  166,  Hfl  9,  13. 
revival  of,  23;  see  2,  U  10;  3,  H  27;  4,  1134 ; 
6,  H  59;  7,  UK  77,  81 ;  23,  H  6;  365,  H  2389. 

ABANDONMENT  OF  APPLICATION,  1; 
see  57,  H  54;  277,  H  1362;  448,  fl  2;  535, 

X. 
delay  of  applicant,  1 ;  see  24,  If  3. 

excusable,  2. 

not  excusable,  3. 
effect  of  various  delays,  19. 
failure  to  complete  application,  20. 
formal,  20. 

response  of  applicant,  7 ;  see  24,  If  2 ;  45, 
If  22;  110,  It  16;  497,  III. 

sufficient,  8. 

insufficient,  11. 
statutory  term,  17;  see  128,  If  9. 

effect  of  suspension,  19. 

ABANDONMENT  OF  INVENTION,  20; 
see  63,  XV;  203,  XV;  345,  (h)  ;  503. 
If  30;  507,  If  69;  509,  If  11. 

ACCESS  TO  APPLICATION,  see  Right  to 
Inspect. 

ACCOUNTING,  94. 

ADMINISTRATORS  AND  EXECUTORS. 
23;  see  71,  If  13;  73,  Iflf  1,  3,  448,  (a). 

ADMISSIBILITY  OF  EVIDENCE,  260,  (a). 

ADVERTISEMENTS   IN   APPLICATION, 

518.  If  23. 


AFFIDAVITS,  25;  see  7,  If  87;  47,  If  30;  152, 

II   1;   161,  If  17;   248,    (o)  ;   265,  If   1209; 

317,  If  1848;  422,  If  3048. 
to  overcome  references,  25 ;  see  8,  If  92 ;  9, 

Tf  96;  14,  If  123;  45,  If  20;  166,  If  16;  167, 

If  27 ;  168,  If  33 ;  173,  If  104 ;  222,  If  6*90 ; 

225,  If  737 ;  248,  If  1014 ;  271,  If  1292 ;  302, 

If  1656;  511,  If  7;  512,  If  31. 
to  obtain  interference,  26;  see  94,  If  364; 

218,  If  648. 

AGENCY,  64,  If  4;  151,  Iflf  45,  50. 

AGGREGATION,  478,  (a) ;  see  114,  If  82;  115, 

If  94. 

ALLOWANCE  OF  APPLICATION,  60,  VII. 
ALTERATION  OF  PAPERS,  58,  VI. 
ALTERNATIVE  CLAIMS,  79. 

AMENDMENT,  28;  see  9,  If  103;  14,  If  157; 

133,  IX;  170,  III. 
after  allowance,  39. 

after  appeal,  38;  see  9,  If  95;  11,  If  116;  12, 

If  131;   13,  tf  143;   14,  If   166. 
after  final  rejection.  36 ;  see  7,  If  76 ;   12, 

lllf  137,  138;   13,  Iflf  144,  147;   14,  Iflf  155, 

163 ;  15,  If  173 ;  16,  If  181 ;  17,  If  193 ;  19, 

If  207;  26,  If  20;  82,  f  97;  510,  reopening, 
permitted,  38. 
election,  31 ;  see  Division  ;  9,  J  102 ;  12,  fl 

135;   13,  It  154;   14,  If   160;  23,  If  2;   39, 

If  152 ;  240,  If  920. 
new  matter,  27;  see  13,  If  146;  14.  tf  156; 

45,  If  19;  127,  If  1;  130,  If  18;  133,  If  67; 

134,  X;    170,    If    63;    276,    If    1348;    356, 
If  2288  ;  505,  VI. 

upon    recommendation    of    e.xaminers-in- 
chief  or  commissioner,  40,  see  39,  If  165. 

ANALOGOUS  ART,  47.1,  (b)  ;  481,  (f). 


620  INDEX. 

ANTICIPATION,  41;  see  469,  PATENTABa- 

ITY. 
design  patents,  43. 
drawings.  43. 

patents  and  publications,  41. 
prior  art,  42. 
prior  use,  42. 

APPEAL,  43;  see  16,  If  189;  38,  V;  96.  II;  112. 

Ill;   177,   IV;  209,    (b)  ;  217,    (c)  ;  218, 

(d)  ;   362.    (n)  ;   534,   IX. 

from  commissioner  to  court  of  appeals  of 

the  District  of  Columbia,  45;  see  8,  H  93. 

from   commissioner   to   Secretary   of   the 

Interior,  46;  see  510,  ^  16. 
from  primary  examiner,  43. 

appeal  to  examiners-in-chief,  43 ;  see 

9,  II  104 ;  18,  M  297,  208 ;  77,  H  32. 
petition  to  commissioner,  43 ;   see  78, 

H  48. 
appeal  or  petition — which  proper.  43 ; 
see  1,  H  5 ;  11,  H  129 ;  25,  H  5 ;  27.  H  4  ; 
28,  fl  14;  31,  II  55;  35,  If  114;  43,  H 
28;  44,  H  68;  61,  H  110;  74,  H  4 ;  75, 
nil  5,  10.  16 ;  106,  n  149 ;  134,  ^  81 ; 
135,  n  93;  161,  n  18;  197,  H  396;  198. 
n  403;   199,  H  420;   200,  It  431;   446, 
j[  2;  479,  n  113;  503,  H  25. 
limit  for,  47 ;  see  137,  holidays, 
new  evidence  presented.  47. 
new  grounds  for  rejection,  48. 
piecemeal,  51. 
premature.  51. 

remanding  to  primar>'  examiner,  48. 
to  United  States  Supreme  Court,  47. 

APPLICATION  FOR  PATENT,  52 ;  see  75, 

Claims;  87,  Continuing  Applications;  127, 
Di\nsiONAL  Applications;  128,  Draw- 
ings; 465,  Oath;  496,  Petition;  516, 
Specification. 

allowance  of,  60. 

by  employee  of  patent  office,  57. 

date  of,  52 ;  see  61,  H  98 ;  63,  XVII. 

delay  in  filing  parts,  63;  see  2,  H  18;  52, 
I;  191,  H  332. 

double  patenting,  61;  see  448,  Interfering 
Patents  ;  25,  H  16 ;  64,  jl  12 ;  107.  H  167 ; 

142,  n  75;  484,  H  163. 
features  shown  but  not  claimed,  63 ;  see  41, 

US. 
improper  alteration,  58 ;  see  374,  H  2478. 
informal,  60;  see  288,  |  898. 
inks  required,  61. 


APPLICATION      FOR      PATENT      (con- 
tinued)— 
joint  and  sole,  56 ;  see  16,  H  185 ;  64,  H  1 ; 
67,  n  3;  150,  M  35,  39;  466,  H  12;  515, 

n  5. 

mistake  in  form,  62 ;  see  48,  f  59 ;  49,  H  63 ; 

103,  n  128;   138,  H  26. 
right  to  inspect.  54;  see  64,  HH  6,  7;  65,  H 

21;  166,  II;  460,  H  2;  508,  XIII. 
second   application,    same   subject   matter, 

63;  see  401.  XLII ;  514,  H  3. 
striking  from  files.  63 ;  see  227,  II  754 ;  448, 

119. 
statutory  prerequisites,  61. 
title  of  invention.  61. 
transfer  of  papers,  58. 

ARRANGEMENT,  480,  (c). 

ARTICLE  DEFINED  BY  PROCESS,  75,  II, 

ASSIGNEES,  64 ;  see  55,  H  27 ;  56,  H  43 ;  185, 

V ;  446,  n  4 ;  448,  H  11 ;  468,  H  37 ;  493,  II ; 

499,  f  13 ;  508,  X ;  509,  H  16. 
issuance  of  patent  to,  66;  see  24,  H  5;  94, 

H  19. 
rights  of  in  application.  64;  see  3,  H  20; 

5,  H  57;  23,  nil  3,  7;  25,  H  10;  110,  K  23; 

132,  n  9. 

ASSIGNMENT,  67;  see  70,  H  3;  71,  H  9;  89, 
II;  495,  n  1;  523,  III. 
by  order  of  court,  67. 
disputed  title,  68. 
in  bankruptcy,  67 ;  see  56,  H  44. 
recording   and   identification,   69;    see   24, 
115. 

ASSISTANT  COMMISSIONER  OF  PAT- 
ENTS, 451,  I. 

ATTORNEYS   AND   POWERS,  73;   see  3, 

n  28 ;  6,  n  64  ;  $,  n  84 ;  15,  H  176 ;  54,  H 
16;  64,  n  2;  73,  n  8;  133,  H  70;  166,  ?  26; 
233,  n  832 ;  278,  H  1374 ;  396,  H  2750 ;  455, 
n  10;  509,  nil  1,  6,  7;  528,  H  78;  587,  ^ 
910;  590,  n  948. 
disbarment  of,  71. 

B. 

BANKRUPTCY,  67,  III ;  525,  H  38. 

BRIEFS,  72 ;  see  11,  H  124 ;  209,  H  539. 

BROADENING     SCOPE    OF    APPLICA- 
TION, 81,  XIV;  192,  VIII. 

BURDEN   OF  PROOF.   185,  VII;   see   152, 

114. 


INDEX. 

COMITY,  86. 


627 


CAVEATS,   73;    see   89,   H   22;   70,   H   42;   148, 
H  12;  195,  IX. 

CERTIFICATE  OF  CORRECTION,  92. 

CERTIORARI,  74. 

CHANGE  OF  PRACTICE,  7,  n  81,  83. 

CHANGING   SCOPE  OF  APPLICATION, 
81,  XIV;  192,  VIII. 

CITIZENSHIP,  74;  see  453,  Iffl  26,  28. 

CLAIMS,  75 ;  see  2.j,  H  4. 
alternative,  79. 

not  alternative,  79. 
article  defined  by  process,  75. 
construction  of,  82;  see  80,  If  9;  271,  (2). 

by  specification.  83. 

by  state  of  art,  83. 

forced,  85. 

liberal  or  broad,  82 ;  see  135.  ^  3 ;  494. 
III. 

limited  by  amendment  in  patent  office, 
83;  see  136,  H  4. 

limited  by  their  terms,  83. 
duplicate  or  dedundant,  75;  see  45.  H  21. 

not  duplicate  or  redundant,  76. 
enlarging  scope,  81. 
for  subcombination,  81. 
formal  matters,  80. 

functional  or  indefinite,  75 ;  see  76,  H  21 ; 
79,  VIII;  138,  H  29. 

not  functional  or  indefinite,  78. 
genus  and  species,  79. 
inaccurate  or  inapt,  81. 
incomplete  or  imperfect  combination,  82. 
intangible  elements,  81. 
means,   mechanism,  etc.,   79;   see   76,   IV; 

78,  II  51 ;  506,  H  57. 
positive  inclusion  of  elements,  80. 
prolix,  81. 
reinstatement  of,  82. 

reference  to  drawing  or  specification,  81. 
sobstantially  as  described,  80 ;  see  76,  H  20 ; 
160,  H  29. 

CLASSIFICATION  OF  INVENTIONS,  85; 
see  115,  tl  92;  118,  IX;  125,  XIV. 

COMBIN.-\TION,  110,  H  102;  115,  VIII;  158, 
II;  473,  (a)  ;  478,  (a),  (b) ;  476,  (e). 


COMBINATION     IN     RESTR.\INT 
TR.\DE,  85;  see  89,  II. 


OF 


COMMISSIONER  OF  PATENTS.  451,  II; 
see  43,  (a). 

COMPLAINTS  AND  CHARGES,  see  43,  II ; 

80,  K  81 ;  85,  ^,  5. 

COMPOSITION   OF   M.'^TTER,   159,   VII; 

389,   (h);  476.  (d)  ;  481,  (d). 

CONCEALMENT  OF  INVENTION,  345 
(h). 

CONCEPTION  OF  INVENTION,  195,  X. 

CONCESSION,  359,  (1)  ;  391,  H  960. 

CONSTRUCTION  OF  CLAIMS,  82,  XX; 
271,   (2). 

CONTEMPT  OF   COURT,   87;   see   4ii,  fl 

2925. 

CONTINUING    APPLICATIONS,    87;    see 
94,  Cross  References;  127,  Divisional 
Applications;  354,  (k). 
right  to  inspect,  88;  see  22,  H  11;  54,  tl  19; 
56,  H  43. 

CONTRACTS,  88. 
illegal,  89. 

CONTRIBUTORY  INFRINGEMENT,  158, 
III. 

COPENDING  APPLICATIONS,  2,  H  15;  16, 
H  178;  61,  XII;  446,  INTERFERING  PAT- 
ENTS. 

COPYRIGHT,  89. 

assignment  and  license,  89. 
copyrightable  subjects,  90. 

non-copyrightable  subjects,  90. 
infringement,  90. 
international,  91 ;  see  90,  H  9. 
notice,  91. 
property  rights.  92. 
publication,  exhibition  and  sale,  etc.,  92. 

CORPORATIONS,  432,  HH  3169,  3175;  444, 
II  3320 ;  449,  H  20 ;  453,  H  28 ;  539,  H  220 ; 
576,  H  767;  581,  H  828;  586.  H  895;  587, 
H  908 ;  590,  U  951 ;  593.  ?  976 ;  596,  U  1022 ; 
598.  H  1064. 

CORRECTION  OF  PATENTS,  92 ;  see  501 ; 
Reissue;  46,  H  36;  66,  M  24,  33. 

COURT  OF  APPEALS  OF  THE  DIS- 
TRICT OF  COLUMBI.\,  45,  III;  454, 
V. 


628 


INDEX. 


CROSS-EXAMINATION,  443.  (a). 

CROSS  REFERENCES,  94 ;  see  87,  Contin- 
uing Applications  ;  127,  Divisionai,  Ap- 
plications; 54,  II  21. 

D. 

DAMAGES   AND    PROFITS,   94;   see   453, 
1123. 
accounting,  94. 
estimation  and  measure  of,  94. 

fees  and  royalties,  94. 
masters  report,  95. 

DATE  OF  APPLICATION,  59,  I. 

DEATH  OF  APPLICANT,  see  23,  Adminis- 
trators ;  448,  (a). 

DECLARATION  OF  INTERFERENCE, 
197,  XIV. 

DEDICATION  OF  INVENTION  TO  PUB- 
LIC, 95;  see  Abandonment  of  Inven- 
tion. 

DEGREE,  481,  (e). 

DELAY,  95;  see  1,  II;  19,  V;  63;  325,   (e) ; 

328,    (f);    333,    (g)  ;    460,    LaCHES;    502, 
II;  573,  H  722;  587,  ^  912. 

DEMURRER,  95;  see  461,  H  1;  537,  H  199; 
587,  H  901;  588,  H  920;  589,  H  929;  590, 
H  943;  600,  II  1079;  615,  H  1285. 

DEPOSITIONS,  see  418,  L. 

DESCRIPTION  IN  SPECIFICATION,  105, 
IX;  516,  I;  517,  II. 

DESIGNS,  96 ;  see  43,  V ;  63,  W  122,  124 ;  138, 

H  4;   149,  H  20;  468,    (5). 
appeal  and  petition,  96;  see  98,  ^  36;  100, 

H  54. 
claims,  105. 

construction  of  statute,  97. 
description  in  specification,   105 ;   see   £40, 

H  48. 
design  and  mechanical  application  on  same 

disclosure,    106;    see    356,    H    2294;    353. 

H  2309. 
drawings,  106;  see  97.  H  15;  106,  H  166. 
infringement,  104;  see  98,  H  26;  99.  M  37. 

42. 
interference.  106. 

reduction  to  practice.  106. 
internal  construction.  106;  see  06.  H  1. 


DESIGNS   (continued)  — 

limited   to   single   invention   or    modifica- 
tion. 98. 
patentable  subject  matter,  100. 

machines,  100. 
patentability  and  invention,  101. 

effect  on  ordinary  observer,  104. 

function,  or  mechanical  utility.  103. 
public  use  and  sale,  108. 
test  of  identity,  108. 

DILIGENCE,   see   325,    (e) ;   328,    (f) ;   333, 
(g). 

DISCLAIMER,  see  203,  XV;  21,  H  10. 

DISBARMENT  OF  ATTORNEYS,  71,  11. 

DISCLOSURE,  204,  XVI. 

DISSOLUTION,  204,  XVII. 

DIVERSITY    OF    CITIZENSHIP,    see    74, 
Citizenship. 

DIVISION  OF  APPLICATION,  108;  see  19, 
It  96;  31,  III;  97,  H  11;  98.  H  101;  461, 
H  10;  462.  H  17;  .')58.  XIX. 
appeal  or  petition,  112;   see   1,  H  3;   109, 

H  11;   110,  H  12. 
broad  and  narrow  claims,  115. 
cancellation   of   part   of   application.    114; 

see  107,  H  164. 
citation  of  references,  113;  see  31,  H  66. 
classification  in  patent  office,  118. 
division  necessary.  118. 
division  not  necessary.  119. 
combination  and  subcombination,  113 ;  see 
85,  H  2 ;  125,  H  219. 
division   necessary,    115. 
division  not  necessary,  117. 
constitutionality  of   Revised  Statute  4886, 

112. 
different  species.  119. 

division  necessary,  120. 
division  not  necessary,  120. 
office  practice,  114. 
particular  cases,  127. 
processes.  121. 

process  and  apparatus,  121 ;  see  11.  fl  124. 
division  necessary.  122. 
division  not  necessary.  133. 
process  and  product.  124. 
division   necessary.   124. 
division  not  necessary.  125. 
status  in  arts,  manufacture  and  sale,  of- 
fice classification,  etc..  125. 
division  necessary.  125. 
division  not  necessary.  127. 


INDEX, 


629 


DIVISIONAL  APPLICATIONS.  127;  see 
87.  Continuing  Applications  ;  6.  H  72 ; 
70,  tl  43;  149,  H  23 ;  255,  XVIII ;  466,  K  9. 

DOUBLE  PATENTING,  61;  XII. 

DRAWINGS,  128;  see  4,  If  37;  43,  VI;  53, 
^H  5,  7,  9,  12;  60,  H  96;  61,  H  98;  106,  X; 
119,  H  151;  121,  H  169;  559.  XX. 

amendment,  133. 

inconsistent.   129. 

informalities.  129;  see  16,  ^  182;  17,  H  191; 
30,  H  44;  140,  H  52. 

made  by  patent  office.  129. 

new  matter,  134. 

showing  inoperative  device,  129. 

substitute,  130. 

sufficiency  of,  130. 

unnecessary  illustration,   132. 

DOUBLE  USE,  473,  (b)  ;  481,  (f). 
DOUBLE  PATENTING,  61,  XII. 
DUPLICATION,  481,  (e). 
DUPLICATE  CLAIMS,  75. 
DURESS,  135 ;  see  156,  K  5. 

E. 

ELECTION,  31,  III. 

EMPLOYEE  AND  EMPLOYER,  see  57.  IV; 
135,  Duress;  295,  (b). 

ENLARGING  SCOPE  OF  CLAIMS,  81, 
XIV;  192,  VIII;  504,  IV;  505,  V. 

EQUIVALENTS,  135,  see  159,  VI;  158,  H  11; 
486,    (j). 

ESTIMATION  OF  DAMAGES,  94. 

ESTOPPEL,  135 ;  see  259,  XX ;  398,  K  2767. 

EVIDENCE,  136;  see  154,  III;  260,  XX;  495, 
II. 

EXAMINATION  OF  APPLICATION,  136; 
see  496,  Prosecution. 
actions  other  than  rejection,  138. 
explanation  of  action,  144 ;  see  18,  H  200. 

insufficient,  145. 
final   rejection,  138;   see   14,  H  164;   35,  H 
117;  36,  IV;  45,  H  17;  464,  H  36. 
improper,  143 ;  see  114,  U  85. 
persuasiveness  of  previous  action,  147. 
preferred  application,  147. 
rejection,  137. 


EXAMINER,      PRIMARY,     43,     II;      281, 
XXVII. 

EXAMINER   OF   INTERFERENCES,   211, 

XXVII. 

EXAMINERS-IN-CHIEF,  43,  (b). 

EXECUTORS,  23. 

EXHIBITS,  264,   (c). 

EXPERIMENT,  ABANDONED,  375,  (d). 

EXPERT  TESTIMONY,  429,  (k). 


FAILURE    TO     COMPLETE    APPLICA- 
TION, 20. 

FEES,  147. 
final,  151. 
payment,  147;  see  20,  ^  223;  53,  H  10;  587, 

if  905. 
refundment,  148. 
transfer  of,  150. 

FINAL  FEE,  151,  IV. 

FINAL  HEARING  IN   INTERFERENCE, 

284,   XXIX. 
FINAL  REJECTION,  36,  IV;  138,  IV. 
FINES,  87,  II  2. 

FOREIGN  APPLICANT,  5,  H  53;  6,  H  73; 
24,  H  9 ;  150,  II  34 ;  513,  H  38 ;  562,  XXV. 

FOREIGN   PATENTS,   152;    see   322,    (b)  ; 

450,  H  3. 

as  bar  to  applicant's  United  States  Patent, 

153;  see  4,  HH  34,  41;  53,  H  13;  54,  HH  18, 

19;  219,  H  656;  365,  H  2393;  405,  fl  2845. 

as   references,   153;   see   25,  ^  9,;   41, 

119. 
benefit  of  date,  155;  see  42,  If  22;  447 

H  1. 
effect  of  expiration,  155. 
proving.  154 ;  see  177,  If  158. 

FORFEITED    APPLICATIONS.    156;    see 
509,  Renewal;  87,  If  i;  151,  IV;  448, 

118. 

FORGERY,  495,  H  1. 

FORMAL  ABANDONMENT,  20,  VII. 

FORMAL  MATTERS,  see  62,  VIII;  129,  111. 


6.!0 


INDEX. 


FRAUD,  156;  see  25,  H  6;  59,  H  76;  135,  DU- 
RESS. 

FUNCTION  OF  MACHINE,  see  483,  (g). 

FUNCTIONAL  CLAIMS,  76,  IV;  79,  VIII. 


GENUS  AND  SPECIES.  79,  VII ;  119,  X. 
GOVERNMENT,  SUITS  AGAINST,  521,  II. 
GOOD  WILL,  565,  XXVII. 
GUARDIANS,  156 ;  see  343,  H  2137. 

H. 

HEARINGS,  157;  see  72,  fl  23;  284,  XXIX. 

HOLIDAYS,   157;   see   18,  H  203;   19,  H  205; 
151,  flU  49,  52 ;  589,  K  938. 

HUSBAND  AND  WIFE.  445,  (f). 


INACCURACY  OF  CLAIMS,  81. 

INCOMPLETE        COMBINATION,        82, 
XVIII. 

INDEFINITENESS  OF  CLAIMS,  76,  IV. 

INFORMALITIES,  60,  VIII;  76,  IV. 

INFRINGEMENT,  157;  see  86,  f  8;  90,  V; 
94,   Damages;    104,    VII;    406,   H   2863; 
410,  H  2911;  570,  XXIX. 
articles  purchased  abroad,  160. 
claims  for  combination,  158. 
composition  of  matter,  159. 
contributory,  158. 
identity  of  invention,  159. 
making  and  selling,  159. 
mechanical  equivalent,  159. 
particular  cases,  160. 
process,  159. 
repairing,  159;  see  513,  Repair. 

INK  REQUIRED,  61,  IX. 

INOPERATIVENESS,  160;  see  10,  If  111;  29, 
fl  18 ;  31,  H  42 ;  129,  V ;  141,  H  61 ;  253, 
(s)  ;  430,  (n)  ;  508,  XII. 

INJUNCTION,  162 ;  see  159,  U  17 ;  160,  11  28 ; 

INSANITY,  449.  (b). 
453,  If  23. 


INTERFERENCE,  162;  see  26,  III;  107, 
XIII;  519,  H  8;  571,  XXX. 
access  to  and  production  of  papers  in  patent 
office,  166;  see  55,  ^  ;!2 ;  .56,  H  40;  88, 
U  14;  195,  H  370;  231,  Hfl  809,  812;  354, 
K  2267;  406,  ^  2854;  411,  H  2917. 

part  only  of  application  involved,  168; 
see  256,  H  1114. 
addition  of  parties,  185. 
amending  application,  170;  see  211,  H  561. 
adding   claims   to   issue,    172;   see   54, 
U   98;    206,   H   ,507;    235,   H   850;    241, 
H  924;  410,  H  2910. 
after  termination  of  interference,  177; 
see  171,  II  79. 
appeal,   177;  see  209,   (b)  ;  362,   (n)  ;  278, 
H    1380;    279,   H    1385;   280,   H    1404;    390, 
11  2668;  399,  H  2774;  417,  U  2992;  421.  H 
3047;    428,   f   31.'?0;    429.   ^   3139;    433,   If 
3186;   437,  H  3246. 
commissioner  to  court  of  appeals,  179; 

see  304,  H  1685;  318.  fl  1851. 
commissioner  to  Secretary  of  the  In- 
terior, 179. 
examiners-in-chief    to    commissioner, 

179. 
limit  for,  182 ;  see  280,  H  1401 ;  390,  If 

2676. 
petition  to  commissioner,  178. 
primary  examiner  or  examiner  of  in- 
terferences    to     examiners-in-chief, 
178. 
supervisory  authority  of  commission- 
er, 178. 
assignees,    185 ;    see   65,   If    14 ;    165,   If    1 ; 
166,  If  26;   18,5,  If  257;  208.  If  538;   178, 
If  1378 ;  293,  If  1558 ;  302,  Ifff  1060,  1661 ; 
303,   If   1665;   310,  If   1752;   314,  If   1804; 
318,  If  1849;  334,  If  2042;  339,  If  2092;  351, 
If  2227;   406,  If  2856;   423,  If   3063;   445, 
If  3330;  448,  If  5. 
burden   of  proof,   185;   see  48,  If  35;   207, 
If  521 ;  277,  If  1363. 

earlier  application  or  patent  disclosing 

issue,  169. 
on  party  last  to  file,  191. 
on  party  last  to  claim,  191. 
Patentee   v.   Applicant,   187;    see   401, 

If  2796. 
shifting,   190;   see   233,   If   834;   246,   H 
986;  355,  If  2272. 
caveat,  195. 

changing   scope   of   application    to   obtain 
interference,  192 ;  see  259,  XX. 


INDEX. 


«S1 


INTERFERENCE   (continued)— 

conception   of  invention,   195 ;   see   366,   ^ 

2413 ;  380,  t[  2551. 
consolidation  of  interferences,  196. 
companion    interferences,    19C ;    see   22,   |f 
13;  148,  H  7;  235,  fl  857;  240,  ^  9U ;  241, 
H  934  ;  420,  U  3630. 
copying  claims  of  opponent,   197;   see   13, 

if  152;  16,  ^  183;  29,  H  33;  39,  H  163. 
declaration  of,  197;  see  6, 1[  70;  17,  K  198. 
application  and  patent,   200;   see   318. 

XXXII. 
claims;   subject   matter   must  conflict. 

202;  see  243,  (k). 
claims ;  genus  and  species,  203. 
irregularity,  199;  see  216,  (b),  5;  239, 

(i). 
party  already  in  interference,  201. 
putting   case    in    condition    for   inter- 
ference, 201, 
suggesting  claims,  198. 
disclaimer,  concession,   etc.,  203 ;   see   170, 

H  64;  218,  ^  642;  339,  (b). 
disclosure,  204  ;  see  445,  ^  3338. 
dissolution,  304;  see  283,  XXVIII. 

appeal,  209;  see  55,  f  15;  149,  K  19; 
209,  U  541 ;  272,  H  1398 ;  403,  H  2835. 
from  favorable  decision  on  merits. 

314. 
irregularity  in  declaration,  216. 
no  right  to  make  claims,  315. 
non-interference  in  fact,  216. 
non-patentability  of  issue,  316. 
supervisory  authority  of  commis- 
sioner, 313;  see  205,  H  488. 
appeal  lies — 

no  right  to  make  claims,  217. 
supervisory  authority  of  commis- 
sioner, 217. 
no  appeal  lies,  218. 

favorable   decision    merits.   221. 
irregularity  in  declaration,  223. 
supervisory  authority  of  commis- 
sioner, 220. 
Applicant   v.    Patentee,   347 ;    see   318, 

XXXII;  203,11  473. 
claims  identical.  247;  see  243,   (k). 
definiteness  of  motion,  236. 
ex  parte  affidavits,  248;   see  220,  Hlf 
664,   666;   330,   If   789;   253,   K   1079; 
259,  fl  1084. 
inoperativeness,   353 ;   see   306,   fl   510 ; 
218,  H  644;  235,  H  858;  249,  U  1024; 


INTERFERENCE  (continued)— 

251,  H  1055. 
irregularity    in    declaration,    239;    see 

375.   (e). 
motion  delayed,  230;  see  224,  (f). 
new    grounds,    252;    see    205,    HH    489, 

497;  330,  fl  796. 
non-interference  in  fact,  243 ;  see  203, 

(g);  247,   (n). 
non-patentability  of  issue,  345. 
partial,  253 ;  see  306,  fl  499 ;  343,  H  938 ; 

308,  H  1728. 
review  or  rehearing,   254 ;   see  306,  f 

500. 
testimony    and    facts    outside    record, 

248;  see  232,  H  818. 
time  allowable  for  filing  motions,  224; 

see  230,  (g). 
transmittal  of  motion  to  primary  ex- 
aminer, 224. 
divisional  applications,  255  ;  see  240,  If  915  ; 

241,  II  928;  270,  If  1277;  354,  (k). 
effect    of    patent    office    decisions    in    the 

courts,  257. 
estoppel,  259;   see  175,  If  129;   192,  VIII; 
199,  U  414;  207,  U  534;  315,  If  618;  301, 
II  1644  ;  402,  XLIII ;  411,  If  3920. 
evidence,  260. 

admissability,  360. 
admissions,  360. 
best,  261. 
documentary,  261. 

business  entries,  262. 
drawings,  etc.,  263. 
exhibits,  264;  see  373,  If  3487;   395,  f 

3734  ;  433,  H  3048. 
presumptions,  365 ;  see  387,  XXX. 
ex  parte  proceedings,  266 ;  see  209,  tf  546 ; 

215,  (b),  4;  316,  (b).  7. 
interference  in  fact,  367;  see  216,  (b),  6; 

243,  (k). 
issue,  270. 

bar  to  other  applications,  271 ;  see  62, 

H  114,  119. 
counts  of,  371. 

interpretation.  271 ;  see  82,  XX. 
patentability  of,  370;  see  316,   (b),  7; 

245,   (1). 
questionable  disclosure,  275 ;  see  243, 
(j)  ;  426,  If  3096. 
joint  and  sole,  277 ;  see  184,  fl  247 ;  218,  If 
642;    319,   If   1864;    391,   If   2690;    440,   jf 
3284;   441,  II  3387. 
judgment  on  the  record.  278 ;   see   172,  If 


632 


INDEX. 


INTERFERENCE   (continued)— 

89;  208,  H  536;  224,  H  716;  225,  K  735; 
236,  K  865 ;  285,  ^  1468 ;  397,  H  2758 ;  431, 
%  3161. 
jurisdiction,  281  ;   see  392,  H  2694 ;   437,  K 

3242. 
motions,  282. 

delay  in  bringing,  282;  see  314,   (d)  ; 

411,  \i  2921. 
notice  of,  283. 
piecemeal,  283. 
originality,  287;  see  265,  (f)  ;  351,  (i). 

employer  and  employee,  295. 
patentee,   318;   see   183,   H   231;   187,   VII, 
(b);  200,   (d);  247,   (m)  ;  273,  I  1319; 
274,   H    1324;    275,   H    1343;   349.   H   2213; 
395,  II  2740;   406,  HH  2857,  2862;  410,  H 
2911;  415,  H  2969;  426,  fl  3098. 
practice  on  final  hearing  and  after  judg- 
ment, 284;  see  10,  If  109;  48,  K  40;  208, 
H  533;  312,  H  1783;  360,  (m). 
preliminary  statement,  301;  see  71,  H  11; 

573,  H  726. 
amendment  of,  303 ;  see  392,  !|  2697. 
delay  in  filing,  314. 
extension  of  time,  317. 
inspection  of,  314. 
testimony  at  variance,  315. 

priority,  320. 

ancillary    questions,    360;    see    217,    % 
639;   221,   11   675;    284,   XXIX;   242, 
tin  939,  944;  321,  H  1900. 
appeal,  362;  see  148,  fl  8;  240,  ^  917; 

403,  n  2827 ;  454,  H  32. 
as   to  different  counts,   352;   see  331, 

n  2011;  342,  n  2125. 
concealment,  345;  see  398,  H  2764. 
'  concession    of,    359;    see    241,    H    932; 

203,  XV. 
diligence,  325,  328,  333. 
disclosure  in  prior  application  or  pat- 
ent, 359 ;  228,  H  766 ;  229,  fl  785 ;  255, 
XVIII ;  312,  n  1780;  393,  II  2764. 
foreign  applications,  324. 
foreign  patents,  322 ;  see  358,  fl  2311. 
prior  conception  and  reduction,  324. 
questionable  diligence,  325 ;   see  20,  H 
2;  273,  n  1314;  353,  H  2253. 
in  filing  application,  326. 
in  reduction  to  practice,  326. 
in  prosecuting  application,  328. 
held  diligent,  328. 

in  filing  application,  329. 

in  reduction  to  practice,  331. 


INTERFERENCE   (continued)  — 
not  held  diligent,  333. 

in  filing  application,  335. 
in  reduction  to  practice,  339. 
redeclaration,  365;   see  224,  If  721;  229,  f 

780;   249,  If   102.3. 
reduction  to  practice,  366;   see  326,    (3); 
331,  (3)  ;  339,  (3). 
abandoned    and    unsuccessful    experi- 
ment, 375. 

held  abandoned  experiment,  375. 
not    held    abandoned    experiment, 
379. 
accidental  production,  388. 
actual,  368. 

held  a  reduction,  369. 
not  held  a  reduction,  371. 
constructive,  374. 
drawings  and  sketches,  389;   see  387, 

tl   2632. 
in    foreign   country,    389;    see   322,   tl 

1903. 
model,  380 ;  see  370,  If  2448. 
process,  product,  composition  of  mat- 
ter, etc.,  389 ;  see  265,  If  1212. 
tests,  380 ;  see  422,  If  3053. 
necessary,  385. 
not  necessary,  387. 
rehearing,  390 ;  see  175,  If  133 ;  212,  Iflf  586, 

588 ;  218,  If  645. 
reinstatement  or  reopening,  391 ;  see  442, 
LI. 

to  take  more  testimony,  391. 
newly  discovered  evidence,  392. 
reopened  to  take  more  testimony,  392. 
not  reopened,  393. 

to  take  more  testimony,  394. 
newly  discovered  evidence,  397. 
reissue   application,   398;   see   189,   fl   308; 
208,  If  528 ;  225,  ^  738 ;  254,  If  1091 ;  319, 
If  1862. 
remanding  to  primary  examiner,  414 ;  see 
210,  Iflf  551,  554;  211,  If  574;  213,  fl  600; 
Rule  126 ;  272,  n  1298 ;  407,  ^  2869 ;  410, 
If  2905. 
renewal  application,  400. 
second  application  on  same  subject,  401. 
second  interference,  402;  see  173,  If  110; 
175,  If  128;   176,  If   135;   229,  If  786;   514, 
119. 
statutory  bars,  405. 

public  use,  405;  see  499,  Public  Use 


INDEX. 


633 


INTERFERENCE   (continued)  — 

PROCEEDlNf.s;     229,    H     775;     248,    H 
1004;   251,  H  1046;   401,  H  2807;    417, 
H  2984. 
suspension,  409;   see  255,  ^   1097;   271,   H 
1295;  405,  H  2849. 
for  adding  new  parties,  412. 
new  references,  412 ;  see  252,  f  1060. 
suggestions  to  commissioner,  412;  see  213, 

K  594;  359,  H  2321. 
suspending    action    on    other    applications 

during  interference,  416. 
stipulations  and  waivers,  416 ;   see   165,  ^ 
4;  196,  fl  386;  232,  H  813;  248,   (p)  ;  304, 
f   1684;   314,  H   1807;   366,   H   2412;   409, 
H  2901;   439,  K  3264. 
testimony,  418;  see  26,  ^  17;  185,  VII  ;  260, 
XXI;  315,  (e)  ;  409,  H  2897. 
admissability,  421. 
admissability  of  record  in  other  cases, 

419. 
competency  or  weight,  423. 
conflicting,  422. 
correction  of,  422. 
corroborative,  422. 
delay  or  failure  to  take,  425. 
extension    of    time,    426;    see    420.    H 

3030. 
expert,   429;    see   391,   ^   2688;    432,   H 

3181. 
leading  questions,  429. 
notice  of  taking,  430;  see  436,  H  3224. 
of  applicant,  439. 
operativeness.  430;  see  161,  jl  21;  438, 

U  3254;  440,  ^  3277. 
perpetuation  of,  431. 
printing,  432;  see  279,  H  1390;   393,  If 

2718 ;  435,  H  3209 ;  437,  H  3237. 
rebuttal,  432. 
relevancy,  420. 
retaking,  433. 

suppression  or  striking  out,  434. 
surprise,  438. 
surrebuttal,  438. 
taken  abroad,  439. 
vacating  judgment,  442;   see  279,  ^  1384; 

285,  H  1463;  314,  H  1807;  354,  U  2269. 
Witnesses,  443. 

compelling   attendance,   443;    see   428, 

H  3123. 
compelling  testimony,  443 ;  see  434,  ^ 

3200. 
credibility  of,  444. 


INTERFERENCE  (continued)  — 

cross    examination,    443;    see    421,    H 

3046. 
failure  to  call,  445. 

refreshing  memory  by  documents,  446. 
wife  of  party,  445;  see  226,  ^  1226. 

INTERFERENCE  IN  FACT;  see  243,  (k)  ; 
267,  XXIII;  582,  XXXI. 

INTERFERING    PATENTS,    446;    see    61, 
XII. 
same  inventor,  446. 
different  inventors,  447. 

INTERNATIONAL    CONVENTION,    447; 
see  155,  V ;  324,  ^^  1926,  1930,  1932 ;  562, 

U  585. 

INTERPRETER,  421,  H  3030. 
INTERVENING  RIGHTS,  508,  XI. 
INVENTION;  see  Patentability. 
INVENTIVE  ACT,  447. 

INVENTOR— 

death  of,  448;  see  23,  Administrators; 
310,  f  1752. 

insane,  449. 

name  of,  449;  see  515,  Signatures. 

poverty,  ignorance,  etc.,  450;  see  156, 
Guardians  ;  4,  If  31 ;  5,  H  50 ;  327,  H  1964 ; 
334,  H  2044;  335,  M  2051,  2053;  338,  fl 
2080;  339,  If  2086;  340,  fl  2103;  341.  H 
2112;  343,  H  2150;  344,  f  2154;  247,  H 
2190;  350,  H  2218;  383,  fl  2588;  426,  fl 
3104;   443,   H  3313. 

rights  of,  450. 

ISSUANCE  OF  PATENT  TO  ASSIGNEE, 
66,  II. 


JOINT  INVENTORS;  see  56,  III ;  277,  XXV. 

JUDGMENT     ON     THE     RECORD,     218, 
XXVI. 

JUDICIAL  NOTICE,  450;  see  7,  H  80;  136, 
Evidence. 

JURISDICTION,  451. 

assistant  commissioner,  451. 
commissioner,  451 ;  see  71,  ^  16. 
supervisory  authority,  452. 
circuit  court  of  appeals,  453. 
court  of  appeals  of  the  District  of  Colum- 
bia, 454 ;  see  220,  H  667 ;  452.  H  10. 


6^ 


INDEX. 


JURISDICTION    (continued)  — 
federal  courts,  453 ;  see  460,  H  3. 
Secretary  of  the  Interior,  452;  see  71,  I 

16;  214,  H  605;  435,  H  3217. 
United    States    Supreme   Court,   454 ;    see 

570,  H  698. 

L. 

LABELS   AND    PRINTS,   454;    see   Trade- 
marks; 462,  H  14. 
misbranding,  459. 
pure  food  and  drugs  act,  459. 
registration,  454. 
registrability,  454. 
right  to  use  personal  name,  460. 
symbols,  etc.,  460. 

LACHES.  460;   see  325,    (e)  ;   328,    (f)  ;   333, 

(g). 
LEADING  QUESTIONS,  424,  (b). 
LICENSE,  460;  see  Assignees;  453,  ^  23. 
LICENSEE,  167,  H  32. 
LIMIT  FOR  APPEAL,  47;  182,  (h). 

M. 

UATJDAMUS,  461 ;  see  44,  If  13 ;  65,  If  21 ;  73, 
If  23;  451,  If  1. 

MANUSCRIPT  DECISIONS,  464. 

MASTERS  REPORT,  95,  III. 

MATERIAL,  SUBSTITUTION  OF,  486,  (j). 

MEANS,  79,  VIII. 

MECHANICAL  SKILL,  470,  II. 

METHOD,  62,  If  117. 

METHOD  OF  DOING  BUSINESS,  490,  (o). 

MODELS,  464;  see  128,  If  1;  181,  If  200;  306, 
If  1701;  307,  If  1721;  310,  If  1750;  312,  If 
1776;  317,  If  1839;  343,  If  2144. 

N. 

NAME  OF  INVENTOR,  449,  (c). 
NEW  EVIDENCE,  47. 
NEW  MATTER,  27,  II;  505,  VI. 
NON-ANALOGOUS    ART,    473,    (b) ;    481, 
(£)• 


NOTARY,  465 ;  see  434,  If  3204 ;  436,  HJ  3880, 
3227 ;  590,  If  950. 

NOTICE,  71,  If  11;  91,  VII, 


o. 


OATH  TO  APPLICATION,  465;  see  20,  I 

225 ;  54,  If  15. 
delay   in    filing    application,    467 ;    see   63, 

XVII. 
design,  468. 
original,  465;  see  227,  If  784;  229,  If  788; 

230,  If  797. 
reissue,  468. 
supplemental,  467;  see  9,  If  100;  53,  fl  11; 

135,  If  94;  240,  Tt  919;  241,  If  935;  243,  f 

954 ;  322,  If  1906 ;  390,  If  2675. 

OPER.A.TI VENESS ;    see    160,    Inoperative- 
ness. 

ORAL  INTERVIEWS,  19,  Hlf  213,  215;  137, 
If  14 ;  146,  If  127. 

ORIGINALITY,  287,  XXX. 


PANAMA   CANAL   ZONE,    PHILLIPINE 
ISLANDS,  ETC.,  468. 

PARTICULAR  CASES,  477,  (i) ;  492,  (u). 
PARTIES  TO  SUIT,  521,  III. 
PARTNERSHIP,  294,  If  1569;  593,  If  989;  594, 
If  991. 

PATENTABILITY     AND     INVENTION, 
469;  see  449,  Inventive  .^ct;  101,  VI. 
extensive  use,  472. 
held  patentable,  473. 
combination,   473. 
composition  of  matter,  476. 
new   combination   of   old   elements — 

new  results,  476. 
particular  cases,  477. 
process  or  method,  474. 

not    mere    function    of    machine, 
475. 
reorganization,  476. 
substitution  or  use  of  proper  material 

or  parts,  477. 
use  in  non  analogous  art,  473. 
useful — long  undiscovered,  477. 


INDEX. 


«3S 


PATENTABILITY      AND      INVENTION 
(aontinued)  — 
invention  and  skill  distinguished,  470. 

merely  mechanical  skill,  470 ;  see  488, 
H  226. 

more  than  mechanical  skill,  471. 
not  held  patentable,  478. 

aggregation  or  unpatentable  combina- 
tion, 478;  see  44,  Hf  15,  16;  486,  f 
197. 

arrangement,  480. 

carrying  forward  old  idea,  490. 

composition  of  matter,  481. 

defect  apparent — remedy  obvious,  489. 

degree  of  duplication,  481. 

design  merely,  489. 

double  or  analogous  use,  481 ;  see  108, 
H  186. 

making  integral  or  separate,  489. 

many  application  for  same  invention, 
491. 

method  of  doing  business,  490. 

not  statutory  subject,  491. 

novelty  in  part  of  old  combination, 
478. 

omission  of  part  with  its  function, 
484;  see  471,  ^  14. 

particular  cases,  492. 

printed  matter,  491;  see  78,  flU  45,  54 

process  or  method,  484. 

process,  mere  function  of  machine, 
483 ;  see  78,  H  35 ;  79,  H  56. 

reversal  of  parts,  491. 

slight  change  in  structure — no  new  re- 
sult, 490. 

substitution  or  use  of  proper  material 
or  parts,  486. 
rule  as  to  doubtful  cases,  472. 
utility,  472. 

PATENTEES,  see  318,  XXXI. 

PATENTS,  493;  see  75,  Claims. 
owners,  493. 

rights  of,  493. 

joint,  494. 
pioneer  patents,  494;  see  82,  (a). 

PATENT  OFFICE  RECORDS,  495. 

as  evidence,  495 ;   see  260,  H  1153 ;  262,  H 

1180;  26.5,  U  1209. 
expunging  matter,  495. 

PAYMENT  OF  FEES,  147,  I. 

PERJURY,  495;  see  422,  H  3046. 

PERPETUAL  MOTION,  161,  It  13. 

PETITION  IN  APPLICATION,  496. 


PETITION  TO  COMMISSIONER,  43,  (a), 
(b),  (c). 

PHILIPPINES,  468. 

PIECEMEAL  PROSECUTION,   18,  f  180; 

51,  IX;  137,  H  17;  233,   (d). 

PIONEER  PATENTS,  494. 

POSTPONEMENT,  see  Suspension. 

POWER  OF  ATTORNEY,  see  Attornev. 

PRACTICE  IN  PATENT  OFFICE,  498. 

PRECEDENCE,  147,  VII. 

PRELIMINARY  INJUNCTION,  162. 

PREMATURE  APPEAL,  51. 

PRELIMINARY  STATEMENT.  301,  XXXI. 

PRIMARY  EXAMINER,  43,  IL 

PRINTED  MATTER,  491,  (t). 

PRINTING  TESTIMONY,  432,  (p). 

PRINTS,  454. 

PRIORITY,  320,  XXXIII. 

PRIVILEGED  COMMUNICATIONS,  72,  If 
1. 

PROCESS,  121,  XI,  XII,  XIII;  140,  H  55;  159, 
V ;  168,  H  48 ;  239.  H  903  ;  257,  U  1115 ;  265, 
II  1212;  268,  H  1245;  474,  (c)  ;  484.  (i)  ; 
487,  H  213 ;  505,  If  39. 

PRODUCT,  see  124,  XIII;  169,  II  49;  196,  f 
385. 

PROLIXITY  OF  CLAIMS,  81. 

PROSECUTION  OF  APPLICATION.  49«; 

see  Examination. 
explanation  of  action,  497. 
responsiveness  or  propriety  of  action,  497; 

see  7,  III. 

PROTEST  AGAINST  ISSUANCE  OF 
PATENT,  498. 

PUBLIC  POLICY,  459,  (b),  599,  XL. 

PUBLIC  USE  OR  SALE,  498. 

PUBLIC  USE  PROCEEDINGS,  499;  see  405, 
(b)  ;  435.  f  3211;  461,  H  8. 

PUBLICATION,  41,  II;  92,  VIII;  367,  % 
2417. 

PURE  FOOD  LAW.  see  459.  IV;  583,  f  10; 
575,  H  750. 


636 


INDEX. 


R. 


RECORDING  ASSIGNMENTS,  69,  V. 

REDECLARATION  OF  INTERFERENCE, 
365,  XXXIV. 

REDUCTION  TO  PRACTICE,  366,  XXXV. 

REDUNDANCY  OF  CLAIMS,  75. 

REFUNDMENT  OF  FEES,  148.  II. 

REHEARING,  500;  see  .S90,  XXXVI.  46,  H 
29 ;  50,  H  72. 

REINSTATEMENT  OF  CLAIMS,  82. 

REINSTATEMENT  OF  INTERFERENCE, 
391,  XXXVII. 

REISSUE,  501;  see  17,  H  195;  66,  ^  32;  149,  H 
24;  166,  H  8;  398,  XL;  468. 
abstract  of  title,  507;  see  501,  ^  8. 
assignees,   508. 
delay  in  applying  for,  502. 
enlargement  valid,  504. 
enlargement  invalid,  505. 
inadvertence  or  mistake,  507. 
identity,  504. 
inoperativeness,  508. 
intervening  rights,  508. 
new  matter,  505. 
right  to  inspect,  etc.,  508. 
to  correct  error  in  patent  office,  507. 

REMANDING  TO  PRIMARY  EXAMINER, 
48;  414,  XLVII. 

RENEWAL  OF   FORFEITED   APPLICA- 
TIONS, 509;   see  21,  H  9;  71,  H  7;  73, 
H  2;  111,  H  26;  400,  XLI. 
second  application  for  renewal,  510. 

RENUMBERING  CLAIMS,  80,  fl  81. 

REOPENING  CASES  IN  PATENT  OF- 
FICE, 510;  see  36,  IV;  38,  V;  138,  IV; 
391,  XXXVII. 

reopened,  510. 

not  reopened,  511. 

REORGANIZATION,  476,  (f). 

REPAIR  OF  PATENTED  MACHINES, 
513;  see  159,  f  16,  VII. 

RES  ADJUDICATA,  513;  see  204,  K  479; 
214,  H  606;  223,  H  708;  226,  H  748;  242, 
H  943 ;  572,  UH  714,  720 ;  576,  H  763 ;  592, 
H  969;  398,  If  2764;  402,  XLIII;  451,  H  5. 


RESIDENCE,  54,  H  l;  60,  H  94. 

RESPONSIVENESS  OF  ACTION,  7,  III. 

REVERSAL  OF  PARTS,  491,  (9). 

REVISED  STATUTES,  519. 

REVIVAL  OF  ABANDONED  APPLICA- 
TION, 23,  II. 

RIGHT  TO  INSPECT,  21,  I ;  54,  II ;  87,  II ; 
73,  UK  5,  9,  10;  128,  i[  13;  166,  II;  508, 
XIII. 

RIGHT  TO  MAKE  CLAIMS,  275,  (e). 

ROYALTIES,  94,  (b). 

RULES  OF  PRACTICE— VALIDITY,  ETC., 

515;  see  454,  H  34. 
rule  1,  146,  K  127. 
rule  31,  227,  U  754. 
rule  33,  496,  H  1. 

rule  41,  121,  XII ;  124,  XIII ;  515,  f  2. 
rule  46,  465.  I. 
rule  50,  130,  H  31. 
rule  51,  131,  K  32 ;  132,  H  53. 
rule  64,  137,  K  8;  138,  H  25. 
rule  65,  145,  H  121;  498,  ^  22. 
rule  66,  138,  f  20;   145,  IfH  113,  114;   146, 

H  123;  623,  ^  6. 

rule  68,  139,  If  35;  Prosecution  of  Appli- 
cation. 

rule  69;  see  Prosecution  of  Appucation. 

rule  75,  25,  II ;  166,  H  16. 

rule  86,  507,  H  73. 

rule  94,  194,  H  364 ;  218,  fl  648 ;  318,  ^  1857 ; 

320,  H  1878 ;  398,  H  2771. 
rule  95,  177,  H  77. 
rule  96,  170,  H  67;  198,  H  399;  198,  (b)  ;  201, 

(0- 
"^le  97,  198,  KH  401,  402 ;  357,  H  2305. 
rule  105,  168,  II,  (b). 
rule  106,  168,  II,  (b). 
rule  107,  177,  H  76;  534,  U  153. 
rule  109,  170,  t[  59;  172,  III,   (b)  ;  235,  H 

859;  403,  H  2825. 
rule  110,  301,  XXXI. 
rule  114,  172,  H  89;  190,  fl  312;  208,  H  536; 

236,  H  865 ;  278,  XXVI ;  280,  If  1398 ;  285, 

H  1469. 
rule   116,   189,   H   308;   190,   tl   312;    192,   H 

339;  355,  H  2282. 
rule  119,  435,  113212. 
rule  122,  173,  11  100;  176,  ^  139;  180,  H  185; 

191,  H  331 ;  224,  XVII. 


INDEX. 


e^ 


RULES  OF  PRACTICE— VALIDITY,  ETC. 
(continued)  — 
rule  123,  410,  H  2909. 
rule  124,  149,  H  19 ;  180,  tf  185 ;  204,  K  480 ; 

208,  11  537 ;  209,  (b)  ;  498,  H  1. 
rule  125,   203,  fl  473;   359,  H  2323;   399,  f 

2779. 
rule  126,  180,  If  185 ;  197,  fl  390 ;  203,  H  471 ; 

227,  II  760;  233,  H  830;  249,  H  1027;  320, 

II  1874;  359,  H  2321;  399,  H  2780;  405,  f 

2852;    408,    II    2880;    412,    XLVI ;    414, 

XLVII ;  452,  H  17. 
rule  127,  403,  tf  2829. 
rule  128,  165,  If  7;  252,  f  1060;  410,  ^  2903; 

418,  (c). 
rule  130,  170,  H  65;  171,  HH  71,  76;   179,  f 

172;   221,  IIH  677,  680;   251,  fl  1054;   284. 

XXIX;  393,  II  2716;  418,  H  3005. 
rule  131,  302,  H  1661. 
rule  132,  284,  XXIX ;  322,  H  1901. 
rule  133 ,  139,  H  35 ;  162,  H  22. 
rule  142,  500,  H  4;  510,  H  3. 
rule  143,   172,  H  87. 
rule   153,   283,  H   1444. 
rule  154,  357,  H  2304;  426,  H  3102;   437.  H 

3117. 
rule  156,  418,  H  3000. 
rule   157,   402,   H   2811;   419,    (b). 
rule  158,  437,  H  3244. 
rule  159,  437,  H  3243. 
rule  162,  432,  (p). 
rule  212,  226,  fl  747. 
rule  213,  452,   (b). 


SCOPE  OF  APPLICATION,  192,  VIII. 

SECOND    APPLICATION,    SAME    SUB- 
JECT MATTER,  63,  XVI ;  401,  XLII. 

SECRETARY   OF   THE    INTERIOR,    4.v;, 
III. 

SHIFTING  GROUND,  31,  III. 

SICKNESS,  450,  (d). 

SIGNATURES,  515;   54,  H  3;  55,  H  7;  56.  H 
16;  93,  nil  9,  10,  17;  129,  H  3;  449,  (c). 

SKILL  OF  MECHANIC,  470,  II. 
SPECIES,  79,  VII ;  119,  X. 

SPECIFICATION,    516;    see    Application; 

Substitute  Specification. 
sufficiency  of  description,  516. 
unnecessary   or   objectionable   description. 

317. 


STATUTES,  519  ;  see  97,  III ;  112,  II. 
R.  S.  483,  178,  n  166;  211,  H  567. 
R.  S.  487,  72,  n  19. 
R.  S.  893,  450,  n  3. 
R.  S.  1981,  469,  n  5. 
R.  S.  4885,  151,  n  46;  l.->3.  f  21. 
R.  S.  4886,  103,  n  107;  112,  II;  122,  ff  189; 

128,  tl  3;  346,  n  2175;  447,  H  5;  499,  %  10. 
R.   S.  4887,   128,  n   3;   15.3,   II;   154.  ffl  29, 

32;   155,   IV;   322,    (b)  ;   324,    (c)  ;   447, 

115. 
R.  S.  4888,  77,  nn  36,  38. 
R.  S.  4892,  466,  H  7. 
R.  S.  4893,  346,  H  2174. 
R.  S.  4894,  154,  H  31 ;  355,  H  2278. 
R.  S.  4897,  151,  n  47;  509,  HH  11,  12. 
R.  S.  4902,  73,  n  1. 
R.  S.  4909,  113,  n  58;  211,  H  566. 
R.  S.  4914,  534,  n  162. 
R.  S.  4915,  2,  n  17 ;  95,  n  1 ;  168,  H  33 ;  436, 

n  3223  ;  521,  VI. 
R.  S.  4916,  504,  n  34;  506,  fl  59;  507,  VII. 
R.  S.  4918,  436,  n  3223. 
R.  S.  4920,  153,  n  21. 
R.  S.  4929,  99,  n  50;  100,  f  61. 
R.  S.  4962,  91,  f  24. 
R.  S.  4963,  91,  n  22. 
R.  S.  4965,  91,  n  18. 

STATUTORY  TERM,  17. 

STIPULATIONS,  416,  XLIX. 

STRIKING  FROM  RECORD,  58.  VI;  60, 
n  86;  63,  XIV;  137,  H  9;  434,  (s). 

SUBCOMBINATION,  81,  XIII;  115,  VIII. 

SUBSTANTIALLY  AS  SHOWN  AND  DE- 
SCRIBED, 80,  IX. 

SUBSTITUTE  DRAWING,  130,  VI. 

SUBSTITUTE  SPECIFIC.\TIONS,  17,  If 
192 ;  18,  U  209 ;  27,  HH  1.  6 ;  39.  H  160 ;  276, 
n  1354. 

SUBSTITUTION,  477,  (h)  ;  486,  (j). 

SUGGESTING  CLAIMS.  198,  XIV,  (b). 

SUITS,  520. 

costs  of,  521. 

infringement,  in  general.  520. 

infringement,    against    the    United    States 

and  United  States  officers,  520;  see  460. 

Laches. 
parties,  521. 
under   Revised   Statute   4915.   521 ;   see   2, 

If  17;  287,  n  1488. 

SUPERVISORY  AUTHORITY  OF  COM- 
MISSIONER. 213,  217,  220. 


ess 


INDEX. 


SUPPLEMENTAL  OATH,  467,  (2). 

SUPREME  COURT  OF  THE  DISTRICT 

OF  COLUMBIA,  74,  U  4. 

SUSPENSION,  18,  H  201;  19,  (b)  ;  95,  H  1 ; 
409,  XLV;  416,  XLVIII. 

T. 

TECHNICAL  TERMS,  521. 

TERRITORIES,  see  468,  Panama. 

TESTIMONY,  sec  418,  L. 

TESTS,  see  380,  (f). 

TITLE  OF  INVENTION,  61,  X. 

TRADE-MARKS,  522  ;  see  Labels  &  Prints  ; 
461,  M  4.  5;  499,  H  2;  515,  fl  4. 
abandonment,  535;  see  539,  fl  218;  571,  702. 
act  of  1870,  527. 
act  of  1881,  528;  see  593,  H  982. 
act   of   1905,   528;   see   571,   fl   707;   593.   H 
978. 

constitutionality  and  construction,  528. 
amending  application  to  bring  under 

act,  529. 
ten  year  clause,  530;   see  589,  ^  933; 
591,  H  955;  592,  H  968;  605,  fl  1147. 
exclusive  use,  531. 
alternatives,  524. 

amendments  and  disclaimers,  523. 
appeal,   534;    see   .558,   ^tl   523,   526;    561,   K 
558;  573,  II  723;  575,  If  752;   58T,  H  912; 
589,  H  936 ;  591,  H  954 ;  617,  ^  1307. 
application  of  mark  to  goods,  526. 
assignment,  525;  see  .571,  K  710;  577,  ^  773. 
cancellation,  536 ;  see  533,  ^H  142,  147 ;  570, 

H  699. 
correction  of  registration,  539. 
coat  of  arms,   society   emblems,   symbols, 

etc.,  539. 
descriptive,  541 ;  see  535,  U  166. 
registrable,  542. 
not  registrable,  543. 
descriptive  or  deceptive,  550. 
descriptive  and  geographical,  551 ;  see  531, 

H  123. 
description  of  mark,  557. 
division  of  application,  558. 
drawings  or  facsimiles,  559. 
essential  features,  559 ;  see  557,  H  503. 
examination  of,  560. 
foreign  and  interstate  commerce,  561. 
foreign  applicant,  562 ;  see  577,  K  777. 
foreign  words,  561. 
fraud,  563;  see  616,  XLIX;  593,  f  988. 
geigraphical,  552 ;  see  531,  H  126. 


TRADE-MARKS    (continued)  — 

registrable,  552. 

not  registrable,  554. 
good  will,  565 ;  see  526,  H  52 ;  593,  f  986. 
goods  of  same  descriptive  properties,  565 ; 
see  524,  tl  12. 

held  same,  567 ;  see  576,  If  762. 

not  held  same.  569;  see  575,  ^  759. 
infringement,  570, 
interference,  571. 

appeal,  572. 

burden  of  proof,  573. 

date  of  adoption  and  use,  573. 

declaration,  573 ;  see  600,  If  1080. 

dissolution,  573;   see  534,  ^   157;   582, 
XXXI. 

evidence,  575. 

final  hearing,  576. 

issue,  576. 

judgment  on  the  record,  577. 

priority,  577. 

reopening,  579. 

suspension,  580. 

testimony,  580. 
interference  in  fact,  582 ;  see  604,  XLVI. 

marks  held  similar,  582. 

marks  not  held  similar,  583. 
jurisdiction,   584 ;    see   570,   fl   698 ;    572,  If 
712;  574,  If  737;  591,  If  963;  591,  fl  90:i ; 

600,  H  1085. 

laches,   584;   see   538,   If  212;    .590,   %   947; 

601,  If  1100. 
mandamus,  584. 

name   of   patented   article,    585;    see    i31, 

Tf  124. 
opposition,  586;  see  149,  If  29;  541,  fl  245; 

580,  If  810. 
ownership,  593 ;  see  579,  If  799. 
personal  name,  594. 

of  applicant,  597. 
property  rights,  593,  XXXVII ;  617,  If  1309. 
protest,  599. 
public  policy,  599;  see  530,  If  112;  533,  If 

129;  539,  XIII;  565,  If  611;  602,  H  1110. 
publication,  600. 
registration,   600;    see   558,   ?   514;   587,   If 

897. 
registrability,  602. 

color  and  form,  603. 
statutes,  603. 
scope,  604. 

similarity  of  marks,  604;  see  592,  XXXI. 
deceptively  similar,  605. 
not  deceptively  similar,  614 ;   see  539, 
If  202. 
specification  of  goods,  616. 


INDEX. 


639 


TRADE-MARKS   (continued)  — 

technical,  617;  see  592,  H  969. 

unfair  competition,  618;  see  531,  H  111; 
594,  K  996 ;  598,  ^  1062 ;  606,  fl  1164. 

use  and  sale  as  establishing  title,  622. 

verification,  588.  tl  917;  590,  fl  948,  950;  .593, 
H  976. 

what  constitutes,  622. 

(Names  and   Other   Subjects.) 

"AA,"  61.3,  H  1261. 

"A  Fussy  Package  for  Fastidious  Folks," 
322,  ^  1366. 

"A  Harmless  Vegetable  Compound  to  Im- 
part a  Flavor  Similar  to  Maple  for  Syr- 
ups, etc.,"  569,  11  677. 

"AI,"  613,  H  1261. 

"Acme,"  558,  H  534. 

"Alabamatube,"  555,  ^  471. 

"Albion,"  611,  H  1234. 

"Alizarine  Black  3  B,"  531,  K  135;  610,  fl 
1217. 

"Alizarine  Black  4,"  610,  H  1217. 

"Alizarine  Black  4  B,"  610,  H  1217. 

"Amber,"  614,  H  1268. 

"Amber  Bead,"  614,  H  1268. 

"America's  Strength,"  551,  ^  422. 

"American  Ball  Blue,"  541,  K  244;  620. 
HH  335,  338. 

"American  Beauty,"  523,  H  17. 

"American  Giri,"  609,  ^  1208. 

"American  Volunteer,"  573,  H  732. 

"American  Wash  Blue,"  620,  H  1335. 

"American  Lady,"  609,  Tl  1208. 

"Amherst,"  555,  K  478. 

"Anchor,"  609,  H  1203;  610,  H  1216. 

"Anderson,"  C14,  fl  1277. 

"Angostura,"  553,  fl  441. 

"Angostura  Bitters,"  563,  H  602. 

"Antiaqua,"  548,  ^  366. 

"Anti-Tox,"  534,  H  168. 

"Apple  and  Honey,"  543,  \l  272. 

"Arkoma,"  583,  H  859. 

"Armona,"  583,  U  859. 

"Artificial  Hunyadi,"  556,  K  498. 

"Asbestos,"  547,  H  353;  612,  ^  1241;  617, 
I  1313. 

"Ask  the  Revenue  Officer,"  5«4,  f  616. 

"Aurora,"  552,  H  439. 

"Aurora,"  553,  H  453. 

"Au-to-do,"  612,  ^  1247. 

"Auto-Garter,"  609,  If  1199. 

"Autogirdle,"  609,  If  1199. 

"Autola,"  612,  H  1247. 

"Autolene,"  526,  H  64. 

"Autopiano,"  612,  H  1251. 

"B"  pierced  by  an  arrow,  584,  K  584 


TRADE-MARKS    (continued)  — 
"B  &  K,"  61.5,  it  1281. 
baking  powder,  567,  H  645. 
"Barbers  Model,"  549,  K  392. 
"Beaver  Brand,"  545,  H  315. 
beer,  566,  H  639 ;  569,  H  680. 
"Beerine,"  569,  H  674. 
"Benedictine,"  56.3,  H  601 ;  608,  H  1186. 
"Best     Minnesota     Patent,     Minneapolis, 

Minn.,"  618,  H  1318. 
"Bestofall,"  544,  H  290. 
"Bestok,"  548,  U  359. 
"Better  Than  Mother's,"  342,  H  265. 
bicycle  lamps,  567,  U  652. 
billiard-balls,  545,  H  309. 
"Bindley's  Ever  Satisfactory  Tools,"  611, 

H    1234. 
"Black  &  Blue,"  604,  H  1145;  615,  H  1279. 
"Black   and   White,"   604,   If   1145;   61.5,   H 

1279. 
"Black  Caps,"  572,  K  715 ;  583,  K  854. 
"Black  Capsules,"  548,  K  370;  573,  H  71.-,; 

583,  H  854. 
"Blake's  Belt  Studs,"  611,  H  1231. 
"blanc-mange,"  522,  H  7. 
"blended"  whiskey,  569,  K  670. 
"Blue  Jay,"  609,  H  1202. 
"Blue  Label,"  543,  H  270. 
"Boraxaid,"  583,  H  855. 
"Borazine,"  583,  K  855. 
"Brand,"  545,  If  315. 
"Bromo  Soda  Mint,"  543,  H  271. 
"Brookwood,"  553,  H  446. 
"Buster,"  588,  H  920. 
"Buster  Brown,"  588,  U  920. 
"Buyflat,"  549,  H  377. 
"Cadillac,"  556,  H  497. 
calcimine,  570,  H  695. 

"Camile  Royal  Combination."  610,  f  1218. 
"Cantripum,"  545,  H  316. 
"Carbide,"  551,  K  421. 
"Carbolineum,"  613,  flU  1254,  1263. 
"Carbonated  Root  and  Herb  Extract,"  534, 

11168. 
"car-doors,"  558,  If  522. 
"Carmen,"  606,  If  1162;  569,  If  682. 
"Carmencita,"  569,  If  682;  606,  If  1162. 
"Carrom,"  5.39,  If  226  ;  541,  If  253. 
"Catarrhal  Jelly,"  544,  If  295;  546,  fl  330, 
"Celebrated  Cordial  Gin,"  605,  If  1152. 
"Celery  Ade."  548,  If  361. 
"cellonite,"  606,  If  1166. 
"celluoid,"  606,  If  1166. 
"Celtic,"  553,  If  448. 
"Ceresota,"  611,  If  12.30. 
"Certosa,"  611,  If  1230. 


640 


INDEX. 


TRADE-MARKS   (continued)— 
chamois-skins,  569,  U  684. 
"Champion,"  599,  H  1066. 
"Chancellor    Club,"    609,    H    1307;    610,    fl 

1222. 
"Charter  Oak,"  582,  fl  845. 
"Chartreuse,"  539,  H  219;  553,  H  449;   56.3, 

nil  596,  604;  608,  H  1188. 
"Chasseurs."  608.  ^  1188. 
"Chewies,"  533,  H  147;  606,  K  11.56. 
"Chewso."  606,  U  1156. 
"Chill   Stop,"  543,  n  273. 
Chinaman,  607,  H  1173. 
"Choc  Home-Spun."  549,  H  380. 
"chocolate,"  522,  H  7. 
"chocolate  creams,"  522,  ^  7. 
"Chologen,"  613,  U  1265 ;  622,  II  1366. 
"Chologestin,"  613,  H  1265. 
"circular  loom,"  546,  U  331. 
cigarettes,  569,  fl  682. 
cigars,  569,  H  682. 
"Clinton,"  555,  If  472. 
clover-seed,  567,  H  656. 
"Club,"  551,  U  420. 

"Club  Cocktails,"  610,  ^  1222;  609,  U  130". 
coal  and  wood  stoves,  567,  fl  660. 
cocoa,  567,  n  661 ;  569,  H  679. 
"cocoa  with  milk,"  522,  H  7. 
coffee,  567,  n  661 ;  569,  If  679. 
"Cokettes,"  542,  H  259. 
"Col.  Willett,"  611,  If  1232. 
"Collier,"  549,  fl  385 ;  597,  fl  1036. 
"Colonial,"  607,  K  1171. 
"Colonial  Dame,"  607,  fl  1171. 
Columbia,  576,  t[  766;  614,  H  1269. 
combs,  hair-pins,  etc.,  567,  U  657. 
"Comet,"  537,  H  202. 
"compound"  whiskey,  569,  H  670. 
"Condulets,"  615,  ^  1285. 
"Continental,"  555,  IJ  486. 
"Copyright,"  564,  fl  618. 
corn  whiskey,  567,  ^  659. 
"corsets,"  617,  U  1303. 
cotton-seed  oil,  569,  H  678. 
"Cream,"  542,  H  258;  617,  If  1315. 
"Creo-Carbolin,"  613,  KH  1254,  1263. 
"crescent,"  610,  II  1215. 
"Cross,"  557,  n  504 ;  595,  H  1009. 
"Croupaline,"  583,  H  849. 
"Croupine,"  583,  H  849. 
"Crouplene,"  583,  H  849. 
"Crow,"  584,  If  862. 
crown,  610,  H  1221. 
"crystal,"  548,  H  368. 
"Crystal  Glen,"  582,  tf  846. 
"Crystal   Lake,"   582,   If  846. 


TRADE-MARKS   (continued)— 
"Crystal  Run,"  582,  If  846. 
"Crystal  Spring,"  582,  If  846. 
cutlery  and  edge-tools,  558,  If  521. 
"Cyco  Gold  Medal,"  545,  H  306. 
"Cyco  Prize,"  545,  H  305. 
"Deacon  Brown,"  596,  H  1035. 
"Dean,"  596,  H  1033. 
"Defiance,"  552,  H  436. 
"Delta,"  552,  H  431. 
"Dermacura,"  614,  If   1271. 
"Dermakola,"  614,  If  1271. 
"Dewey,"  594,  H  993. 
"Diamond,"  608,  H  1193 ;  613,  H  1243. 
"Diamonddust."  608,  If  1192. 
"Diamond  Mills,"  608,  If  1192. 
"Diamond  Jo,"  612,  H  1242. 
"Doherty's  Short  Horn,"  583,  H  850. 
"Donkey,"  523,  H  24. 
"Dr.   Pepper,"  596,  H  1034. 
"Dull  Black,"  546,  If  335. 
"Duryea's  Starch,"  619,  H  1328. 
dyspepsia  remedy,  566,  H  642. 
"Dyspepticide,"  606,  H  1165. 
"Dyspepticure,"  606,  H  1165. 
eagle,  601,  H  1097;  611,  H  1237. 
"Eclipse,"  558,  n  531  ;  601,  H  1091. 
"Edelweiss-Maltine,"  610,  H  1223. 
"Electrene,"  614,  H  1274. 
"Elegancia,"  561,  H  574. 
"Elephant  Brand,"  616,  H  1291. 
"Elgin,"  554,  n  461 ;  584,  II  866. 
"Eureka,"  526,  If  61 ;  579,  If  802. 
"Ever-Ready,"  543,  If  279;  584,  If  871. 
"Excelsior,"  586,  H  887. 
"F  F  F,"  583,  n  856. 
"F  F  F  G,"  583,  If  8.56. 
"FW,"  606,  n  1158. 
"family  liniment,"  569.  If  675. 
"Felt-Less,"  550,  If  397. 
"feminine  apparel,"  617,  If  1303. 
fermented  malt  liquor,  566,  f  643. 
"Fineeting,"  546,  If  326. 
"Fitmeeasy,"  543,  If  281. 
"Fits-U,"  547,  If  348. 
five-pointed  star,  607,  If  1181. 
"flannel  shirts,"  569,  If  673. 
"Floridena,"  607,  If  1179. 
"Florodora,"  697,  If  1179. 
"For  Boys,"  596,  If  1028. 
"French,"  612,  If  1246. 
"French  Opera."  612,  If  1246. 
fruit-brandy,  567.  f  650. 
"Fullcut,"   544,  If  293. 
"Fussy,"  322,  II  1366. 
"Galena,"  552,  If  438. 


INDEX. 


641 


TRADE-MARKS   (continued)— 
garters,  570,  ^  693. 

gasolene  and  vapor  stoves,  567,  If  660. 
gas  or  vaporizing  lamps,  567,  K  653. 
Gen.  Anthony  Wayne,  611,  H  1232. 
"Genuine   Blake's   Belt   Fasteners,"  611,  ^ 

1231. 
"Genuine  Phosphate  Gin,"  609,  If  1211. 
"Getwell,"  548,  If  372. 
"Gibraltar,"  553,  H  -444 ;  554,  H  456. 
"Gibson  Girl,"  595,  K  1017. 
"Gilson  Album,"  585,  tl  873. 
gin,  567,  H  655  ;  569,  t[  669 ;  570,  K  690. 
"Gin  Phosphate,"  609,  H  1211. 
glazed  kid,  569,  H  684. 
"Glycozone,"  589,  fl  931. 
"Gold  Drop,"  606,  II  1168. 
"Gold  Dust,"  606,  H  1168. 
"Golden  Brown  Color  No.  21,"  547,  H  340. 
"Government,"  564,  H  617. 
"Graves  Tooth  Powder,"  538,  H  207. 
"Grecian,"  551,  H  418. 
Greek  cross,  539,  H  222. 
"Green   Ribbon,"  612,  \i  1243. 
"Green  River,"  612,  H  1243. 
greyliound,  608,  H  1194. 
"Griserin,"  614,  H  1274. 
Grover  Cleveland,  599.  H  1075. 
"Guenther's  Best,"  597,  t[  1042. 
"Half  Spanish,"  551,  ^  412. 
"Hall's  Safe  Co.,"  321,  H  1352. 
"Hansa,"  552,  H  427. 
"Hauthaway's     Lynn     Burnishing     Ink," 

530,  H  124. 
"Health,"  545,  fl  314. 
"Health  Food,"  543,  fl  280;  547,  H  355. 
"Health  Food  Company,"  619,  K  1333. 
Hebrew  characters,  561,  H  565. 
"Henderson,"  614,  If  1277. 
"Hold  On,"   547,  H  350. 
"Holland  Schiedam  Geneva,"  567,  fl  655. 
"Holophane,"  544,  K  289 ;  585,  \i  881. 
"Hollister's  Rocky  Mountain,"  597,  fl  1049. 
horn  hair-pins,  567,  H  657. 
"Hostetter's  Bitters,"  618,  fl  1316. 
"Hotel  Astor,"  542,  U  261 ;  553,  U  447. 
"Hunyadi,"  534,  H  171;  552,  U  430;  556,  1[ 

498;  584,  fl  868. 
Hydrolithic,  569,  H  668. 
"Hygeia,"  542,  t[  262. 
"Hygenic,"  542,  H  202. 
"If  Not  Right— Write— Will  Make  Right," 

548,  H  371;  617,  H  1314. 
"llleone,"  613,  H  1262. 
"In  Curve,"  540,  H  325. 
Indian's  head,  611,  f  1225. 


TRADE-MARKS    (continued)  — 
"Infallible,"  546,  ^  338. 
"Ino,"  607,  U  1180. 
"Inter-Phone,"  549,  H  389. 
"Ivory,"  551,  H  425. 
"Ivy,"  523,  H  21. 
"J.  C.  Tucker,"  532,  tl  141, 
"Jewel,"  582,  H  835. 
"Jr.,"   524,  11  29. 
"Kalodont,"  616,  H  1289. 
"Kantleek,"  548,  fl  375. 
"Kas-K-Rilla,"  543,  ^  285. 
keystone,  611,  f  1234. 
"Kid  Nee  Kure,"  542,  H  268. 
"King  Bee,"  524,  f  37. 
"Kleanwell,"  545,  K  317. 
"Koffio,"  533,  H  151;  541,  fl  248. 
"Kroupol,"  583,  K  849. 
"La  Camille,"  610,  If  1218. 
"Lady  Like,"  549,  H  381 ;  613,  f  1258. 
"Lait  De  Violettes,"  561,  H  572. 
"La  Norma,"  569,  H  683. 
"La  Optima,"  613,  H  1263. 
"Larona,"  533,  H  159;  613,  H  1253. 
laundry  soap,  567,  fl  654. 
"La  V'ona,"  533,  H  159 ;  613,  1[  1253. 
"Le  Bon,"  561,  H  508. 
"Lexington,"  551,  H  420. 
"Library  Slips,"  547,  ^  357. 
liniment,  569,  H  076. 
"Lion  Brand,"  013,  H  1202. 
"Liquer  de  St.  Dominic,"  015,  H  1283. 
"Liquozone,"  589,  H  931. 
"Liveraid,"  608,  H  1187. 
"Liverine,"  608,  fl  1187. 
liver  medicine,  507,  H  053. 
"Liveroid,"  608,  If  1187. 
"Lotion."  544.  tl  296. 
"Lynn  Burnishing  Ink,"  530,  If  124. 
"Magic-washer,"  531,  If  130. 
"maizharina,"  606,  fl  1166. 
"maizena,"  000,  If  1106. 
"Ma-Le-Na,"  583,  If  860. 
"Malted  Milk."  542,  K  207. 
Maltese  cross,  608,  If  1190;  610,  ^  1221. 
Maltese  or  Templar  cross,  615,  If  1281. 
"Maltine,"  610,  jf  1223. 
"Malt  Myrrh,"  550,  If  399. 
"Man-A-Lin,"  583,  If  860. 
"Manhattan,"  555,  If  475. 
"Mannish  Shoes,"  596,  If  1028. 
"Mapeline,"  613,  If  12,57. 
maple-leaf,  5.50,  fl  405;  607,  U   1176. 
"Maple  Leaf  Brand,"  608,  If  1184. 
"Maple  Leaf  Lard,"  559,  If  543. 
"Maploma,"  613,  If  1257. 


642 


INDEX. 


TRADE-MARKS   (continued)— 

map  of  the  United  States,  524,  H  34;  556, 
H  496. 

"Mattawan,"  555,  H  479. 

"Mayfair."  615,  H  1284. 

"Mayfield,"  615,  ^  1284. 

"Milkmaid  Brand,"  616,  H  1290. 

"Mill  Brook,"  583,  K  848. 

"Mill   Spring.s,"  583,  H  848. 

"Mill  Stream,"  583,  H  848. 

"Mill  View,"  583,  il  848. 

"Minneapolis,  Minn.,"  618,  H  1318. 

"Minnesota,"  618,  H  1318. 

"Minnesota  Patent,"  618,  U  1318. 

"Minute,"  544,  H  292. 

"mixed  paints,"  576,  H  770. 

"Mobile,"  555,  H  469. 

"Modoc,"  595,  H  1013. 

"Monitor,"   586,  If  884. 

"Mosquito  Dope,"  549,  H  379. 

"Mountain  Dew,"  547,  If  354;  548,  H  367. 

"Napthol-Methane,"  550.  H  398. 

"Nassac,"  611,  H  1237. 

"National,"  582,  H  840. 

"Navy,"  542,  H  260. 

"Nayassett,"  611,  fl  1237. 

"Neverfail,"  547,  II  345. 

"Nevers-Tick,"  544,  H  294. 

"new  moon,"  610,  H  1215. 

"New  National,"  582,  H  840. 

"New  Tone,"  549,  H  378. 

"New  York,"  596,  II  1032. 

"Nextobeer,"  548,  ^  358 ;  548,  H  365. 

"nickel,"   543,  H  277;   545,  H   321. 

"Nickel  Soap,"  543,  H  276. 

"Nippers  and  pliers  provided  with  a  cut- 
ting edge,"  560,  11  557. 

"Nitro-Hunter,"  595,  H  1015. 

non-alcoholic  viscous  syrup,  566,  fl  642. 

"Non-Tox,"  534,  H  168. 

"No-Rip,"  544,  H  287. 

"Norma,"  569,  H  683. 

"North  Star,"  612,  fl  1249. 

"No  Sag,"  549,  II  384. 

Nut  Creek,  574,  H  746. 

"Nutty  Corn,"  547,  fl  346. 

"Old  Charter,"  582,  fl  845. 

"Old  Crow,"  614,  tin  127.-),  1376,  1278;  615, 
tl  1280. 

"Old  Durham  Rye,"  583,  H  850. 

"Old  Dutch  Blend,"  611,  H  1228. 

"Old  J,"  609,  H  1202;  615,  ^  1280. 

"Old  Jay,"  614,  fl  1275. 

"Old  Jay  Rye,"  609,  fl  1202 ;  615,  H  1280. 

"Old  Judge,"  524,  H  32. 

"Old  Lexington  Club,"  551,  H  420. 


TRADE-MARKS    (continued)  — 
"Old  Tom."  605,  H  1152. 
"Old  Tucker."  .>.32,  H  141. 
"Olive, '  603,  H  1119. 
"Olivene,"  609,  fl  1212. 
Oliveoil,  569.  H  678. 
"Olivoint,"  609,  ^  1212. 
"Omnahne,"  613,  H  12.-».5. 
"Omnia,"  013,  ^  1255. 
"Oolitic,"  .■.50,  H  410. 
"Optimates,"  613,  H  12G3. 
"Optimo,"  613,  H  1263. 
"Optal,"  608,  H  1193. 
"Optine,"  608,  fl  1193. 
"Orange  Grove,"  553,  fl  450. 
"Orient,"  556,  ^  490. 
"Oriental  Cream,"  555,  H  485 ;  556,  H  489. 
"Otaka,"  014,  H  1270. 
"Our  Little  Samson,"  608,  H  1191. 
"Our  Worth,"  611,  H  1238. 
"overalls,"  569,  If  673. 
"Owl   Shoe,"   582,  ^  842. 
"Ox  Blood,"  545,  H  312. 
"Ozark,"  555,  Htl  476,  481. 
"P.   P.   P.,"  579,  H  805. 
"Pain-Ease,"  543,  H  283. 
"Old  Government,"  567,  tl  651. 
paints,    driers,    white    lead,    stove-polish, 

stove  and   furnace  cement,  and  roofing 

cement,  570,  H  694. 
"paper-wool,"  569,  H  681. 
"Parisian  Ivory,"  551,  H  425. 
paste  paints,  568,  H  665. 
"Pastry,"  544,  H  302. 
"Peach,"  605,  H  1150. 
"Peach  Greenville,"  605,  H  1150. 
"Peerless,"  546,  H  324. 
"Penny  a  Pound  Profit,"  549,  H  388. 
"Pep-Kola,"  608,  H  1190. 
"Pepko,"  608,  H  1190. 
"Pepsin-Punch,"  556,  H  396. 
"Perfect  Face  Paste,"  542,  H  209. 
"Perfection,"  544,  H  299. 
"perfumery,    toilet    powder,    and    talcum 

powder,"  590.  H  940. 
"Piano-Auto,"  612,  ^I  1251. 
"P-I-T-T-S-B-U-R-G-H   P-U-M-P,"   532, 

H  148;  551,  H  413. 
"Pliers  without  a  cutting  edge,"  560,  H  557. 
plumbers'  supplies,  570,  H  688. 
"Pochahontas,"  554,  H  463. 
Portland  cement,  568,  H  668. 
powder,  569,  ^  676. 
"Powell's  Run  Coal,"  612,  H  1244. 
"Powellton,"  612,  H  1244. 
"pressure-lamps,"  617,  H  1308. 


INDEX. 


84S 


TRADE-MARKS   (continued)  — 
•'Prize,"  545,  H  305. 
'Puncture  Proof,"  548,  t[  373. 
"Pure  Old  Rye  Whiskey,"  564,  Hfl  609,  612. 
"Pure  Tissue,"  614,  K  1269. 
"Puritan,"  592,  fl  974. 
"Purity,"  542,  fl  263;  545.  K  323. 
"Pyramid,"  612,  H  1240. 
Quadruple,  596,  H  1032. 
Quaker,  583,  H  858 ;  592,  fl  974 ;  612,  K  1239. 
Quaker,   612,   H    1239;   583,   H   858;    592,   1i 
Quaker  lady,  583,  ^  858. 
"Quaker  Maid,"  611,  H  1235. 
Quaker  or  Puritan  costume,  016,  ^I  1290. 
"Quakeress,"  611,  ^  1235. 
"Quality  Counts,"  611,  fl  1234. 
"Rabbit,"  523,  H  18. 
"radium,"  550,  f  408. 
"Rahtjen's  Composition,"  533,  H  152;  585, 

H  870. 
"railway  supplies,"  558,  fl  522. 
"Rat  Bis-Kit,"  547,  H  339. 
"Raven,"  584,  H  862. 
"Raven  Valley,"  614,  Iffl  1276,  1278. 
"ready-mixed   paints,"   576,  H   770 ;   586,  11 

665. 
"Red,"  603,  H  1120. 
"Red  Cross,"  539,  fl  222. 
red  ribbon,  606,  H  1159. 
"Red  River  Special,"  551,  U  417. 
"red  star  represented  by  a  word  or  sym 

bol,"  607,  H  1177. 
"remedy  for  skin  diseases,"  569,  H  675. 
"Rem-Sho."  595,  H  1018. 
"Ribbons,"  606,  H  1159. 
"Rogers,"  596,  K  1032;  612,  fl  1250. 
"Roosevelt  Rose,"  602,  K  1110. 
"Rose,"  002,  H  1110. 
"Royal,"  577,  H  776;  610,  H  1221. 
"Royal  Blend,"  610,  fl  1221. 
"Royal  Blue."  541,  H  250. 
"Royal  Charter,"  582,  ^  843. 
"Royal  Dutch,"  611,  H  1228. 
rubber.   505,  H   628. 
"Rubberback,"  545,  H  308 ;  550,  H  407. 
"Rubbero,"  321,  fl  1354. 
"Ruberoid,"  549,  H  383;  621,  K  1354. 
"Run-Lite,"  008,  H  1194. 
"Rust?    Never!"  540.  H  333. 
"Samsoncalf,"  008,  T[  1191. 
"Sandow,"  594,  H  993. 
"Saniga,"  561,  fl  576. 
"Sanitarium  Health  Food  Company,"  619, 

K  1333. 
"Sap  Maple  Syrup,"  603,  ^  1184. 
"saponite,"  600,  ^  1106. 


TRADE-MARKS    (continued)  — 

"Satin,"  571,  \\  703;  608,  ^  1195. 

"Satin  Scent,"  608,  H  1195. 

"Satin  Skin,"  571,  H  703;  608,  ^  1195. 

"Satinette,"  571,  H  703. 

"Satinola,"  608,  fl  1195. 

"Savoy,"  555,  H  483. 

saws,  tools,  and  files.  568,  If  666. 

"Scott's  Emulsion,"  579.  H  805. 

"Scot-issue  Towels,"  549,  fl  390. 

"Seafoam,"  607,  H  1175. 

"Self  Loading,"  546.  H  337;  547,  ]\  356. 

"Selma,"  552,  fl  435. 

"Servself,"  548,  H  374. 

sewing-machines,  567,  fl  646. 

"Sozodont,"  016,  II  1289. 

"Shield  Brand,"  012,  H  1248. 

shoes,  507,  K  647. 

shooting  star,  606,  H  1160. 

"Shredded  Whole  Wheat,"  547,  fl  347; 
582,  H  834. 

"Silver  Dip,"  547,  H  344. 

"Silver  Leaf,"  607,  K  1176. 

"Silver  Star,"  607,  U  1183. 

"Silverode,"  582,  fl  847. 

"Silveroid,"  582.  H  847. 

six-pointed  star,  607,  H  lisi. 

six-pointed  star  surrounded  by  two  con- 
centric circles,  610,  U  1220. 

soda  and  saleratus,  567,  If  645. 

"Soda  foam,"  007.  If  1175. 

"Solid  Comfort,"  542,  If  254. 

"Sozodont,"  615,  If  1282;  616,  If  1289. 

"Spanish,"  550,  ff  411;   550,  If  500. 

"Special,"  545,  If  326;  552,  If  426. 

"Spot  Cord,"  524,  If  31 ;  603,  If  1127. 

"Spring  Hill,"  610,  If  1215. 

"Spring  Valley,"  610,  fl  1215. 

"St.  Benedict,"  60S,  f  1186. 

"St.  Johnsbury,"  554.  If  464. 

"Stage,"  570,  If  705. 

"Standard."  546,  Iffl  328,  336;  550,  If  409. 

"Standard  Line,"  547,  If  352. 

star,  537,  If  202;  592,  If  973;  604,  If  1139; 
005,  II  1155;  606,  If  1158;  609,  fl  1198: 
610,  n  1219,  1220;  612,  If  1249. 

"star  inclosing  the  letter  'G,' "  607,  f  1177. 

star  surrounded  by  two  circles,  583,  f  857. 

star  with  the  letters  "G  F,"  583,  If  857. 

"Steel,"  606,  ^  1158. 

"Sterilized  Cotton  Seed  Oil— Oleo  Stear- 
ine,"  617,  If  1300. 

"Sterling,"  544,  If  303;  547,  fl  351. 

"Sterling  Nickel,"  545,  If  321. 

"Straight"  whiskey,  569.  f  670. 

"Strength,"  551,  If  422. 


644 


INDEX. 


TRADE-MARKS   (continued)— 

"Success,"  542,  1!  256 ;  599.  H  1069. 

"Sunbeam,"  613,  H  1266. 

"Sunshine,"  613,  ^I  1266. 

suspenders,  570,  H  693. 

swan,  584,  H  8C5. 

"Swan's  Down,"  584,  H  865. 

"Syrup  of  Figs,"  550,  I  400. 

"syrups,  syrup  compounds  and  syrup  sub- 
stitutes," 569,  K  677. 

"Tabasco,"  556.  fl  499. 

"Telegraphone,"  607,  1|  1178. 

"TelegraphopKone,"  607,  H  1178. 

"Terrabout,"  582,  %  843. 

"The  Celebrated  Star  Lager  Beer,"  583, 
1i  857. 

"The  Greatest  \'alue  for  the  Money,"  559. 
H  538. 

"The  Lady  Lee  Shoe,"  613,  H  12.>8. 

"The  Roman,"  551,  H  415. 

"The  Victor,"  590,  H  952. 

"Three  in  One,"  615,  f  1286. 

"Tiger,"  582,  H  843. 

timothy-seed,  567,  H  656. 

"Tobasco,"  537,  H  200. 

toilet  soap,  567,  H  654. 

tooth-powder,  566,  t[  643. 

"Topsy  Geneva,"  556,  H  501. 

trimmings  for  car-doors  and  journal- 
bearings,  557,  II  506. 

"Trophy,"  549,  II  386. 

"trousers,"  569,  H  673. 

"Tunnel,"  523,  H  27. 

"Uncle  Sam,"  605,  H  1154. 

"Uneeda,"  614,  H  1270. 

"Union,"  556,  tl  492. 

"Union  Carbide,"  551,  H  421 ;  599,  1|  1065. 

"United  States,"  524,  tl  34. 

"United  States  Standard,"  564,  I  614. 

"Uno,"  607,  H  1180. 

"UNXLD,"  548,  H  369. 

"Vassar,"  595,  H  1008. 

"Velva,"  608,  H  1189. 

"Velvet,"  608,  H  1189. 

"Velvet-Skin,"  608,  H   1189. 

"Velvril,"  585.  H  874. 

"Veritable  Benedictine,"  "D.  O.  M.,"  560, 
1i   554;   615,  H   1283. 

"Vichy,"  545,  fl  310. 

"Victor,"  612,  tl  1248. 

"Victoria,"  590,  fl  952. 

"Vitae-Ore."  541,  ti  249 ;  606,  H  1163. 

"Vitalizing  Ore,"  606,  f  1163. 

"Vitrified,"  550,  H  406. 

"Vogue,"  544,  H  301. 

"Volunteer,"  573,  K  732. 


TRADE-MARKS   (continued)— 
"Vona,"  533,  II  159. 
"Walk-a-way,"  614,  f  1272. 
"Walnut  Hill,"  574,  H  746. 
"wamsutta,"  606,  ^  1166. 
"wamyesta,"  606,  H  1166. 
"Waukeasy,"  541,  H  251 ;  614,  fl  1278. 
"Waukwell,"  542.  H  255;  614,  fl  1272. 
"We  Never  Sleep,"  582,  H  842. 
"Wearease,"  548,  fl  362. 
"Week,"  561,  H  570. 
whiskey,  567,  II  650 ;  569,  fl  669. 
white  lead,  569,  H  671 ;  570,  f  695. 
"Wine,"  544,  H  304. 
"wines  and  liquors."  566,  H  639. 
"Wirelets,"  615,  fl  1285. 
"Wm.  A.  Rogers,"  598,  H  1061 ;  609,  fl  1206. 
"Wm.  A.  Rogers  A,  1,"  616,  fl  1288. 
"Wm.  Rogers  Mfg.  Co.."  609,  fl  1206;  616, 

H  1288. 
"Wm.  Rogers  &  Son,"  609,  fl  1206. 
wood  fillers.  569,  H  671. 
"Wood-wool,"  569,  H  681. 
"work-shirts,"  569,  H  672. 
"Worth,"  611,  H  1238. 
"Worthmore,"  546,  H  327. 
"X  L  C  R,"  584,  H  863. 
"Yale,"  .551,  H  416;  ,■555,  f  474;  581,  fl  882. 
"Yellowstone  Special,"  552,  H  426. 
"York,"  555,  ^  473. 
"Yucatan,"  553.  H  451. 
"Zimmer  Spanish,"  550,  tl  411. 
"Zodenta,"  615,  H  1282. 
"Zozodont,"  583.  t[  861. 
"5,"  "To  One,"  615,  jl  1286. 
"14  K,"  611,  II  1227. 
"1904,"  545,  H  307. 

TRANSFER  OF  PAPERS,  57. 

UNFAIR  COMPETITION,  618,  XLIX. 

UNITED  STATES  GOVERNMENT,  SUITS 
AGAINST,  .520,  II 

UNITED  STATES  SUPREME  COURT,  47, 
V;  454. 

UTILITY.  103,   (b) ;  472,  IV. 

VACATING  JUDGMENT,  442,  LI. 

WAIVERS.  416.  XLIX. 

WEIGHT  OF  PATENT  OFFICE  DECI- 
SIONS IN  THE  COURTS,  622;  see 
257,  XIX;  519,  M  6,  10. 

WITHDRAWAL  FROM  ISSUE.  623;  see  15, 

1i  178. 

WITNESSES,  443,  LII. 


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